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 preliminary amendment filed on 1/09/2024 is acknowledged. Claims 1-25 are currently pending and under consideration.
Information Disclosure Statement
The information disclosure statements filed on 7/12/2023 and 8/25/2023 have been considered except where lined through.
Specification
There are numerous references to trade names or marks with in the specification. For example, the use of the term Oral Balance ®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 19 and 23 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 claim 19, claim 19 recites wherein the compound is selected from the group consisting of the compounds delineated in Table C1. 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)
Regarding claim 23, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Claims 1-25 appear to be free of the prior art. Claims 1-18, 20-22 and 24-25 are allowable. The closes prior art appears to be WO2021067791A1 to Novartis (2021/04/08, IDS) whom teaches oxalamide compounds and compositions for treating conditions associated with sting activity (title). Specifically, the WO document teaches compounds including, but not limited to,
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(page 84, cmpd 206). The instantly claimed compounds of the instant invention differ from those disclosed in the WO document in that the instantly claimed compound of formula I
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requires Q2 wherein Q2 is a cycloalkyl, cycloalkenyl, heterocyclyl, heterocycloalkyl, heteroaryl or an aryl. The prior art does not teach or suggest addition of Q2 as instantly 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
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