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 .
Priority
This application was filed 07/05/2022 and is a 371 of PCT/CN2020/122111 (10/20/2020) which claims foreign priority to CN 202010064144.9 (01/20/2020) Claims 1-14 are before the Examiner.
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 1-14 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. Specifically, claim 1 is drawn to the method of making formula (I) from formula (II). However, formula (I) is not depicted or defined in claim 1. Correction is required.
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 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for making of the compounds of formula (I) or the compounds detailed in claim 14, does not reasonably provide enablement for any chiral oxo-aza-cycloalkane compound outside of these parameters of formula (I). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. The specification only enables the making of compounds of formula (I) or the specific compounds listed in claim 14. There is no other enablement given in the instant specification. There is no guidance outside of formula (I). It is suggested that the claims be limited to making either compounds of formula (I) or to the making of the compounds listed in claim 14.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Qi US Patent 11142499 (effective filing date of 03/06/2018). Qi teaches the starting materials and the conditions listed in the instant claims (see C2-C3) as well as C5 bottom of page and formula VIII on C29. Qi teaches the final products (formula (I)) as well. See C2-C3 as well as C5 bottom of page and formula VIII on C29. What is missing is the specifics of the reactions as listed in claims 6-13 for specific acids, bases as well as mass ratios, temperatures. These specifics are listed in claim 6-13. However, it would have been obvious to the ordinary artisan to use the reaction taught by Qi and optimize the reactions with various temperatures, ratios and specific acids/bases as needed. Rationale: The optimization of a known reaction is well within the expertise of the ordinary artisan.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Deshmukh. Deshmukh teaches a process of making chiral oxo-aza-cycloalkane compounds on page 1659. The starting materials and the conditions listed in the instant claims. What is missing is the specifics of the reactions as listed in claims 6-13 for specific acids, bases as well as mass ratios, temperatures. These specifics are listed in claim 6-13. However, it would have been obvious to the ordinary artisan to use the reaction taught by Deshmukh and optimize the reactions with various temperatures, ratios and specific acids/bases as needed. Rationale: The optimization of a known reaction is well within the expertise of the ordinary artisan.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
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/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625