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 Claims
Claims 18-22 are pending in the instant application.
Claims 1-17 have been canceled.
Priority
Acknowledgement is made of Applicant’s claim for foreign priority based on the IN201741011533 application filed in the Republic of India on March 30th, 2017.
Information Disclosure Statement
The Information Disclosure Statements received July 9th, 2025 have been fully considered by the examiner, except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which Applicant may become aware of in the specification.
Drawings
Acknowledgement is made of the drawings received November 25th, 2024. These drawings are acceptable.
Claim Objections
Claims 18-19 are objected to because of the following informalities:
Claims 18-19 are drawn to a salt of formula 11 or a process for preparing thereof. Formula 11 is recited in the claims as:
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At Page 16 of the instant specification, Formula 11 is taught as:
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For consistency, Formula 11 should be recited in the claims as it is presented in the instant specification.
Appropriate correction is required.
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 19-22 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.
Claim 19 is rendered indefinite, as it is drawn to a process for preparing a salt of formula 11 comprising converting TXA709 to the salt of formula 11. No steps are positively recited such that a person having ordinary skill in the art would readily ascertain the metes and bounds of the limitation of “converting TXA709”. Appropriate clarification is required.
Claim 20 is rendered indefinite, as it is drawn to a process for preparing a compound of formula 8 comprising converting a compound of formula 7 to the compound of formula 8. No steps are positively recited such that a person having ordinary skill in the art would readily ascertain the metes and bounds of the limitation “converting a compound of formula 7”. Appropriate clarification is required.
Claim 21 is rendered indefinite, as it is drawn to a process for preparing a compound of formula 7 comprising converting a compound of formula 6 or salt thereof to the compound of formula 7. No steps are positively recited such that a person having ordinary skill in the art would readily ascertain the metes and bounds of the limitation “converting a compound of formula 6”. Appropriate clarification is required.
Claim 22 is rendered indefinite, as it is drawn to a process for preparing a compound of formula 6 comprising converting a compound of formula 5 to the compound of formula 6. No steps are positively recited such that a person having ordinary skill in the art would readily ascertain the metes and bounds of the limitation “converting a compound of formula 5”. Appropriate clarification is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1421604-28-5 (entered into STN February 21st, 2013; cited on Applicant’s Information Disclosure Statement filed July 9th, 2025; hereinafter referred to as CAS Registry File).
CAS Registry File teaches the following compound:
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This compound is the compound of formula 6 as recited at instant Claim 18.
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qiang et. al. (“Synthesis and Biological Evaluation of Novel FtsZ-targeted 3-arylalkoxy-2,6-difluorobenzamides as Potential Antimicrobial Agents”, Chem Biol Drug Des, 2016; cited on Applicant’s Information Disclosure Statement filed July 9th, 2025; hereinafter referred to as Qiang).
At Page 259, Scheme 2, Qiang teaches the following compounds:
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For clarity of the record, the full structure of Compound 32, in which R1 is defined as hydrogen is:
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This compound is the compound of formula 7 as recited at instant Claim 18.
Claims 18-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent No. 10,513,528 (priority date of February 25th, 2016; cited on Applicant’s Information Disclosure Statement received July 9th, 2025; hereinafter referred to as US ‘528).
The applied reference has a common applicant and joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding Claim 18, at Column 12, Line 40, US ‘528 teaches a salt of the following structure:
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As noted Page 16 of the instant specification, this is the salt of formula 11 as instantly claimed.
Additionally, US ‘528 teaches a compound of the following structure at Column 4, Line 1:
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This is the compound of formula 6 as recited at instant Claim 18.
Additionally, US ‘528 teaches a compound of the following structure at Column 3, Line 50:
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This is the compound of formula 7 as recited at instant Claim 18.
Regarding Claim 19, at Column 12, Lines 47-64 of US ‘528, preparation of this salt is taught by converting TXA709 into the salt of formula 11, as recited at the claim.
Regarding Claim 20, at Figure 2, US ‘528 teaches in the reaction scheme the following conversion:
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Regarding Claim 21, US ‘528 teaches at Claim 7 a method of converting
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into
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.
Regarding Claim 22, US ‘528 teaches a method of converting
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into
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-8 of U.S. Patent No. 10,513,528. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are drawn to methods of preparing compounds to which instant Claim 18 is drawn.
Claim 7 of U.S. Patent No. ‘528 is drawn to a method for preparing the amide:
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Claim 8 of U.S. Patent No. ‘528 is drawn to a method for preparing the acid:
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This amide is the compound of formula 7 and this acid is the compound of formula 6, both instantly claimed at Claim 18. While the patented claims are drawn to methods for preparing these compounds, the preparation thereof necessitates the possession of the compounds themselves. Therefore, Claim 18 is not patentably distinct from the patented Claims 7 and 8.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-8of U.S. Patent No. 10,774,093. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are drawn to methods of preparing compounds to which instant Claim 18 is drawn.
Claim 7 of U.S. Patent No. ‘013 is drawn to a process for preparing the amide:
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Claim 8 of U.S. Patent No. ‘013 is drawn to a process for preparing the acid:
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This amide is the compound of formula 7 and this acid is the compound of formula 6, both instantly claimed at Claim 18. While the patented claims are drawn to methods for preparing these compounds, the preparation thereof necessitates the possession of the compounds themselves. Therefore, Claim 18 is not patentably distinct from the patented Claims 7 and 8.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-8 of U.S. Patent No. 12,173,013. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are drawn to methods of preparing compounds to which instant Claim 18 is drawn.
Claim 7 of U.S. Patent No. ‘013 is drawn to a process for preparing the amide:
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Claim 8 of U.S. Patent No. ‘013 is drawn to a process for preparing the acid:
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This amide is the compound of formula 7 and this acid is the compound of formula 6, both instantly claimed at Claim 18. While the patented claims are drawn to methods for preparing these compounds, the preparation thereof necessitates the possession of the compounds themselves. Therefore, Claim 18 is not patentably distinct from the patented Claims 7 and 8.
Conclusion
Claims 18-22 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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/D.J.B./Examiner, Art Unit 1624
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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