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 .
Priority
Examiner acknowledges that, according to the Filing receipt received 07/02/2025, that the instant application 18/866,801 filed 11/18/2024 is a 371 of PCT/US2023/022198 filed 05/15/2023, which claims benefit of U.S. provisional applications 63/437,848 filed 01/09/2023 and 63/344,378 filed 05/20/2022.
However, the limitations of the instant claims are not adequately supported or enabled in the manner provided by 35 U.S.C. 112(a) or pre-AIA U.S.C. 112, first paragraph by the U.S. provisional applications. More specifically, the limitations of R1 and R2 being selected from -S(O2)- are not taught or suggested in their entirety by either provisional application. Other deficiencies may also be present. As such, all the instant claims have been awarded the effective filing date of PCT/US2023/022198 filed 05/15/2023.
Information Disclosure Statement
The Information Disclosure Statement filed on 05/08/2026 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of list of references cited from the IDS is included with this Office Action. Examiner notes that the non-patent document #1 (DAISS, JURGEN, O. ET AL.) was only considered to the extent of the first page, as the remaining pages were not furnished with the IDS.
Claim Objections
Claims 1-18, 20, and 22-23 are objected to because of the following informalities:
Claim 1 (incorporated by claims 2-18, 20, 22-23):
“selected from -CH- or N;” should read “selected from -CH- and N;”
“PO(OH)2” should read “-PO(OH)2;”
“said alkyl, aryl…” should read “wherein said alkyl, aryl…”
“heterocycloalkyl and heteroaryl optionally substituted” should read “heterocycloalkyl and heteroaryl are optionally substituted”
“-Ophenyl” should read “-O-phenyl”;
“said alkyl, phenyl…” should read “wherein said alkyl, phenyl…”
“phenyl and pyridyl optionally substituted” should read “phenyl and pyridyl are optionally substituted”
Claim 2: “one of X1 and X2 -CH- and” should read “one of X1 and X2 is -CH- and”
Claim 10: “are-(CH2)nC(O)OR” should read “are -(CH2)nC(O)OR”
Claim 11:
Each variable and its listed alternatives (e.g. “Y is selected from”, “R1 is”, etc.) should be separated by semicolons rather than commas to avoid confusion
“and -CH2-CH2-CH2-” should read “-CH2-CH2-CH2-”
“and-PO(OH)2” should read “and -PO(OH)2”
Claim 15: “selected phenyl,” should read “selected from phenyl,”
Claim 22: “any multi-drug resistant” should read “a multi-drug resistant”
Claim 23: “, or to a person in need thereof” should read “to a person in need thereof”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claim 23 is 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.
Claim 23 recites “A method of treating bacterial infections in which MsbA is involved”. The limitation “in which MsbA is involved” is unclear as one of ordinary skill in the art would not be apprised as to the degree or manner in which MsbA must be “involved” in a bacterial infection in order to fall within the scope of the claims. The specification additionally does not provide adequate guidance for one to construe the scope of the claim language at issue. Correction and/or clarification is required.
Claim Rejections - 35 USC § 112(d)
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.
Claims 15 and 16 are 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.
Claims 15 and 16 depend upon claim 1. Claims 15 and 16 set forth limitations for R3 and R4. Claim 15 recites “one of R3 and R4 is pyrazolyl… and the other is selected… pyrazolyl, triazolyl… thiazolyl, and oxazolyl”. Claim 16 recites “one of R3 and R4 is C1-6alkyl… and the other is selected… pyrazolyl, triazolyl… thiazolyl, and oxazolyl”. Pyrazolyl, triazolyl, thiazolyl, and oxazolyl are heteroaromatic groups containing 2-3 carbons. However, claim 1 recites “R3 and R4 are independently selected from… C3-10heterocycloalkyl and C4-10heteroaryl”. As pyrazolyl, triazolyl, thiazolyl, and oxazolyl do not contain at least 4 carbons, claims 15 and 16 fail to incorporate the limitations of claim 1.
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.
Allowable Subject Matter
Claim 19 is allowed. Claims 1-18, 20, and 22-23 are not allowable but are free of the art.
The closest prior art is Sargent et al. (US 2646411) which discloses the following compound (column 4).
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However, the above compound is not within the scope of R3 and R4 as in the claimed Formula I. Moreover, Sargent et al. is directed toward gelling agents for PVA gels, and is not considered analogous subject matter, such that one of ordinary skill in the art would not be motivated to modify the above compound to arrive at the instant invention.
Additionally, prior art document Pubchem CID 13017586 (IDS filed 05/08/2026) discloses the compound as below.
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However, the above compound does not contain -NH-G1- R3 or -NH-G2-R4. The compound does not have a disclosed utility, such that one of ordinary skill in the art would not be motivated to modify the above compound to arrive at the instant invention.
Conclusion
Claim 19 is allowed. Claims 15, 16, and 23 are rejected. Claims 1-14, 17-18, 20, and 22 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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/MADELINE E BRAUN/Examiner, Art Unit 1624 09/23/2026
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