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 .
DETAILED ACTION
This office action is in response to applicant’s filling dated October 27, 2023.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. EP20191343.1, filed on August 17, 2020.
Status of Claims
Claims 1-11 are pending and are being examined on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 10, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner, except where marked with a strikethrough.
Claim Objections
Claims 1-4 objected to because of the following informalities:
Claims 1-4 are written in an improper claim format lacking a preamble and transitional phrase.
Claims 1 and 3 are objected for the refenced figure not being placed in parentheses.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 is directed to a polymorph of 5-bromo-6-chloro-3-indoxyl caprylate characterized by a powder diffraction pattern as defined in Fig. 1. Claim 2 is directed to a compound containing the same chemical structure and powder diffraction pattern with a melting point of 63° ± 1° C. Claim 2 is directed toward the inherent properties of the identical compound cited in Claim 1. Thus, Claim 2 does not further limit Claim 1.
Claim 3 is directed to a polymorph of 5-bromo-6-chloro-3-indoxyl caprylate characterized by a powder diffraction pattern as defined in Fig. 2. Claim 4 is directed to a compound containing the same chemical structure and powder diffraction pattern with a melting point of 60° ± 1° C. Claim 4 is directed toward the inherent properties of the identical compound cited in Claim 3. Thus, Claim 4 does not further limit Claim 3.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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 6, 9, and 11 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.
Claims 6 and 9 recite the phrase “a system for detecting an esterase.” It is unclear what is encompassed by the claim, whether “a system” is a composition, an assay, or a method. In the interest of compact prosecution and for purposes of applying art, the phrase "a system for detecting an esterase" is construed as “a composition for detecting an esterase.”
Claim 11 recites the limitation "with a system as defined in claim 5.” There is insufficient antecedent basis for this limitation in the claim. Claim 5 does not recite a system, therefore it is unclear which “system” the applicant is referring to.
Conclusion
Claims 6, 9, and 10 are rejected, 1-4 are objected to, 5, 7, 8, and 10 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON RAFANAN ULLMAN whose telephone number is (571)272-6623. The examiner can normally be reached 7:30 am to 5:00 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON RAFANAN ULLMAN/Examiner, Art Unit 1628
/AMY L CLARK/Supervisory Patent Examiner, Art Unit 1628