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
This Application is a 371 of PCT/SG2020/050362, filed 06/25/2020, and claims foreign priority to SG10201905890P, filed 06/25/2019 in Singapore.
Claim Status
Claims 23, 26-31, 33-39 and 42 are currently active and subject to examination. Claim 41 is withdrawn pursuant to the Election made by the Applicant in the Remarks dated Feb. 19, 2025.
Claim Objections- Maintained
Claims 23, 29 and 38-39 are objected to because of the following informalities: the oxygen appears to be missing in this group in claims 23 and 29:
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. In claim 38, the structures are not drawn with sufficiently black and clear lines and atom labels:
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553
626
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389
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Claim 38.
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474
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678
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Claim 39.
Appropriate correction is required.
Specification
A substitute specification including the claims is required pursuant to 37 CFR 1.125(a) because (A) the structures in claims 38-49 are not drawn with sufficiently black and clear lines and atom labels; (B) the structures on pages 15-19, 30-34, 64-68 and 80-87 are not drawn with sufficiently black and clear lines and atom labels. The numerous illegible structures and labels make it difficult to consider the application.
For example:
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p. 15;
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634
668
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p. 16;
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268
612
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p. 17;
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871
470
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p. 18;
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661
448
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p. 19;
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676
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p. 30;
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530
603
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p. 31;
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358
510
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p. 32;
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298
637
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p. 33;
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612
620
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p. 34;
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326
519
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p. 64;
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863
611
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p. 65;
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480
454
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p. 66;
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837
486
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p. 67;
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364
461
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p. 68;
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138
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p. 80.
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855
412
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p. 81;
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653
588
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p. 82;
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276
622
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p. 83;
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185
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243
568
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p. 85;
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317
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p. 86;
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p. 87.
The above are presented as examples. Applicant should examine each structure in the Specification for legibility and clarity and correct as required by providing structures with sufficiently dark and clear lines and letters.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Rejections- Withdrawn- Overcome by Amendment
The rejection of claims 23-40 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being is withdrawn.
The rejection of claims 27-28, 34 and 40 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn.
The rejection of claims 23-25, 27, 29, 30, 32, 33, 35 and 42 under 35 U.S.C. 102(a)(1) as being anticipated by Cheng et al. (WO 2015043492 A1; of record IDS cite no. 1) is withdrawn.
The rejection of claims 23-24, 27, 29, 30, 32, 33, 35, 40 and 42 under 35 U.S.C. 102(a)(1) as being anticipated by Barda et al. (US 7,666,879 B2) is withdrawn.
The rejection of claim(s) 23, 24, 25, 29, 30, 32, 33, 35, 37, and 42 under 35 U.S.C. 103 as being unpatentable over Cherian et al. (WO 2014088519 A1; of record IDS cite no. 8) is withdrawn.
The rejection of claim(s) 23, 24, 25, 29, 30, 32, 33, 35, 37, and 42 under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 7,709,518 B2) is withdrawn.
The above rejections were overcome by Applicant’s amendments.
Claim Rejections - 35 USC § 112(b)- New Grounds of Rejection Necessitated by Amendment
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 26 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.
One of ordinary skill in the art cannot determine the metes and bounds of claim 26 because it is unclear what alternatives are covered by the claim. The claim recites that each R1 to R5 is halo or C1-3 alkyl, optionally wherein each R1 to R5 is fluoro, chloro, methyl or ethyl. It is unclear how these optional groups are further limiting to the claim, and if they are meant to specify a further limitation of the claim. Examples and preferences are properly set forth in the specification (MPEP 2173.05(d)). Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)- New Grounds of Rejection Necessitated by Amendment
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 38-39 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 38-39 fail to include all of the limitations of claim 23 upon which they depend. Claim 23 requires that Z is attached to the molecule by a covalent bond but claims 38-39 have several molecules wherein Z is not attached by a covalent bond, but rather through O or NH:
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Claim 38;
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Claim 39.
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.
Statutory Double Patenting- Previously Presented
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The provisional rejection of claims 23 and 33-35 under 35 U.S.C. 101 as claiming the same invention as that of claims 21, 24-33 and 38 of copending Application No. 17/596,976 (reference application) is maintained. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Response to Arguments
The Applicant did not traverse the rejection but merely requested that it be held in abeyance (Remarks, p. 39). As such, the rejection is maintained.
Nonstatutory 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.
The provisional rejection of claims 23, 26-31, 33-39 and 42 on the ground of nonstatutory double patenting as being unpatentable over claims 21, 24-33, 38 and 40 of copending Application No. 17/596,976 is maintained. Both claims are directed towards the same genus of compounds and list overlapping species.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
The Applicant did not traverse the rejection but merely requested that it be held in abeyance (Remarks, p. 39). As such, the rejection is maintained.
Conclusion
No claim is found to be allowable.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER DAHLIN whose telephone number is (571)270-0436. The examiner can normally be reached 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached on (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER DAHLIN/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629