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 included in prosecution are claims 1-4.
Response to Restriction Requirement
Applicant's election with traverse of Group I, claims 1-4, in the reply filed on 3/27/2026 is acknowledged. Further, Applicant’s election of compound 1-31 as the species for examination in response to the Election of Species requirement in the reply filed on 3/27/2026 is acknowledged. Accordingly, Group I and the elected species, compound 1-31, encompasses claims 1-4.
The traversal is on the grounds that is believed that the Office has restricted the claims too extensively and Applicant alleges that a single search and examination covering all claims would not place undue burden on the Examiner. This is not found persuasive because burden consists not only of specific searching of classes and subclasses, but also of searching multiple databases for foreign references and literature searches. Burden also resides in the examination of independent claim set for clarity, enablement and double patenting issues. Further, a reference that would anticipate the invention of one group would not necessarily anticipate or even make obvious another group. Finally, the consideration for patentability is different in each case. Thus, it would be an undue burden to examine all of the above inventions in one application and the restriction for examination purposes as indicated above is deemed proper.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 5-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 3/27/2026.
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.
The factual inquiries 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.
1. Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohn et al. (US 9,101,141, Aug. 11, 2015) (hereinafter Kohn).
Kohn discloses N-(1,3,4-Oxadiazol-2-yl)arylcarboxamides (Abstract). Particularly, Kohn discloses inventive compounds of the general formula (I) in which A is CY and R is hydrogen (Table 1).
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In compound 1-359, X is Cl, Y is SMe, and Z is CF3 (Table 1). Variable Z may also be a C1-C6 alkoxy group (col. 2, lines 49-54).
Kohn differs from instantly claimed compound 1-31 insofar as not disclosing wherein Z is F3CO (i.e., trifluoromethoxy).
However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." See MPEP § 2144.09. See also MPEP § 2144.08, subsection II.A.4.(c). Accordingly, where Kohn’s compound has an extremely close chemical structure to the instantly claimed compound (i.e., CF3 vs F3CO/OCF3), it would have been reasonable for one of ordinary skill in the art to conclude that Kohn’s compound would have similar properties to the instantly claimed compound.
Therefore, Kohn’s teachings render obvious claims 1-4.
2. Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohn et al. (US 9,101,141, Aug. 11, 2015) (hereinafter Kohn) in view of Ngai et al. (US 2017/0298008, Oct. 19, 2017) (hereinafter Ngai).
Kohn discloses N-(1,3,4-Oxadiazol-2-yl)arylcarboxamides (Abstract). Particularly, Kohn discloses inventive compounds of the general formula (I) in which A is CY and R is hydrogen (Table 1).
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In compound 1-359, X is Cl, Y is SMe, and Z is CF3 (Table 1). Variable Z may also be a C1-C6 alkoxy group (col. 2, lines 49-54).
Kohn differs from instantly claimed compound 1-31 insofar as not disclosing wherein Z is F3CO (i.e., trifluoromethoxy).
However, Ngai discloses a process of producing a trifluoromethoxylated aryl where the trifluoromethoxy group is bound directly to the aryl ring A (Abstract). Among the fluorine containing functional groups, the trifluoromethoxy group (OCF3) is of current interest because of its unique structural and electronic properties, which can be useful in material, agricultural, and pharmaceutical science. In addition, the OCF3 group has one of the highest lipophilicity values compared to the CF3 group. Compounds with higher lipophilicity show enhancement in their in vivo uptake and transport in biological systems. Indeed, many OCF3 containing pharmaceuticals and agrochemicals show enhanced effectiveness often coupled with diminished side-effects (¶ [0003]). In some embodiments, A (i.e., the aryl ring) is a phenyl (¶ [0046 & 0076]).
Accordingly, it would have been obvious for one of ordinary skill in the art, prior to the filing of the instant application, to have modified the compound of Kohn to substitute OCF3 (i.e., trifluoromethoxy) for CF3 motivated by the desire to enhance the in vivo uptake and transport of the compound, and increase its effectiveness while decreasing its side effects as taught by Ngai. One of ordinary skill in the art would have had a reasonable expectation of success since Ngai discloses that trifluoromethoxy groups (OCF3) may be bound directly to rings such as phenyl rings for different uses such as in agrochemicals.
Therefore, the teachings of Kohn in view of Ngai render obvious claims 1-4.
Conclusion
Claims 1-4 are rejected.
Claims 5-15 are withdrawn.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abdulrahman Abbas whose telephone number is (571)270-0878. The examiner can normally be reached M-F: 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A./Examiner, Art Unit 1612
/LEZAH ROBERTS/Primary Examiner, Art Unit 1612
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