DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 2 and 9 have undergone amendments. Thus, Claims 1-14, submitted on 31 March 2026, represent all claims currently under consideration.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The objection to the specification is withdrawn. Applicant has amended the specification to remove the term “said”.
The 35 U.S.C. § 112(b) rejection of Claims 1-14 for lacking antecedent basis for variable R5 is maintained. Currently amended Claim 1 still has a variable R5 group, which is not linked to the compounds which are claimed.
The 35 U.S.C. § 112(b) rejection of Claims 1-4 and 6-14 is withdrawn. Applicant has amended Claim 1 to remove the phrase “such as”.
The 35 U.S.C. § 112(b) rejection of Claim 2 is withdrawn. Applicant has amended the claim to state “wherein the antiseptic”.
The 35 U.S.C. § 112(b) rejection of Claim 9 is withdrawn. Applicant has amended the dependency of the Claim to Claim 8, which provides antecedent basis for the Staphylococcus aureus.
The 35 U.S.C. § 112(b) and 112(d) rejections of Claim 5 are both withdrawn. The Examiner erroneously noted that these compounds do not limit claim 1, when Claim 1 notes that variables R8 and R9 can come together to form a tetrahydroquinolinyl group.
The non-statutory patenting rejection of Claims 1-4 and 6-14 over Claims 1-2 of U.S. Patent No. 11,446,280 is withdrawn. Applicant has submitted a terminal disclaimer for this patent.
The non-statutory patenting rejection of Claims 1-14 over U.S. Patent No. 11,052,078 is withdrawn. Applicant has submitted a terminal disclaimer for this patent.
The non-statutory patenting rejection of Claims 1-14 over U.S. Patent No. 11,040,949 is withdrawn. Applicant has submitted a terminal disclaimer for this patent.
The non-statutory patenting rejection of Claims 1-4 and 6-14 over U.S. Patent No. 10,471,045 is withdrawn. Applicant has submitted a terminal disclaimer for this patent.
The provisional non-statutory patenting rejection of Claims 1-4 and 6-14 over U.S. Patent Application No. 17/949,184 is withdrawn. Applicant has submitted a terminal disclaimer for this patent application.
Terminal Disclaimer
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,446,280 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,052,078 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,040,949 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 10,471,045 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 31 March 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Application No. 17/949,184 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112(b)- REJECTIONS MAINTAINED
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites the limitation "wherein variable R5 can be selected from…" in Lines 22-32. There is insufficient antecedent basis for this limitation in the claim. The claim lacks antecedent basis because the artisan cannot find the antecedent basis to variable R5 as the claims do not link R5 to the compounds being claimed. Claims 2-14 are similarly rejected as indefinite as they depend upon an indefinite claim without resolving the underlying issue of indefiniteness with respect to variable R5.
Allowable Subject Matter
Claims 1-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for allowance: The closest prior art comes from U.S. Patent No. 11,446,280, U.S. Patent No. 11,052,078, U.S. Patent No. 11,040,949, and U.S. Patent No. 10,471,045. Each of these patents claims a composition comprising compounds identical to those of the examined application for use in inhibiting the growth of bacteria or for the treatment of microbial infection. However, these references are not prior art as Applicant has submitted a terminal disclaimer.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Claims 1-14 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP MATTHEW RZECZYCKI whose telephone number is (703)756-5326. The examiner can normally be reached Monday Thru Friday 730AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.M.R./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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