DETAILED ACTION
Claims 1-7 and 9-32 are currently pending in the instant application.
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 .
Election/Restrictions
Applicant’s election without traverse of
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in the reply filed on 08/26/2026 is acknowledged.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
Applicant's elected species appears allowable over the prior art of record. Therefore, the search of the Markush-type claim has been extended to the non-elected species of
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As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1, 4-7, 16-18, 25 and 30-32 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
The remaining subject matter of claims 2-3, 9-15, 19-24 and 26-29 that are not drawn to the above elected invention stand withdrawn under 37 CFR 1.142(b) as being non-elected subject matter. The remaining compounds which are not within the elected invention are independent and distinct from the elected invention as they differ in structure and composition. Therefore the compounds, which are withdrawn, have been restricted as the withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference, which anticipates one group, would not render obvious the other. Thus all claims containing compounds falling outside the search strategy of the elected compound and structure shown above are heretofore directed to non-elected subject matter and are withdrawn from consideration under 35 U.S.C. § 121 and 37 C.FR. § 1.142(b). A complete reply to the non-final rejection must include cancellation of non-elected claims include cancellation of non-elected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b). If one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Priority
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The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/768,152, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The instant elected species of
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as well as subject matter having R3 as amide substituted with a substituted phenyl group and the compound of formula (IId) wherein R4 is substituted phenyl fails to find support 17/768,152 as 17/768,152 teaches compounds of formula (I)
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wherein Rd is Rf and Rf is
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and R1 is taught to be
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. Thus, subject matter under examination which has R3 as amide substituted with a substituted phenyl group has been given a priority date that corresponds to the instant filing date 04/03/2024 of the instant application.
Information Disclosure Statement
Applicant's Information Disclosure Statement filed on 09/26/2025 has been considered. Please refer to examiner signed Applicant's copies of the 1449 submitted herewith.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claim(s) 1, 4-7, 16, 18, 25 and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zamaratski et al (see WIPO Pub No. WO 2022/220725, pub. 10/20/2022, filed 04/11/2022 and claims priority to SE 2150475-8, filed 04/16/2021).
Zamaratski et al teach compounds of formula
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(see p. 6) and exemplifies compounds such as
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(see p. 51, lines 12-13) and
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(see p. 52, lines 20-23). This corresponds to 1) a compound of formula (I) wherein A is substituted C5- C6 heteroaryl wherein C5- C6 heteroaryl is substituted with Cl, R1, R2, R4 and R5 are H, R3 is substituted amide or 2) a compound of formula (IId) wherein R2, R3, R5, R6 are H, R4 is substituted aryl, either X5 or X1 is N and the other is C, X2, X3 and X4 are C and (R1)1, (R1)2, (R1)3 (R1)4 and (R1)5 are independently hydrogen, C-16 alkyl or halogen or 3) a compound of formula (VII) wherein m is 0, one of X1 or X4 is N and the other is C, X2 and X3 are C, R1 is H, C1-C6 alkyl, halogen, R2, R3, R5 and R6 are H, R4 is NHC(O)R7 wherein R7 is substituted aryl.
The compounds are taught in pharmaceutical compositions (see 1-4, p. 9) and useful in the inhibition of bacterial LpxH activity or as a bactericide (see p. lines 29-31, p. 8) and for treatment of bacterial infection (see lines 8-13, p. 7).
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 (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.
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.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zamaratski et al (see WIPO Pub No. WO 2022/220725, pub. 10/20/2022, filed 04/11/2022 and claims priority to SE 2150475-8, filed 04/16/2021).
Zamaratski et al teach compounds of formula
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(see p. 6) and exemplifies compounds such as
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(see p. 51, lines 12-13) and
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(see p. 52, lines 20-23). Although Zamaratski et al exemplify compounds having (R1)1 - (R1)5 as C1-C6 alkyl rather than C1-C6 substituted alkyl, specifically CF3, Zamaratski et al teach that the equivalent position (i.e. R7 of Zamaratski) may be selected from CF3 (see p. 6, line 5-8). The compounds are taught in pharmaceutical compositions (see 1-4, p. 9) and useful in the inhibition of bacterial LpxH activity or as a bactericide (see p. lines 29-31, p. 8) and for treatment of bacterial infection (see lines 8-13, p. 7).
One would be motivated to modify the compound of Zamaratski et al by substituting a CF3 for alkyl or halogen on the (R1)1 - (R1)5 position (as defined by the instant claims) since the compounds of Zamaratski et al are described to be useful in treatment of bacterial infection and/or inhibition of bacterial LpxH activity. The motivation to make such a modification derives from the expectation that structurally similar compounds are generally expected to have similar properties and similar utilities and one would want to find further compounds useful in treatment of bacterial infection and/or inhibition of bacterial LpxH activity. There is an expectation among those of ordinary skill in the art that similar structural compounds will have similar properties and that modification of a known structure is mere experimentation within the means of a skilled artisan. See MPEP 2144.09(I).
Allowable Subject Matter
Claim 30 is allowable.
Claim 32 is 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 KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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