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 .
Specification
Applicant is reminded of the proper content of 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 not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it is missing the compound of formula (I). (A detailed description of the compound in the abstract is unnecessary.) A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 20-40 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 20 is unclear for a number of reasons. First, it is confusing when a single group is said to be “the same or different at each instance.” For example, the compound of formula (I) has only one ring Ara, but the claim states that “ring Ara is the same or different at each instance”, implying that the compound of formula (I) may have more than one instance of ring Ara, which is contrary to what is shown on the structure. Second, the claim is grammatically erroneous due to number disagreement. For example, it is correct to recite “W1 is…” but it is incorrect to say “Z1, Z2 is…”. Third, in the description of X1, X2 and X3, it is unclear as to what is meant by “in one cycle.” The other claims are indefinite for the same reasons and/or by dependency. Additional issues include the following. First, claims 21-24 recite X6 that can be CrffC, which is not described anywhere in the claims, and it is unclear what CrffC stands for. Second, “that” in claim 29 should be replaced by “wherein”. Third, claim 32 recites compounds (VI-1) to (VI-9) and states that “the compounds have at least one fused ring,” which appears redundant because the recited compounds all have more than one fused rings.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20-27, 32, 34, 36 and 39 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2023/0329109 A1 to Shin et al. (This document has a priority date earlier than the PCT filing date, i.e., the earliest effective U.S. filing date, of the instant application).
Regarding claim 20, Shin et al. discloses the following compound
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206
240
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,
which is exemplified by
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476
604
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(see compound 47). This compound is representative of the claimed compound wherein Z2 = B, Z1 = W1 = N, Y = C(CH3)2, X3 = CH, V1 and V2 are each a carbon atom and together form a benzene ring, the X1 beta to Y is CH, the other X1 is CRa where Ra is N(H)(Ph), X2 = C3 alkyl, and wherein the nitrogen of Ra is bonded with the benzene ring formed by V1 and V2, and the alkyl group of X2 is bonded with the Ph group of Ra. Claim 20 is therefore anticipated. So are claims 21-27 and 32. The features of claim 34 are disclosed at paragraph [0056] and the features of claims 36 and 39 are disclosed at paragraphs [0040+] and [0057].
Allowable Subject Matter
Claims 28-31, 33, 35, 37-38 and 40 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Shin et al., which represents the closest prior art of record, fails to suggest the compounds of claims 28-31 and 33. The synthesis method taught by Shin et al. is different from that of claim 38.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VU ANH NGUYEN whose telephone number is (571)270-5454. The examiner can normally be reached M-F 8:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT JONES can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VU A NGUYEN/Primary Examiner, Art Unit 1762