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 .
Application Status
The preliminary amendment filed on 11/26/2023 is acknowledged. Claims 1-10 are currently pending and under consideration
Information Disclosure Statement
The information disclosure statement filed on 6/08/2023 is acknowledged and has been considered except where lined through.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 8 recites “An application an amine compound and a silicon amino rare earth compound in the reaction of an isatin and a cyclopropenone compound”. In the instant case, it would appear that Applicants are attempting to potentially claim a method of use of an amine compound and silicon rare earth compound in a reaction of an isatin and a cyclopropenone compound
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 8-10 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.
As noted above, it appears that Applicants are attempting to claim a method or process. However, the claims fail to recite any method steps for this method or process.
Claim 8 recites the limitation "the reaction". There is insufficient antecedent basis for this limitation in the claim. The examiner suggests amended to be “a reaction”
Allowable Subject Matter
Claims 1-7 appear to be free of the prior art and in condition for allowance. The closest prior art to the instant invention is considered to be CN106432052A1 to Soochow University (2017-02-22, IDS) whom teaches a method of preparing spiro[cyclopropane-1,3’-indole] compounds by, under anhydrous and oxygen-free conditions, reacting a substituted isatin, phosphite and olefin under a silicon amino rare earth metal as catalyst in an organic solvent. The prior art does not specifically teach or suggest using a cyclopropenone as the olefin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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BRANDON J. FETTEROLF, PHD
Primary Patent Examiner
Art Unit 1626
/BRANDON J FETTEROLF/ Primary Examiner, Art Unit 1626