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 .
Status of the Claims
Claims 1-7, 9, 18-23, 27-29, 31, 35 and 37 are pending. Claims 23, 27-29, 31, 35, and 37 are withdrawn. Claims 1-7, 9, and 18-22 are rejected.
Response to Amendments/Arguments
Objections to drawings from non-final rejection mailed 5/20/2026 have been overcome by 7/20/2026 amendments (Fig. 3 no longer blurry). Previous objections to drawings are withdrawn and remarks from 7/20/2026 will not be addressed.
The 112b rejections over claims 3 and 22 mailed 5/20/2026 have been overcome by 7/20/2026 amendments (antecedent basis remedied and trademark names appropriately replaced). Consequently, such rejections are withdrawn and remarks from 7/20/2026 will not be addressed.
The 102 rejection of claims 1-7, 9, and 18 has been overcome by 7/20/2026 amendments (deletion of hexanoic acid). However, a novel rejection is presented below as necessitated by amendments and the 103 rejection has been appropriately modified. Applicant’s arguments related to the modified 103 rejection will be addressed here.
In paragraphs five through seven on page six of the response, Applicant argues that Menkissoglu teaches away from the use of copper for control of plant pathogens because copper resistance has been observed from plant pathogens. Applicant additionally states that:
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. Examiner respectfully disagrees that these statements overcome the case of prima facie obviousness, as modified and necessitated by amendments, below. The instant claims are specifically drawn to an “amount” of a small molecule composition. The specific subject types and microbial types (including P. syringae) do not further limit the instant claims. Menkissoglu teaches that cupric hydroxide is antibacterial, which has an identical utility to piperidine (described in 103 rejection below) and combined together has consequently found to be prima facie obvious. ‘Absent a showing of unexpected results, one of ordinary skill in the art would be motivated to combine both of the therapeutic agents which are taught for the same purpose in order to treat said diseases.’ In re Susi, 58 CCPA 440 169 USPQ 423, 426 (1971); In re Crokett, 47 CCPA 126 USPQ 186,188 (1960). In the instant case, the small molecule composition components may treat bacterial diseases.
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.
Claim(s) 1-7, 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohler et al. (The Journal of Infectious Diseases, 2002, 186, 1122-30), in view of Arslan et al. (Journal of Enzyme Inhibition and Medicinal Chemistry, 2006, 21(2): 211-214).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Kohler teaches the following in the abstract: “Piperidine is a 1-ring heterocyclic compound formed from the polyamine cadaverine in the human intestine. Because heterocyclic compounds are routinely used in the promotion of antimicrobial treatment strategies, it was considered whether piperidine could be used against infection with enteric pathogens. This study demonstrates that piperidine treatment prevented the invasion of Salmonella typhimurium into model intestinal epithelium by nearly 95%”. Piperidine was used at concentrations of 50, 100 and 300 uM, diluted with 10 mM HEPES (aqueous, contains water) (see p. 1123, lines 9-14).
Kohler fails to disclose the amount of piperidine taught in the instant claims.
Arslan teaches piperidine derivatives with antimicrobial activity in the range of 32-512 ug/ml (equivalent to 32-512 mg/L) (see abstract).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art fails to disclose a single embodiment of an amount of piperidine as disclosed in the instant claims. Additional dependent claims will be addressed below.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1 and 6-7, the claims are drawn to a “small molecule composition” and the following is considered intended use and does not further limit the claim: “for the treatment of bacterial spot disease or bacterial speck disease in a subject in need thereof”. Consequently, it would have been obvious to a skilled artisan to arrive at a piperidine composition “in an amount to treat the symptoms of bacterial spot disease or bacterial speck disease” (taught by the instant disclosure as about 4 mg/L to about 1024 mg/L) with a reasonable expectation of success. Piperidine was previously demonstrated to have antimicrobial, particularly antibacterial properties and piperidine derivatives were taught with an overlapping concentration range to the instant claims. “In the case where the claimed ranges ’overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05(I). A PHOSITA would have been motivated to arrive at the instantly claimed composition in an amount to treat a bacterial infection. While Arslan teaches a piperidine derivative, having a core piperidine structure would have yielded reactivity similar to unsubstituted piperidine with predictable results. Regarding instant claims 9 and 18, the prior art teaches piperidine dissolved in an aqueous solution (HEPES).
Regarding instant claims 2-5, which ultimately depend from claim 1 and are also drawn to product claims: “the small molecule composition”, the subject in need of treatment and the bacteria which causes the disease do not further limit the actual product of the “small molecule composition” and are therefore not further limiting. Because the prior art composition also comprises piperidine, the prior art composition would inherently have the same properties and, therefore, the same capability of achieving the claimed uses.
Claim(s) 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohler et al. (The Journal of Infectious Diseases, 2002, 186, 1122-30), in view of Arslan et al. (Journal of Enzyme Inhibition and Medicinal Chemistry, 2006, 21(2): 211-214), as applied to claims 1-7, 9, and 18 above, and further in view of Menkissoglu et al. (Phytopathology, 81: 1263-1270, 1991).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Kohler and Arslan fail to teach the composition of claim 1 further comprising a copper-based bactericide.
Menkissoglu teaches the following on p. 1263, left column:
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. Menkissoglu additionally teaches the use of 1.2 g/L of cupric hydroxide (see p. 1264, left column, “Design of field experiments”).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
There is not a single embodiment of piperidine and a copper hydroxide (such as cupric hydroxide) together in the same composition in the prior art.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 19 and 22, it would have been obvious to a skilled artisan to arrive at a composition combining both piperidine and a copper-based bactericide, such as a copper hydroxide, as both are known antibacterials. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072. See MPEP 2144.06(I). Absent a showing of unexpected results, one of ordinary skill in the art would be motivated to combine both of the therapeutic agents which are taught for the same purpose in order to treat said diseases. In re Susi, 58 CCPA 440 169 USPQ 423, 426 (1971); In re Crokett, 47 CCPA 126 USPQ 186,188 (1960).
Regarding instant claims 20-21, while “to treat the symptoms of bacterial spot disease or bacterial speck disease in the subject in need thereof” is considered intended use and not further limiting, the prior art does teach an amount (1.2 g/L of cupric hydroxide) encompassed by the instant range of 1 g/L to about 2.1 g/L. “In the case where the claimed ranges ’overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05(I). A skilled artisan would have been motivated to arrive at the instantly claimed range of a copper hydroxide as a result of routine experimentation, with a reasonable expectation of success.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, 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 extension fee 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 MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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