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 .
Priority
Acknowledgments are made that this application claims the priority to the following:
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.
Information Disclosure Statement
Filed information disclosure statements (IDS) comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, they have been placed in the application file and the information therein has been considered as to the merits.
Response to Restriction
Applicant's response to restriction requirement and election of group I corresponding to claims 1-9, without traverse, in the reply filed on 06/22/2026 is acknowledged.
The examiner also acknowledges applicants response to election of species and providing the following species for the claimed compound:
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, which reads claims 1-2 and 4-9.
Claims 3 and 10-17 are withdrawn from consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
The claims 1-2 and 4-9 are examined on merits in this office action.
Claim Rejections - 35 USC § 103
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
(i) Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over James (WO2016201283A1) in view of Burkhardt (US6384013B1).
For claim 1:
James teaches the following compound:
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, wherein R1-R6 are -CH3; X and Y are -OH; W and Z are H; A is -CH2(CH2)n and n is 1-4; B, C and is selected from optionally substituted alkyl, alkenyl, alkynyl, aryl, carbocyclic, heteroaryl, heterocyclyl, or are absent, provided that at least one of B, C and D is present, when C and D present are joined by a direct bond, -O- [see claim 1];
wherein the aryl refers to optionally substituted monocyclic or bicyclic ring, such as phenyl or naphthyl group [see page 14, lines 14-17];
wherein the alkyl, alkenyl, alkynyi, aryl, carbocyclyi, heteroaryi, or heterocyciyi group may be substituted, and the substituted the group includes one or more substituents, each selected independently from halo (e.g., chioro, bromo, iodo, or fluoro) and preferred substituents for B,C, or D of any one of formulas (ia)-(Vb) include chloro, fluoro, CH3, and OR', where R' is defined as above [see page 15, lines 3-11].
Further, James exemplifies B, C and D with the following species:
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, wherein phenyl ring represents B, alkynyl represents C, and phenyl group substituted with alkoxy group represents D.
Based on the above, and with cited definitions, the above compound reads applicants compound, specifically, if B is aryl, such as phenyl or naphthyl group, C is alkynyl group, and D is phenyl ring substituted with alkoxy group.
Difference is that James is silent on exemplifying applicants naphthyl group and fluoro atoms on phenyl ring in their disclosure.
However, this difference is trivial, since James provided enough guidance and description for making their compounds, and so a skilled person in the would be motivated to extrapolate to make other species, such as applicants claimed compound. There is also a reasonable expectation of success making such compounds in view of Burkhardt, which teaches the following compound:
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[see attached abstract from STN search report].
Above compound also read applicants claimed compounds.
For claims 2 and 4-6:
James teaches -O-A-N+(R4)(R5)(R6) at the same position, where in A is -CH2(CH2)n and n is 1-4, and R4-R6 are methyl groups.
For claims 7-8:
James teaches applicants R7, which is equivalent to D group in the compound of James, wherein D is alkyl group [see claim 1], for example, it can be C2-C8 [see claim 7].
For claim 9:
See For claim 1 above.
Based on the above established facts from the cited prior art, it appears that all the claimed elements, i.e, applicants core structure of claimed compound and possible substitutions etc., were known in the prior art, and one skilled person in the art could have combined the elements as claimed by known relationships, with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art.
The motivation to combine modify or combine the art can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when combined for their common known purpose. See MPEP 2144.07. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited reference and to make the instantly claimed compound with a reasonable expectation of success.
A modification of combination of prior art references is only proper if a person of ordinary skill in the art at the time of the invention, faced with the same problem, would have been motivated to combine their teachings with a reasonable expectation of success. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Here, the technical fields and problems addressed by the references are not distinct from that of the present invention.
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
(ii) Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Burkhardt (US6384013B1) in view of James (WO2016201283A1).
Burkhardt teaches applicants compound, see the reasoning in the above rejection.
Burkhardt is silent on applicants elected chemical substitutions for R1 and OR7.
However, these groups on the core structure are known and these art recognized substitutions, as taught by James, see the reasoning in the above rejection.
Based on the above established facts from the cited prior art, it appears that all the claimed elements, i.e, applicants core structure of claimed compound and possible substitutions etc., were known in the prior art, and one skilled person in the art could have combined the elements as claimed by known relationships, with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art.
The motivation to combine modify or combine the art can arise from the expectation that the prior art elements will perform their expected functions to achieve their expected results when combined for their common known purpose. See MPEP 2144.07. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited reference and to make the instantly claimed compound with a reasonable expectation of success.
A modification of combination of prior art references is only proper if a person of ordinary skill in the art at the time of the invention, faced with the same problem, would have been motivated to combine their teachings with a reasonable expectation of success. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Here, the technical fields and problems addressed by the references are not distinct from that of the present invention.
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUDHAKAR KATAKAM whose telephone number is (571)272-9929. The examiner can normally be reached 8:30 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melissa Fisher can be reached at 571-270-7430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUDHAKAR KATAKAM/Primary Examiner, Art Unit 1658
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