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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/02/2022 has been considered by the examiner.
Response to Amendment
The preliminary amendments of 04/20/2022 and 08/26/2022 have been entered.
Claims 16-30 are pending.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure. A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The abstract of the disclosure is objected to because it does not appear to describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. It is the Examiner's position that at least a chemical structure formula (1) should be shown in the abstract. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 16, 25, and 26 are objected to because of the following informalities:
in claims 16 and 25 it is suggested that each R´ (acute accent) be replaced with R' (single prime symbol) for ease of reading;
in claim 25, it is suggested that "formula (1´)" (acute accent) on line 1 and "formula (1ʼ)" (single quotation mark) be replaced with "formula (1')" (single prime symbol) for ease of reading;
in claim 25, it is suggested that the dashes on lines 1 and 4 of page 12 of the claimed of 08/26/2025 be deleted for ease of reading;
in claim 26, it is suggested that the dashes on the final lines of page 17 of the claimed of 08/26/2025 be deleted for ease of reading; and
in claim 26, it is suggested that each appearance of ´ (acute accent) be replaced with ' (single prime symbol) for ease of reading.
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 16-30 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 16 recites the limitation "the formula (1)" on line 3. There is insufficient antecedent basis for this limitation in the claim.
Claims 17-24 are rejected as being dependent on indefinite claim 16.
Regarding claims 19 and 20, claims 19 and 20 recites variables R0 and RN; however, these do not appear to be defined either in claims 19 and 20 or in claim 16 from which the claims depends. Therefore, the claims are indefinite because it is unclear how the formula may be met with respect to the variables R0 and RN.
For purposes of examination, the variables R0 and RN will be interpreted as they are defined in the specification on page 11.
Regarding claim 21, it is unclear what the dashed line represents in the formula (R-1) and therefore the claim is indefinite.
For purposes of examination, the claim will be interpreted such that the dashed bond indicates a bond to the structure of formula (1).
Claim 22 recites the limitation "the bond" on line 6 of page 11. There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, the claimed will be interpreted such that the dashed bond indicates a bond to the structure of formula (1).
Claim 25 recites the limitation "the bond to the structure" on line 3 of page 15. There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, the claimed will be interpreted such that the dashed bond indicates a bond to the structure of formula (1').
Claims 26-30 are rejected as being dependent on indefinite claim 25.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. KR-101834228-B2 (hereinafter "Lee-KR" and see English language machine translation referred to herein as "Lee-MT").
It is noted that KR-101834228-B2 is cited on the IDS of 05/22/2022.
Regarding claims 25-27, Lee teaches an indolo-1,2-benzothiazine derivative represented by a formula 1 (Lee-MT, page 2, lines 19-20)
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(Lee-KR, page 16) and discloses specific examples including example 14
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(Lee-KR, page 22). Lee teaches that the process for preparing the compound is carried out in an organic solvent (Lee-MT, page 6 of 17, lines 5-6) and therefore teaches a solution of the compound and at least one solvent.
Lee does not specifically disclose a compound of the formula 1 comprising at least one radical represented by the claimed formula (R-2). However, Lee teaches that in formula 1, R1 to R4 may be a (C6-C12) aryl, a (C3-C12) heteroaryl, among others (Lee-KR, page 2 of 17, lines 23-24), and teaches that examples of a (C3-C12) heteroaryl include dibenzofuranyl, among others (Lee-Kr, page 3 of 17, lines 12-17).
Therefore, given the general formula and teachings of Lee, it would have been obvious to one of ordinary skill in the pertinent art before the effective filing date of the claimed invention to substitute the phenyl group in the compound of Example 14 at the position corresponding to R3 with a dibenzofuranyl group, because Lee teaches the variable may suitably be selected as such. The substitution would have been one known element for another and one of ordinary skill in the pertinent art would reasonably expect the predictable result that the modified compound would possess the same or substantially similar properties as the unmodified compound. See MPEP § 2143.I.(B).
The modified example 14 of Lee is a compound of the claimed formulae (1') and (4-2') and meets claims 25-26 and the combination of the compound and at least one organic solvent meets the claimed formulation of claim 27.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elizabeth M. Dahlburg whose telephone number is 571-272-6424. The examiner can normally be reached Monday through Thursday, 9 a.m. to 4 p.m. ET, and alternate Fridays.
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, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M. DAHLBURG/Primary Examiner, Art Unit 1786
Prosecution Insights