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
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election of group I, drawn to compounds of the formula 1 and method of making thereof along with the elected species:
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in the reply filed on 11/21/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1-8 is contained herein. Applicant’s elected species was found free of the art and the search extended to cover the full scope of formula 1.
Priority
This application is a CIP of international application PCT/CN2021/073782, filed 1/26/2021, which claims priority to CN202011527218.48, filed 12/22/2020.
However, a certified English version of the foreign priority document was not received. Failure to provide a certified translation may result in no benefit being accorded for the non-English application (i.e., the examiner respectfully requests submission of the appropriate English translated version of the foreign priority document if benefit is sought). See MPEP 213.04.
Specification
Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics." Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
It is recommended that the structure of Formula 1 be inserted into the abstract to accurately illustrate the claimed invention.
Claim Objections
Claim 2 is objected to because the word “and” should be inserted before the last recited 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 1-8 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 pre-AIA the applicant regards as the invention.
The preamble of claim 1 is drawn to “intermediate of biliverdin” represented by the formula 1. The chemical structure of biliverdin is represented by:
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. This species is encompassed by the formula 1 wherein the R = R1,2 = H and the dotted lines are double bonds. Thus it is unclear whether the biliverdin species itself is intended to fall within the scope of “intermediate of biliverdin” or not. Note the compound is also explicitly recited in claim 2 (compound 6). Thus the scope of the claim and claims dependent on it which do not rectify the issue are indefinite. The examiner will assume that the claims may encompass biliverdin itself until the issue is resolved.
Claim 1 recites variable “B” wherein said variable is not embraced by the structure of formula 1. Thus the scope of the claim and claims dependent on it which do not rectify the issue are indefinite. Additionally the chemical structures in this claim and claim 2 are not completely legible and should be replaced with more legible structures. Claim 6 recites “wherein the condensation reaction involves a solvent” where it is unclear what Applicant means by the term “involves” in reference to the reaction. Is Applicant suggesting that the reaction is “conducted in a solvent” or that these solvents are used in another manner such as a catalyst, reagent, or something else? See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.” The examiner will assume all possibilities until the issue is resolved in terms of prior art.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over US 20050209305 A1.
US 20050209305 A1 teaches the species biliverdin wherein the R = R1,2 = H (see abstract and disclosure therein) which anticipates the claims.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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