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 .
Drawings
The drawings are objected to under 37 C.F.R. 1.84(u)(1) because “[were only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.” Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 3 is objected to because of the following informalities: a comma is missing before “R1”. 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.
Claim 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 8 recites the limitation "Rb" in claim 1. There is insufficient antecedent basis for this limitation in the claim. Perhaps claim 8 should be amended to depend on claim 6 or 7.
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 1-2 and 4-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0235308 A1 to Daniel Zink.
Regarding claim 1, Zink discloses a similar compound, differing only in the positions of -CN and the group of formula II on the lower ring of formula I:
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Claim 1 Zink
One of RT and RV is CN and the other is One of RT and RV is CN and the other is
the group of formula II. RI; one of RY and RX is the group of
formula II, wherein RI can be an aryl.
In other words, in the claimed compound, CN (or CF3) and the group of formula II are adjacent to each other at the ortho and meta positions whereas, in the prior art compound, they are not. However, Zink does not teach away from having CN and the group of formula II adjacent to each other at RT and RV. In fact, as one of RT and RV is CN and the other is RI which can be a C6 aryl wherein the term aryl “may be understood in the broadest sense as any mono-, bi- or polycyclic aromatic moieties” (see [0325]), the scope of RI apparently includes the group of formula II, which is itself a polycyclic aromatic moiety, and the scope of the prior art compound encompasses the claimed compound. Thus, while a compound in which one of RT and RV is CN and the other is RI = formula II is not provided as an example, it would have been obvious to a person of ordinary skill in the art at the time the instant invention was filed to make and use such a compound without expecting any difficulty or negative consequences. Claim 1 is therefore unpatentable for being obvious. See MPEP § 2143 (I)(A) & (B).
The features of claim 2 are disclosed at [0010], those of claim 4 at [0054]+, and those of claims 5-8 on pages 4-6. Claim 9 is obvious in view of the rejection of claim 1 and the synthesis method of, e.g., paragraph [0451]. The features of claims 10-17 are disclosed on pages 22-26.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: In the compound disclosed by Zink, one of RX, RY and RZ must be the group of formula II whereas, in the claimed compound, each of RX, RY and RZ is RI as defined in claim 3.
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.
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, ROBERT JONES can be reached at (571) 270-7733.
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/VU A NGUYEN/
Primary Examiner, Art Unit 1762
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