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 .
Status of the Claims
Claims 1 – 3, 6 – 7, 9 – 17, 19 – 21 and newly added claim 23 are pending.
Claims 1, 3, 6, 11 and 19 – 21 are rejected.
Claim 1 is objected.
Claims 2, 7, 9 – 10 and 23 are allowed.
Claims 12 – 17 are withdrawn.
Response to Applicant’s Remarks
Applicant’s remarks/amendments filed on May 26, 2026 have been fully considered.
The new matter rejection under 35 U.S.C. 112(a) of claim 1 as failing to comply with the written description requirement is withdrawn in view of the amendment to delete the moiety
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from the scope of variable R1.
The rejection under 35 U.S.C. 102(a)(1) of claims 1, 11 and 19 as being anticipated by Patil et al. IN 2011MU0020 is withdrawn in view of amendments to delete the moiety
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from the scope of variable R1.
The rejection under 35 U.S.C. 102(a)(1)/102(a)(2) of claims 1, 6, 11, 19 and 22 as being anticipated by Carcanague et al. WO 2004/048392 A1 is withdrawn in view of amendments to delete the limitation, wherein R1 is –CH2R6.
Examination: Applicant’s amendments necessitate extending the search. In accordance with MPEP §803.02, examination of the Markush-type claim has been extended to the complete scope of claims 1 – 3, 6 – 7, 9 – 11, 19 – 21 and 23.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, page 2, lines 7-13: The limitations for the variables R2 and R3:
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are improperly recited in the context of the claim. In order to overcome the objection, Applicant may amend to recite said limitations AFTER the limitations for the variable R8. See, page 3, lines 17-21.
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.
Claims 1, 6, 11 and 19 – 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 recites that limitations for the variables R4 and R5 as follows:
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. See, page 2 line 14 – page 3 line 4. However, claim 1 has been amended to delete the scope of variables R4 and R5 from the group of alternatives in variable R1. It is unclear how the limitations of R4 and R5 are applicable with respect to the compound of formula I. Therefore, claim 1 is considered indefinite. Dependent claims 6, 11 and 19 – 21 do not address the issues or correct the deficiencies in claim 1, and are also considered indefinite.
In order to overcome the rejection, Applicant may amend to delete the limitations for the variables R4 and R5 in claim 1.
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.
Claim 3 is rejected under 35 U.S.C. 112(d) 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 3 is directed to the compound of claim 23 and recites the limitation “wherein R1 is CH2R6 …”. See, line 2 of the claim. However, claim 23 (upon which claim 3 is dependent on) does not explicitly recite said limitation (-CH2R6) for the variable R1. Thus, claim 3 fails to include all the limitations and is in improper dependent form.
In order to overcome the rejection, Applicant may cancel the claim, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sagar Patel/Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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