NON-FINAL REJECTION
This application, filed Mar. 7, 2023, claims benefit of priority to provisional application 63/317,308, filed Mar. 7, 2022.
Claims 1-69 are pending.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to solid forms and salts of compounds of formula (I), intermediates, and compositions; and the freebase species of the compound of formula (I),
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in the reply filed on Nov. 10, 2025 is acknowledged.
Claims 18-42 and 44-67 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Nov. 10, 2025.
Because the elected compound is free of the prior art, search and examination has been extended to the next species. See MPEP § 803.02.
Claims 1-17, 43, 68, and 69 are currently pending and under consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on Jul. 5, 2024, Nov. 10, 2025, and Jan. 13, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Rejections - 35 USC § 112
Claims 6, 8, 9, 12, and 16 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.
Specifically, claims 6, 8, and 9 recite the solid form of claim 1, having an XRPD pattern "as substantially shown in FIG. 1"; "as substantially shown in FIG. 2"; and "as substantially shown in FIG. 3," respectively. Claim 12 recites the solid form of claim 10, having an XRPD pattern "as substantially shown in FIG. 22;" and claim 16 recites the solid form of claim 14, having an XRPD pattern "as substantially shown in FIG. 25."
However, the claims are to be complete in themselves. As recognized by MPEP § 2173.05(s), incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993). Therefore, a claim which refers to an external figure or table renders the metes and bounds of the claim indefinite.
Claim Rejections - 35 USC § 103
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.
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.
Claim 68 is rejected under 35 U.S.C. 103 as being unpatentable over Van Baak et al. (WO 2006011797, cited on PTO-892).
Van Baak et al. claim a recording medium comprising a support and an ink receiving layer adhered to said support, having at least one layer comprising a water soluble polymer and at least one compound according to general formula (II),
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(claims 1 and 7).
Van Baak et al. differs from claim 68 in that the reference does not exemplify the first compound recited by claim 68 (2,7-dibromo-8-ethoxy-[1,2,4]triazolo[1,5-a]pyridine), having the structural formula,
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.
However, Van Baak et al. claim the preferred genus of formula (II) (shown above), which encompasses the claimed compound, wherein X1 and X4 are each C; X2 is N; R3 and R6 are halogen, e.g., bromine (see p. 3, line 1); R7 is ethoxy (see p. 2, lines 19-20); and R4 and R5 are each hydrogen.
As recognized by MPEP §2144.08, several factors are considered in determining whether a claimed species would have been obvious to one of ordinary skill in the art at the time the invention was made, where the prior art teaches a genus that encompasses the species.
In particular, Van Baak et al. define Formula (II) to encompass six possible bicyclic cores, wherein X1, X2, and X4 are each selected from C or N. This core can be optionally substituted up to five times, with R3, R4, R5, R6, or R7, which are selected from eleven small monovalent substituents that include no rings or other moieties that would substantially alter the compound's properties.
Notably, the R3-R7 substituents specify C1-C2 alkoxy (methoxy or ethoxy); and examples of halogen are limited to chloro, bromo, and iodo (p. 3, line 1). Thus, Van Baak et al. explicitly point out ethoxy and bromine as suitable substituents.
While Formula (II) encompasses more than 20 compounds, one of ordinary skill in the art can readily envisage each member of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
Further, the compounds of Van Baak et al. are all disclosed as additives for use in inkjet recording media to improve beading behavior, cracking, and curling as a result of low humidity (p. 1, lines 22-28; p. 5, lines 9-15); and Formula (II) is disclosed as a preferred genus of compounds possessing these properties (p. 2, line 14 to p. 3, line 2).
Against these teachings of the prior art, the instant specification discloses the claimed compound only as an intermediate (specification p. 126, Intermediate 7, Example 4); and presents no evidence of secondary consider-ations.
Therefore, it would have been prima facie obvious to one of ordinary skill in the chemical arts as of the filing date to select and prepare the first compound recited by claim 68 (2,7-dibromo-8-ethoxy-[1,2,4]triazolo[1,5-a]pyridine) with a reasonable expectation of success, because the claimed compound, falling squarely within the scope of Formula (II), would be expected to function to improve inkjet recording media, as taught by Van Baak et al.
Obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See, e.g., In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Allowable Subject Matter
Claims 1-5, 7, 10, 11, 13-15, 17, 43, and 69 are allowed.
Conclusion
Claims 6, 8, 9, 12, 16, and 68 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA E. TOWNSLEY whose telephone number is 571-270-7672. The examiner can normally be reached on Mon-Fri from 9:00 am to 6:00 pm (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff S. Lundgren, can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA ELIZABETH TOWNSLEY/Examiner, Art Unit 1629
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