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 .
Status of the Claims
Claims 1-21 are pending.
Status of Priority
The present application is a 35 U.S.C. § 371 national stage patent application of International patent application PCT/EP2021/073993, filed on August 31, 2021. This application also claims the benefits of foreign priority to IN202011037485, filed on August 31, 2020.
Withdrawn Rejections
Applicant is notified that any outstanding rejection or objection that is not expressly maintained in this office action has been withdrawn or rendered moot in view of applicant’s amendments and/or remarks.
Claim Objections
Claim 6 is objected to because of the following informalities:
Claim 6 discloses the structure of general formula (I-E) and on the last line of claim 6 it states: “…a compound of formula I-E.” Thus, in claim 6:
“A compound of formula I according to claim 1, represented by a compound of formula I-E1” should read“A compound of formula I according to claim 1, represented by a compound of formula I-E”
Appropriate correction is required.
Rejections necessitated by the amended claims
Claim Rejections - 35 USC § 112(d)
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.
Claim 21 is 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 21 recites:
“A compound of formula XIX according to claim 18, selected from the group consisting of…(compound I-10)… (compound I-15)… (compound I-17)… (compound I-19)… (compound I-23)… (compound I-25)… (compound I-27)… (compound I-30)… (compound I-32)… (compound I-33)… (compound I-35)… (compound I-37)…(compound I-39).”
A compound of formula XIX according to claim 18 has the following general structure:
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, however, compounds I-10, I-15, I-17, I-19, I-23, I-25, I-27, I-30, I-32, I-33, I-37, and I-39 have the following general structure:
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and compound I-35 has the following general structure:
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. In other words, not all compounds listed in claim 21 are compounds of formula XIX and, therefore, claim 21 fails to further limit the subject matter of the claim upon which it depends (i.e., claim 21 broadens the scope of claim 18).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements
Allowable Subject Matter
Claim 6 is currently objected to but would be allowable once appropriate corrections are made.
Claims 1-5 and 7-20 are allowed.
Conclusion
Claims 1-5 and 7-20 are allowed. Claim 6 is objected to. Claim 21 is rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KRISTEN W ROMERO/Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624