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 .
Claims 1-18 are pending in the instant application. Claims 1-18 are rejected.
Information Disclosure Statement
The information disclosure statement filed on March 30, 2026 has been considered and a signed copy of form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112
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.
Claims 1-18 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 10, 13 and 16 recite the broad recitations “3-8% surfactant,” “a nitrogenous solvent,” “at a temperature range of -10ºC to 10ºC,” “at a temperature in the range of -5ºC to 10ºC,” and “at a temperature in a range of -5ºC to 10ºC for at least 10 minutes,” and the claims also recite “the surfactant preferably being laureth-7,” “preferably nitromethane,” “preferably 0ºC,” “preferably at 0ºC,” and “preferably 0ºC for 10 minutes,” which are the narrower statements of the ranges/limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This rejection can be overcome by amending the claims to delete either the broad recitations or the narrower statements of the ranges/limitations following the word preferably.
With regards to claims 1 and 3, the phrase “the isomeric forms thereof” is not defined in the specification and therefore, renders the claims indefinite because it is unclear whether Applicant meant to include both structural (constitutional) isomers, which would not be included in formula (I), and stereoisomers of the compounds. This rejection can be overcome, for example, by amending the claims to replace the phrase “the isomeric forms thereof” with “stereoisomers thereof.”
Also with regards to claims 1 and 3, the phrase “the salts of same” is unclear and render the claims indefinite. This rejection can be overcome, for example, by amending the claims to replace the phrases with “salts thereof.”
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.
Claims 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barton et al. (Tetrahedron Vol. 46, No. 10, pp. 3419-3430, 1990).
Barton et al. discloses the compound 7c (see page 3421) which anticipates a compound of formula (I) wherein R1 and R3 are hydrogen and R2 is adamantane.
Claims 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barton et al. (Tetrahedron Vol. 43, No. 22, pp. 5307-5314, 1987).
Barton et al. discloses the compound 15c (see page 5310) which anticipates a compound of formula (I) wherein R1 and R3 are hydrogen and R2 is cyclohexyl.
With respect to the art rejections above over the claims, it is noted that the references do not teach that the compounds can be used in the manner instantly claimed (i.e., for use as a medicinal product and for use in the treatment of leishmaniasis). However, the intended uses of the claimed compounds do not patentably distinguish the compounds, per se, since such disclosed uses are inherent in the reference compounds. In order to be limiting, the intended uses must create a structural difference between the claimed compounds and the prior art compounds. In the instant case, the intended uses do not create a structural difference, thus the intended uses are not limiting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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