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 .
DETAILED ACTION
RESPONSE TO ELECTION/RESTRICTION
Applicant's election with traverse of group I, drawn to compounds of the formula I and simple compositions thereof and elected species:
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in the reply filed on 10/8/2025 is acknowledged. The traversal is on the ground(s) that the examiner has not shown that the claims lack a special technical feature since the method claims are not disclosed by the prior art. Further arguing that there is no serious search burden to examine all groups.
To reiterate, the inventions listed as Groups I-V do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The prior art by Baldwin et al. (Tetrahedron, 49, pages 6309-6330, 1993-mentioned in search report) discloses a compound which anticipates claim 1 (see page 6311, compounds 4 and 6). Thus, the claims lack a special technical feature. The argument that all claims need to be anticipated or rendered over the prior art to show lack of unity is not a requirement for unity of invention. The examiner clearly stated that there is prior art of record which shows lack of unity (Applicant themselves have not argued this point as well) between the claims. Clearly if one group lacks unity of invention as in the instant case; the inventions claimed together could not possibly form single general inventive concept under PCT Rule 13.1.
In reference to lack of a serious search burden; this is not found persuasive because there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) Separate classification: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.;
(b) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors.
(c) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s).
In reference to section (c), the inventions as claimed would require separate
fields of search and would result in a serious search burden for the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 7-8 is contained herein. Applicant’s elected species was found free of the art and the search extended to cover compounds wherein Aryl = phenyl and R6 = -C(O)Oalkyl.
Priority
This application is a national phase entry under 35 U.S.C. 371 of international application PCT/PL2020/050005, filed January 10, 2020.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Claim Objections
Claims 7-8 are objected to because of the following informalities:
The preamble of claim 7 should more appropriately read “A N,N-disubstituted aromatic sulphonamide of formula I”. Additionally in claim 7, the language under variables R1,2 “represent group of substituents consisting of formula (II)” should more appropriately read “represent the group of formula (II)” for simplicity.
The preamble of claim 8 at the end should incorporate language representative of proper Markush language such as “is selected from the group consisting of”:” or something similar thereof. Thus the claims are objected to. Correction is required.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 7-8 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 7-8 of copending Application No. 17/791,659. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
Both genus structures of the instant application and copending application in claim 7 are nearly identical with the difference being seen in the instant application with respect to variable “R6” (note formula II recites R6). However the examiner uses the most reasonable broadest interpretation that the two could possibly be the same. Furthermore, claim 8 of the copending application recites similar species as in the instant claim 8 (e.g.
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). Thus the claims are not independent and distinct from each other.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
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.
Claim 7 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 pre-AIA the applicant regards as the invention.
In claim 7 the variable “R6” in the language “wherein R6” is considered indefinite since said variable is not recited in the formula I generally or any of the definitions associated therein. Does Applicant intend “R6” as in the formula II or something else? Thus the claim is indefinite. Correction is required. The examiner will assume that the two are equivalent in terms of prior art purposes until the issue is addressed.
The claim 7 recites the following groups which have no point of attachment:
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which is indefinite.
Additionally claim 7 recites several preferred combined embodiments and conditions defining variables R6-9 and what subsequently defines “Aryl” is. However the claims are not fully complete regarding what “Aryl” is in other scenarios (e.g. R6 is -CN, or the cyclized groups lacking attachment groups defined above, etc.). Are Applicants suggesting that those embodiments are void and excluded from the claim scope or something else? Thus the scope is unclear. See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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 8 is 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. Claim 8 does not further limit claim 7 with respect to several species that do not fall within the scope of the combined recited provisos defined in claim 7:
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.
These compounds have the limitation R6 = -C(O)alkyl and Aryl = 6-NMe2-naphthyl-1 when R9 is methyl which is not supported by claim 7.
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.
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.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated over Baldwin et al. (Tetrahedron, 49, pages 6309-6330, 1993-mentioned in IDS).
Baldwin et al. discloses a compound which anticipates claim 1 (see page 6311, compound 4):
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wherein R6 = -C(O)Oalkyl and aryl = 4-methylphenyl. Applicants are to be aware of any other species in this document which may anticipate the claims.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CA Reg. No. 2374240-61-4, entered into STN on 09/05/2019. CA Reg. No. 2374240-61-4 corresponds to compound
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which is a compound of Formula (I) wherein R1 and R2 is
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wherein R6 is COOR9 wherein R9 is C1-C4 alkyl and Aryl is 4-C1-C4alkoxy substituted phenyl. Thus the claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624