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
Claims 1-17 and 22-24 are pending in the application. Claims 14, 16, 17 and 22-24 are rejected. Claims 1-13 and 15 are allowable.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/IB2021/061645, filed on December 13, 2021, which claims benefit of Provisional Application No. 63/125,671, filed on December 15, 2020.
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, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No., fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Instant claims 16, 17 and 22-24 are rejected for containing new matter relative to the originally filed disclosure. The discussion below under 35 U.S.C. 112(a) is incorporated here by reference. For the same reasons, instant claims 16, 17 and 22-24 are not supported by the parent application, i.e., PCT/IB2021/061645, since the parent application contains an analogous disclosure to the instant specification. The main difference is that claims 16, 17 and 22-24 of the instant application were not found or supported in the parent application.
For these reasons, the earliest effective filing date of instant claims 16, 17 and 22-24 is considered to be the original filing date of PCT/IB2021/061645, i.e., December 23, 2021. The earliest effective filing date of instant claims 1-15 is December 15, 2020.
Information Disclosure Statement
The Information Disclosure Statements filed on June 13, 2023 are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16, 17 and 22-24 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claims 16 and 22 are drawn towards a compound of formula (I) having the following generic chemical structure:
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The instant disclosure as originally filed, however, does not provide any generic or specific support for the above genus as recited in claims 16 and 22. For instance, the broadest disclosure of the instantly claimed invention is represented by the generic compound of Formula (I) shown below (see e.g., page 3 of instant specification):
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In addition, instant claims 16 and 22 recite “the proviso that R4 is not morpholinyl” which is also not generally supported by the instant disclosure. For example, the instant specification provides embodiments of the instant invention wherein “R4 is N-linked morpholinyl” (see e.g., page 9) but does not otherwise provide support for the claimed proviso. Therefore, instant claims 16 and 22 are deemed to introduce new matter since the claims present a scope that is not fully supported by the original disclosure. Dependent claims 17, 23 and 24 do not correct these issues of new matter and are hence rejected. It is suggested Applicant i) substitute a “=N-” for the “=C-” (i.e., in the position being substituted by “R6”) in the recited formulas and ii) cancel the aforementioned proviso in each claim to overcome these issues of new matter.
Claim Rejections - 35 USC § 112(b)
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.
Claim 14 is 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.
Claim 14 recites “-OC2H5OCH3” as an alternative for variable R5 and is rejected as indefinite. It appears Applicant intended to recite “-OC2H4OCH3” instead of “-OC2H5OCH3”; therefore, Applicant should amend the claim accordingly.
Allowable Subject Matter
Claim 1-15 are free of the prior art. However, while claims 1-13 and 15 are allowable, claim 14 is rejected.
Conclusion
Claims 14, 16, 17 and 22-24 are rejected. Claims 1-13 and 15 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M SHIM whose telephone number is 571-270-1205. The examiner can normally be reached Monday - Friday, 8 am - 4 pm EST. The examiner can also be reached via email (david.shim@uspto.gov) once an Authorization for Internet Communications form PTO/SB/439 has been filed by Applicant. See MPEP § 502.03 for details.
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/D.M.S./Examiner, Art Unit 1626
/JOSEPH K MCKANE/Supervisory Patent Examiner, Art Unit 1626