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 .
DETAILED ACTION
Claims 3, 5, 12, 17, 25, 27-32, 35, 37, 40-43 and 45-46 are currently pending in the instant application. Applicants have amended claims 3, 5, 12, 17, 25,27, 31, 35 and 37, canceled claims 1-2, 4, 6-11, 13-16, 18-24, 26, 34, 36, 38-39 and 44 and added new claims 45-46 in an amendment filed on May 6, 2025. Claims 3, 25, 27-33, 35, 37, 40-43 and 45 are rejected and claims 5, 12, 17 and 46 are objected in this Office Action.
I. Priority
The instant application is a 371 of PCT/US2023/064879, filed on March 23, 2023 which claims benefit of US Provisional Application 63/322,902, filed on March 23, 2022.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on September 20, 2024 and December 9, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 3, 27-33, 35, 37, 40-43 and 45 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. Specifically, the term “comprise” found in the phrase “wherein the one or more substitutions comprise” renders the products indefinite as the term “comprise” is considered open-ended language when not clearly defined and therefore is including additional subject matter in the compounds of the formula I in claim 3 that is not described in the instant specification and is not particularly pointed out or distinctly claimed. A claim to a chemical compound cannot be open-ended but must be claimed with precision. This rejection can be overcome by amending the term “comprise” so that it now reads “are selected from the group consisting of” and then add the term “and” in between in the last two structure listed in the group in claim 3.
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 25 is 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 25 depends on claim 3 and is drawn to compounds
PNG
media_image1.png
294
745
media_image1.png
Greyscale
. Both of these compounds have a methyl substituted on the -N-N=N- chain which is not found in claim 3. The first compound also has -N(CH3)2 groups substituted on the terminal phenyl rings which is also not defined in claim 3. Therefore, this claim does not further limit the subject matter in claim 3. 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.
Claims 3, 27-32, 35, 37, 40,42 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karembe, et al. (WO 2018/096087 (A1)). The instant invention claims
PNG
media_image2.png
783
739
media_image2.png
Greyscale
The Karembe, et al. reference teaches diminazene for use as an anti-infective drug
PNG
media_image3.png
153
376
media_image3.png
Greyscale
(See page 6, lines 5-9) wherein the substitution is
PNG
media_image4.png
83
68
media_image4.png
Greyscale
. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
V. Objections
Dependent Claim Objections
Dependent Claims 5, 12, 17 and 46 are also objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
VI. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626
Prosecution Insights