Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claims 27 and 59-61 of K. Kinoshita et al., US 17/860,589 (Jul. 8, 2022) are pending and under examination. Claims 27 and 59-61 are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group (II), (claim 27) drawn to an intermediate of Formula Ile, without traverse, in the reply filed on February 5, 2025. New claims 59-61 are added to the invention of Group (I). Claims 17-26 and 28-58 drawn to non-elected Groups (I), (III), and (IV) are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b) and have been cancelled by Applicant. The restriction requirement is maintained as FINAL.
Pursuant to the Election of Species Requirement, Applicant elected the compound of formula Ile with each of A7 through A10 being C, each of R6 and R6’ being methyl; each of PR7 through PR10 being H, which has the following structure.
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No claims (as currently amended) read on the elected species. Accordingly, the provisional election of species requirement is withdrawn. See, MPEP § 803.02.
Withdrawal Claim Rejections 35 U.S.C. 112
Rejection of claim 27 under 35 U.S.C. 112 as indefinite because the recitation of “or represent a group which can be converted to R7 to R10” is unclear in view of Applicant’s cancellation of this language.
Withdrawal Claim Rejections – Pre-AIA 35 USC § 102
Rejection of claim 27 under 35 U.S.C. 102(b) as being anticipated by H. Gilman et al., 68 Journal of the American Chemical Society, 522 (1946) (“Gilman”) is withdrawn in view of Applicant’s amendments.
Claim Objections
Claim 27 is objectionable because the chemical drawing for Formula II2 is pixilated and unclear. Applicant is required to provide a clear drawing of claim 27, compound IIe.
Rejections 35 U.S.C. 112 (pre-AIA ), second paragraph
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.
Pursuant to 35 U.S.C. 112 (pre-AIA ), second paragraph, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Undefined Claim Variable
Claim 27 is rejected under 35 U.S.C. 112 (pre-AIA ), second paragraph, because R9F is undefined within the claim. Preferable identities for R9F are given the specification at page 71. However, absent recitation of the meaning of R9F in the claims, one of skill cannot know which identity is intended within claim 27.
Claim Rejections – Pre-AIA 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(c) he has abandoned the invention.
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
35 U.S.C. § 102(b) over W. Doering et al., 72 Journal of the American Chemical Society, 143-147 (1950) (“Doering”)
Claims 27 and 59 are rejected under 35 U.S.C. 102(b) as being anticipated by W. Doering et al., 72 Journal of the American Chemical Society, 143-147 (1950) (“Doering”). Doering discloses methylethyl-pyridylacetic acid (I).
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Doering at page 146, col. 1. Methylethyl-pyridylacetic acid meets each and every limitation of claims 27 and 59 when A7 is N; A8, A9 and A10 are C; PR8, PR9 and PR10 are H; and R6 and R6’ are C1-8 alkyl. Claims 27 and 59 are therefore anticipated.
35 U.S.C. § 102(b) over Ting et al., US 5,182,289 (1993) (“Ting”)
Claims 27 and 60 are rejected under 35 U.S.C. 102(b) as being anticipated by P. Ting et al., US 5,182,289 (1993) (“Ting”). Ting discloses the following compound.
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Ting at col. 32, line 25. Compound RN 127555-87-7 meets each and every limitation of claims 27 and 60 when A8 is N; A7, A9 and A10 are C; PR7 and PR10 are halogen; PR9 is H; and R6 and R6’ are C1-8 alkyl. Claims 27 and 60 are therefore anticipated.
35 U.S.C. § 102(b) over J. Ashley et al., 115 Journal of the American Chemical Society, 2515-2516 (1993) (“Ashley”)
Claims 27 and 61 are rejected under 35 U.S.C. 102(b) as being anticipated by J. Ashley et al., 115 Journal of the American Chemical Society, 2515-2516 (1993) (“Ashley”). Ashley discloses the following compound 5.
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Ashley at page 2515, Table 1. Compound 5 meets each and every limitation of claims 27 and 61 when A9 is N; A7, A8 and A10 are C; PR7, PR9, and PR10 are H; and R6 and R6’ are C1-8 alkyl. Claims 27 and 61 are therefore anticipated.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692