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 .
Claim Status
Claims 1-16 and 31-34 are pending. Claims 1-16 and 32 are rejected. Claims 31 and 33-34 are objected to.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11th, 2026 has been entered.
Response to Amendment
Applicant’s amendments have overcome the previously presented rejections.
Claim Rejections - 35 USC § 112
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.
Claims 1-16 are 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.
Independent claims 1 and 9 recite compounds of formulas (I) or (II) wherein W may be N. It is unclear whether the nitrogen may substituted or whether the genus is intended only to encompass compounds where W is NH.
Claims 2-8 and 10-16 are rejected for failing to obviate the indefiniteness of claims 1 and 9.
Claim Rejections - 35 USC § 102
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 497258-72-7, which entered Registry on March 10th, 2003.
CAS Registry No. 497258-72-7 is drawn to (5Z)-5-(2-Amino-4-thiazolyl)-1,1-dihydroxy-8,8-dimethyl-4-oxo-7-oxa-3,6-diaza-1-boranon-5-en-9-oic acid, which has the following structure:
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The compound above reads on instant claims 1-8 and 32 and is embraced by formula I where X is CNOR1, R1 is C3 alkylene-COOH, Y is R2, R2 is
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, R4 is NH2, and Z is H.
Regarding instant claim 4 which recites further limitations for W and claim 7 which recites further limitations for R3, the prior art compound is anticipatory because the claims do not require Y to be -WR2 or Z to be one of -alkylene-aryl, alkylene-heterocyclyl, or alkylene-heteroaryl wherein R3 is present.
Claim Rejections - 35 USC § 103
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, 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.
Claim(s) 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016/050359 A1 Klein et al. cited in the IDS filed 10/22/2025.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The prior art teaches boronic acid derivatives and discloses the following compound (page 83):
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The compound is analogous to a compound of instant formula II where X is alkylene, W is O, R2 is
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, and Z is CH2-6-membered aryl.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound is analogous to a compound of instant formula (II) by differs by the absence of a substituent corresponding to R3.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Klein et al. teach the following genus wherein Y is Cyc, wherein Cyc is a monocyclic 6-membered hydrocarbon substituted by R3a, and R3a is linear or branched C1-C6 alkyl (pages 5-6):
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Prior art compound 2 differs from the instant compounds only by the absence of a methyl substituent for R3 on the ring corresponding to instant variable Z.
“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” In re Deuel 34 USPQ2d 1210 at 1214. Furthermore MPEP 2144.09 (II) states: “Compounds which are […] homologs (…) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978) and In re Lohr, 137 U.S.P.Q. 548, 549 (C.C.P.A. 1963).
The motivation to make a substitution of a hydrogen for an alkyl group stems from the fact that a person having ordinary skill in the art would expect that the compounds would have the same utility as the compounds taught by the prior art. In the interest of generating additional compounds that have the same utility as the compounds taught by the prior art, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have been demonstrated to have the desired utility. The replacement of hydrogen for an alkyl group falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties. Therefore, the instantly claimed compound which differs by hydrogen/alkyl, over the compound of the prior art is unpatentable absent a showing of unexpected results. MPEP 2144.09 (VIII) states “A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).”
The resulting compound represented below reads on instant claims 9-14,
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Regarding instant claims 11-12 which recite further limitations
for R1, the compound above is anticipatory because the claims do not require R1 to be present within the structure.
Claim(s) 1-3, 6, 8-9, 11-12, 14, 16 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/092979 A1 by Swinnen et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The prior art teaches alpha amino boronic acid derivatives such as the compound below (page 17):
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The compound is analogous to a compound of instant II where X is alkylene, W is alkylene, R2 is heteroaryl, Z is
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, one of R3 is alkyl and the other is halogen. The compound is analogous to a compound of formula I where Y is W-R2 and the rest of the variables are the same as defined for formula II.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound differs from compounds of instant formulas (I) and (II) by the absence of an alkyl substituent on the carbon corresponding to instant variable W.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Swinnen et al. teach the following genus wherein linker M is a linear or branched alkylene (pages 4-5):
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The prior art compound differs from the instant compounds only by the absence of a methyl on the carbon corresponding to instant variable W.
“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” In re Deuel 34 USPQ2d 1210 at 1214. Furthermore MPEP 2144.09 (II) states: “Compounds which are […] homologs (…) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978) and In re Lohr, 137 U.S.P.Q. 548, 549 (C.C.P.A. 1963).
The motivation to make a substitution of a hydrogen for an alkyl group stems from the fact that a person having ordinary skill in the art would expect that the compounds would have the same utility as the compounds taught by the prior art. In the interest of generating additional compounds that have the same utility as the compounds taught by the prior art, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have been demonstrated to have the desired utility. The replacement of hydrogen for an alkyl group falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties. Therefore, the instantly claimed compound which differs by hydrogen/alkyl, over the compound of the prior art is unpatentable absent a showing of unexpected results. MPEP 2144.09 (VIII) states “A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).”
The resulting compound represented below reads on instant claims 1-3, 6, 8-9, 11-12, 14, 16 and 32,
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Regarding instant claims 2-3 and 11-12 which recite further limitations
for R1, the compound above is anticipatory because the claims do not require R1 to be present within the structure.
Allowable Subject Matter
Claims 31 and 33-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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