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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Current Status of 18/034,793
This Office Action is in response to the amended claims of 05/01/2023.
Claims 1, 7, 9, and 16 are original; and claims 2-6, 8, 10-12, 17, and 22-23, are currently amended; claims 25-28 are new.
Claims 1-12, 16-17, 22-23 and 25-28 are examined in this office action.
Priority
The effective filing date is 11/05/2021 because claims find support in application PCT/CN2021/129079.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/04/2023, 05/09/2023, 08/06/2024 and 12/02/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-12, 16-17, 22-23 and 25-28 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.
Claims 1-4, 7 and 12 recites variable Rb without defining the variable. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention as written thus rendering metes and bound of claims 1-4, 7 and 12 indefinite.
Claims 5-11, 16-17, 22-23 and 25-28 also rejected because they refer back to claim but do not remedy the bases for the rejection of claims.
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.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dally et.al (WO-2019168744-A1).
Dally the synthesis of compound
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178
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( page 20) (examiner is interpreting this as a prodrug of compound of formula I) thus anticipating claims 1-12.
Applicant can overcome this rejections by deleting the “prodrug” from the claims 1-12).
Conclusion
No claims are allowable as written.
Please note the difference between compound
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and instant clam 1, is that instant claims do not support R1 to be CF2. Therefore, examiner interpreted compound
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as prodrug.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rehana Ismail whose telephone number is (703)756-4776. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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/R.I./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625