Detailed Action
The present office action is in response to the reply filed on 01 Jun 2026.
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
Claims 1-6 of the pending application have been examined on the merits. Claim 7 is withdrawn (see “Response to Applicant Election” below).
Priority
Applicants identify the instant application, Serial #: 18/891,706, filed 20 Sep 2024, as claiming priority from Provisional Application #: 63/541,216, filed 28 Sep 2023.
Response to Applicant Election
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 01 Jun 2026 is acknowledged. The claims are not in condition for allowance and so the non-elected group remains withdrawn.
Claims 7 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01 Jun 2026.
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Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-5, claim 1 is directed to compounds of Formula (I):
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399
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Claims 2-5 further limit the variables and claim 5 is directed to the following single compound:
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MPEP § 2163(I) states:
Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).
Further, MPEP § 2163(II)(A)(3)(a)(i) states:
Whether the specification shows that the inventor was in possession of the claimed invention is not a single, simple determination, but rather is a factual determination reached by considering a number of factors. Factors to be considered in determining whether there is sufficient evidence of possession include the level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the inventor was in possession of the claimed species is sufficient. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
The claims are drawn to a compounds of Formula (I), which the instant specification supports in several places (e.g., paragraphs [05], [06], [07], and [10]). The disclosed utility of the compounds of Formula (I) is as antibacterial agents and may have anti-inflammatory activity (paragraphs [21] and [25]). However, while the specification provides Formula (I), there is no other sufficient evidence to show the inventor was in possession of the claimed species. The disclosure of compounds of Formula (I) merely shows possession of the ability to draw chemical structures. The disclosure of a single mass spectrometry fragment, the nuclear magnetic resonance peaks, or the infrared spectroscopy peaks for a single compound of Formula (I) would be enough to convince the artisan that applicant had possession of the claimed compounds. Moreover, if the application had included any form of experimental detail showing antibacterial properties for even a single compound of Formula (I), regardless of how much or little empirical data applicant provided to show the identity of the compounds, the artisan would have been convinced that applicant possessed the claimed compounds. Because no other empirical or experimental data exists within the specification to show the characteristics of the compounds claimed, it would not be clear to the artisan that the inventor was in possession of the claimed species.
Regarding claim 6, claim 6 is rejected for failing to remedy the deficiencies found in claim 1.
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.
Claims 1-6 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.
Regarding claims 1-2 and 5, the phrase "ester" renders the claim indefinite because the person having ordinary skill in the art would be unsure what it means to create an ester out of the claimed compounds. There are no obvious places on the claimed compounds of Formula (I) on which to create the ester bonds, further, it is unclear which esters are included in the scope of this limitation. Claims 3-4 and 6 are rejected for failing to remedy the deficiencies of claims 1-2 and 5.
Pertinent Prior Art
Lu et al. (Heterocycles, 2009, 78:1031-1039) is considered pertinent for teaching the synthesis of tris(thiazoline) compounds using 2,4,6-pyridinetricarboxylic acid and chiral amino alcohols. Ozturk et al. (Chem Rev, 2010, 110:3419-3478) is considered pertinent for teaching the synthesis of 2-thiazolines and 3-thiazolines attached to a benzene core.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.D.M./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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