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 .
Claims 1-3 and 13-22 are pending in this application.
Note that compounds, corresponding compositions, a method of use and a process of making that are of the same scope are considered to form a single inventive concept under PCT Rule 13.1, 37 CFR 1.475(d). Applicants need to maintain the same scope to form a single inventive concept.
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 1-3 and 13-22 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.
i) The intended use of the compound Of formula (I) is as a pharmaceutical. Therefore, the “salt” should be limited to a “pharmaceutically acceptable salt” to exclude salts that would not work for the intended utility (such as, toxic salts).
ii) Regarding claim 2, the phrase "(e.g. oils)" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
iii) Also in claim 2, the carrier etc., should be limited to “a pharmaceutically acceptable” carrier, diluent etc. In addition, proper Markush language should be used in listing these alternatives in singular form.
iv) Claim 13 is an independent claim. An independent claim should be complete and cannot rely on another claim for definitions. Applicants should either make the claim dependent or include all of the limitations into the claims (see “a compound of formula (I)”). See also claim 15, 19, 20, 21 and 22.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 18 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Li et al. (CN-112592260-A). The claim reads on the compound in page 5 (top) of the reference.
Claim Rejections - 35 USC § 103
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Gulco et al. (US 2020/0277246). The reference teaches compounds with instant X as chloro and fluoro. The claim differs by requiring a bromo at the same location. One skilled in thew art knows that one halogen renders another obvious because of their similar properties. Thus, the skilled artisan would be motivated to replace the halogen instantly claimed with another halogen, including bromo and arrive at the instant claim.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Makriyannis et al. (WO 2011/006099). The reference teaches compounds with instant X as fluoro and iodo. The claim differs by requiring a bromo at the same location. One skilled in thew art knows that one halogen renders another obvious because of their similar properties. Thus, the skilled artisan would be motivated to replace the halogen instantly claimed with another halogen, including bromo and arrive at the instant claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. 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.
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December 9, 2025
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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