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 .
Status of the Claims
Claims 3, 5-7, 9, 22 and 25-29 are pending in the instant application and subject to examination herein.
Specification
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
The Specification is objected to for inclusion of ambiguous structural drawings that do not correspond to the commonly understood valence/hybridization of carbon and/or nitrogen atoms, as follows:
The structural representation of “Formula I” is provided four times, on pages 2, 3 and 15, each time with the structural moiety “a”, shown below:
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The structure of moiety “a” shows a cyclohexatriene ring wherein two of the pi bonds form an allene with an sp-hybridized carbon that somehow maintains the hexagonal angularity of the cyclohexyl ring, a third pi bond in conjugation to the allene, and a single sp3 carbon. This structure is inoperable, because it is known in the art that sp-hybridized carbons adopt a linear geometry: see, for example, Carey_1977 (Carey, F.A., and Sundberg, R.J.; Advanced Organic Chemistry, Part A: Structure and Mechanisms, page 5; Plenum Press, New York; 1977).
On page 16, the structural moiety shown below is presented, which includes a cyclohexatetraene (at right):
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The ring on the right hand side of the structure shown above from claim 10 includes a double-allene with at least one sp-hybridized carbon (located ortho to the R5 position and meta to the R6 position) that somehow maintains the hexagonal angularity of the cyclohexyl ring contrary to known carbon bonding geometry, as discussed above. Additionally, the carbon at the R5-position displays 5 bonds, whereas the known valency of carbon is a maximum of 4 bonds. Additionally, the instant Specification indicates on page 15, regarding the moiety shown above, that R5 and R6 are each independently -CH2-, -O- or N; however, nitrogen is not strictly a bivalent atom and the instant disclosure does not specify on page 15 whether the nitrogen atom is anionic (no charge symbol shown) or includes any hydrogen, alkyl, or other substituent(s).
Applicant must supply clean and marked-up copies of the Specification with the structural representation errors corrected.
Claim Objections
Claims 3, 5-7, 9 and 25-26 are objected to because of the following informalities: Claim 3 represents the chemical structure of a compound of “Formula I” with a structural drawing that is not supported by the instant Specification, shown below:
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The structural representation shown above, upon which claim 3 relies, is not found anywhere in the instant Specification.
Claims 5-7, 9 and 25-26 depend from claim 3 and therefore rely upon the same structural representation of Formula I that is not supported by the instant Specification.
Appropriate correction is required.
Claim Rejections – Withdrawn
The prior rejection of claims 1-2 and 10 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, is withdrawn in response to Applicant’s cancellation of the claims.
The prior rejection of claims 1-21 and 23-24 under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility, has been overcome by Applicant’s amendment of claim 3 and cancellation of claims 1-2, 4, 8, 10-21 and 23-24, and is accordingly withdrawn. The cancellation of claims 1 and 10 has rendered the rejection moot. The amendment of claim 3 to remove the uninterpretable structural drawing of instant Formula I and replace said drawing with a properly interpretable structural drawing of said Formula has overcome the rejection with regard to the remaining (pending) claims 3, 6-7 and 9.
The prior rejection of claims 1-21 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, has been overcome by Applicant’s cancellation of claims 1-2, 4, 8 and 10-21 and amendment of claim 3, and is accordingly withdrawn. The amendment of claim 3 to limit the breadth of the genus of compounds of instant Formula I has overcome the rejection with regard to the remaining (pending) claims 3, 6-7 and 9.
The prior rejection of claim 10 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends, is rendered moot by Applicant’s cancellation of claim 10, and is accordingly withdrawn.
The prior rejection of claim 23 under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (PubChem CID 7111, “Benzidine”, Creation date: 03/26/2005)1 is rendered moot by Applicant’s cancellation of claim 23, and is accordingly withdrawn.
The prior rejection of claim 23 under 35 U.S.C. 102(a)(1) as being anticipated by Ito (Ito, et al.; Chemistry Letters, v45, pp1379-1381; 2016) is rendered moot by Applicant’s cancellation of claim 23, and is accordingly withdrawn.
The prior rejection of claim 23 under 35 U.S.C. 102(a)(1) as being anticipated by Schuster (Schuster, et al.; Journal of Medicinal Chemistry, v51, pp4188-4199; 2008) is rendered moot by Applicant’s cancellation of claim 23, and is accordingly withdrawn.
The prior rejection of claim 23 under 35 U.S.C. 102(a)(1) as being anticipated by Kielbasinski (Kielbasinski, et al.; Tetrahedron: Asymmetry, v24, pp.1417-1420; 2013) is rendered moot by Applicant’s cancellation of claim 23, and is accordingly withdrawn.
The prior rejection of claim 24 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Miyatake (WO 2022/065424 A1) is rendered moot by Applicant’s cancellation of claim 24, and is accordingly withdrawn.
Claim Rejections - 35 USC § 101 – Maintained and Necessitated by New Claims
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The prior rejection of claim 22 under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility, is maintained. Claims 22 includes an uninterpretable structural drawing that renders the claims ambiguous as to the scope of the genera of compounds being claimed:
Claim 22 includes the structural moiety “a”, shown below:
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The structure of moiety “a” shows a cyclohexatriene ring wherein two of the pi bonds form an allene with an sp-hybridized carbon that somehow maintains the hexagonal angularity of the cyclohexyl ring, a third pi bond in conjugation to the allene, and a single sp3 carbon. This structure is inoperable, because it is known in the art that sp-hybridized carbons adopt a linear geometry: see, for example, Carey_1977 (Carey, F.A., and Sundberg, R.J.; Advanced Organic Chemistry, Part A: Structure and Mechanisms, page 5; Plenum Press, New York; 1977).
Applicant has asserted that the rejection is now moot; however, claim 22 has not been amended to remove or amend the
For purpose of examination, the claim is interpreted in this action as claiming structure(s) wherein the aberrant ring shown above is treated as a benzene ring.
Claims 27-29 are rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility. Claims 28-29 depend from claim 22, discussed above, and do not resolve the inoperability of claim 22.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to W. JUSTIN YOUNGBLOOD whose telephone number is (703)756-5979. The examiner can normally be reached on Monday-Thursday from 8am to 5pm. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S. Lundgren, can be reached at telephone number (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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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/W.J.Y./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
1 Accessed on 11/05/2025 via https://pubchem.ncbi.nlm.nih.gov/compound/7111.
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