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 claim set filed on 6/26/2023 is acknowledged. Claims 1-13 are currently pending and under consideration.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 2-5, 7, 8-9 and 13 are objected to because of the following informalities:
Regarding claims 2-3 and 8-9, each of the claims defining a compound, specifically R1 or R2 by name, as well as, by structure. This appears to be redundant and may be better as just the name. For example, Claim 2 could recite wherein R1 is a methyl group or R1 = CH3.
Regarding claims 7, the claim recites “a therapeutically effective amount of the compound, a pharmaceutically acceptable salt thereof, of claim 1”. It seems that there should be “or” inserted after the “comma” and “pharmaceutically” similar to claim 6.
Regarding claim 13, the claim recites a kit comprising the compound of claim 1, or a pharmaceutically acceptable salt thereof; one or more pharmaceutical excipients. It is suggested to remove the semicolon and replace it with “and”.
Regarding claims 4-5, claims 4-5 contain a reaction scheme which is similar to a flow diagram. The specification, including the claims, may contain chemical and mathematical formulae, but shall not contain drawings or flow diagrams. The description portion of the specification may contain tables, but the same tables should not be included in both the drawings and description portion of the specification. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable. See MPEP 37 C.F.R 1.58.
Lastly, claims 4-5 make reference to compounds, but do not set forth what the compound is. Where possible, claims are to be complete in themselves. 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) (citations omitted). See MPEP 2173.05(s).
Appropriate correction is required.
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 4-5 and 8-9 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.
Regarding claims 4 and 5, each of the claims are drawn to a method of synthesizing a compound comprising 3 steps relatively generically, as well as, a specific reaction scheme. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 8 and 9, the claims make reference to “formula II”. However, there is no formula II within the claims. Accordingly, the claims are indefinite.
Conclusion
Claims 1, 6 and 10-12 are in condition for allowance.
The compounds appear to be free of the prior art. The closest prior art could be considered to be Abdu-Allah et al. (Bioorganic Chemistry (2020); 94: 103378) whom teaches compounds having the following structure:
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, wherein R is 4-NMe2 which differs from the instant compound by the hydroxyl vs. the carboxylate as claimed.
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/Primary Examiner, Art Unit 1626