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 101-123 are pending. Claims 108, 111, and 119-122 are withdrawn. Claims 101-107, 109-110, and 112-118 are rejected. Claim 123 is objected to.
Information Disclosure Statement
The Information Disclosure Statements (IDS’s) submitted on 4/11/2025 and 7/31/2026 were considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I and the species of Compound 17:
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, in the reply filed on 7/31/2026 is acknowledged.
Claims 101-107, 109-110, 112-118 and 123 embrace Applicant’s elected species and are therefore under examination. The elected species is free of the prior art. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” The search has been expanded to include non-elected species rejected under 35 USC 102 and 103 below. Additionally, claim 123 has been searched in full and is free of the prior art.
Claims 108, 111, and 119-122 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 117 is objected to because of the following informalities:
Compounds 24 and 25 should be explicitly drawn out.
Lines 1 and 2 should read: “A compound selected from the group consisting of”.
Appropriate correction is required.
Claim 123 is objected to because of the following informalities:
Line 1 should read: “The compound of claim 101, wherein the compound is selected from the group consisting of:”.
The second to last line, there should be an “and” in between the last two structures, instead of an “or”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 110 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 110 depends from claim 101 and claim 110 recites the following as included in the “R6” variable:
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, which are not included by the broader definition of “R6” in independent claim 101. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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) 101, 102, 103, 106, 107, 112, 114, and 116 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2935-94-6 (which entered the STN database on 11/16/1984).
Regarding instant claims 101, 102, 103, 106, 107, 112, 114, and 116, CAS Registry No. 2935-94-6 is drawn to the following structure:
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, which is embraced by a compound of instant formula (VB):
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,wherein R3= alkoxy; m = 0 (R3a = H); R2 = H; X = -C(O)-; Ra = H; n = 2; Y = -SH.
Claim(s) 101, 102, 103, 104, 105, 106, 107, 114, 115, 116 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bekvazarova et al. (Uzbek Chemical Journal, 2009, p. 7-11).
Regarding instant claims 101, 102, 103, 104, 105, 106, 107, 114, 115, 116, Bekvazarova teaches the following compound on p. 9 (arrow added by Examiner):
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, which is embraced by a compound of instant formula (VB):
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, wherein R3 = alkoxy (-OCH3); R2 = H; X = -C(O)-; m = 0 (R3a = H); n =1; Ra = alkyl (methyl); Y = -SC(O)NH2, R1 = -NR4R5, R4 and R5 = H.
Claim(s) 117 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schonauer et al. (JACS, 2017, 139, 12696-12703).
Regarding instant claim 117 and instant compound 2:
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, Schonauer teaches an identical compound (compound 4) in Table 1 (arrow added by Examiner):
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.
Claim(s) 101, 102, 103, 106, 107, and 112-116 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1695339-41-3 (which entered the STN database on 4/30/2015).
Regarding instant claims 101, 102, 103, 106, 107, and 112-116, CAS Registry No. 1695339-41-3 is drawn to the following structure:
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which is embraced by a compound of instant formula (VB):
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,wherein R3= alkoxy; m = 0 (R3a = H); R2 = H; X = -C(O)-; Ra = C3 alkyl (isopropyl); n = 1; Y = -SH.
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) 101, 102, 103, 104, 105, 106, 107, 109, 110, 112, 114, 115, 116, and 118 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schonauer et al. (JACS, 2017, 139, 12696-12703).
Schonauer teaches a similar compound (compound 4) in Table 1 with its IC50 value in uM (arrow added by Examiner):
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, which is similar to a compound of instant formula (VB):
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, wherein R3 = -C(O)R6, R6= alkoxy (-OCH3); R2 = H; X = -C(O)-; m = 0 (R3a = H); n =1; Ra = H; Y = -SC(O)NH2, R1 = -NR4R5, R4 and R5 = H. Additionally, the prior art teaches their compounds as bacterial inhibitors (see abstract).
Regarding instant claims 101, 102, 103, 104, 105, 106, 107, 109, 110, 112, 114, 115, 116, the prior art differs from the instant claims in a hydrogen vs. methyl possibility at the Ra location. The compounds as taught by the prior art and the compounds in the instant claims are considered structural analogs and hydrogen and methyl are deemed obvious variants. It is well established that the substitution of hydrogen for methyl on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, Whittaker, Stirling, and Ohta, 582 F.2d 638, 199 U.S.P.Q 137 (C.C.P.A. 1978). In the instant case, a person having ordinary skill in the art at the time the invention was filed would have been motivated to synthesize the instantly claimed analogs with the reasonable expectation that it would have the same utility as the closest structurally related compounds taught by the prior art and with the motivation of obtaining additional useful compounds. A person of ordinary skill in the art would have expected them to be useful in the same utilities (bacterial inhibitors) and been motivated to apply them in the same methods. Regarding instant claim 118, as discussed in the “Supporting Information”, the compounds were tested in a 2% DMSO buffer, which is a pharmaceutically acceptable carrier (see p. S11).
Allowable Subject Matter
Claims 123 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.
The closest prior art to claim 123 is Bekvazarova, as taught under 35 USC 102 supra. Bekvazarova teaches the following compound on p. 9 (arrow added by Examiner):
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, wherein Ra = methyl. It is similar to the following compound of instant claim 123:
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, but differs in the “Ra” location of methyl in the prior art vs. ethyl of instant claim 123. The prior art does not teach their compounds with similar utility, such as inhibitor of bacterial toxins. A PHOSITA would not have been motivated to explore manipulating the prior art compounds to arrive at homologs with the unique utility of inhibiting bacterial toxins.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626
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