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 elected species:
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in the reply filed on 10/8/2025 is acknowledged. The traversal is on the ground(s) that a product claim and process for use are presumed to have unity of invention. This is not found persuasive because since the alleged presumption was rendered moot by the prior art cited of record by the examiner. Recall that the prior art (RN 92856-78-5, STN Registry -mentioned in search report) anticipates claim 2 (see chemical compound therein). Thus, the claims lack a special technical feature.
The requirement is still deemed proper and is therefore made FINAL. However, the election of species requirement is hereby withdrawn.
Applicant’s elected species was found free of the art and the search extended to cover the full scope of formula I.
Claims 15, 41, and 43-50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1, 2, 6, and 8-14 is contained herein.
Priority
This patent application isa U.S. National Phase Application of PCT
International Application PCT/US2021/013311, filed January 13, 2021, designating the United States of America and published in the English language, which is an International Application of and claims the benefit of priority to U.S. Provisional Application No. 62/961,580, filed January 15, 2020.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Specification
Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics." Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
It is recommended that the structure of Formula I be inserted into the abstract to accurately illustrate the claimed invention.
Claim Objections
Claims 2, 6, and 8-14 are objected to because of the following:
The preamble language “of Claim 1” should more appropriately read “of claim 1”.
Claims should only begin with a capital letter and end with a period. See MPEP 608.01(m). Thus the claims are objected to. Correction is required.
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 2 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 2 does not further limit claim 1 with respect to X1 being selected from “optionally substituted aryl” since this language was not presented earlier in claim 1.
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 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated over RN 92856-78-5, STN Registry, 1984 -mentioned in IDS.
STN Registry teaches the following compound and information associated with it:
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where the compound has the limitation wherein X1 = optionally substituted phenyl and X2,3 = H. Thus the claim is anticipated.
Conclusion
Claim 1 is allowable. Claim 2 is rejected. Claims 6 and 8-14 are objected to.
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