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
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election of group I, drawn to compounds of the formula I and simple compositions thereof and elected species:
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in the reply filed on 12/11/2025 is acknowledged. The elected species reads on claims 1-4 and 7-9. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 6, and 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1-4 and 7-9 is contained herein.
Priority
This application is a national phase entry under 35 U.S.C. 371 of international application PCT/CN2021/139112, filed 12/17/2021, which claims priority to Application CN202110067206.6, filed 1/19/2021.
However, a certified English version of the foreign priority document was not received.
Failure to provide a certified translation may result in no benefit being accorded for the non-English application (i.e., the examiner respectfully requests submission of the appropriate English translated version of the foreign priority document if benefit is sought). See MPEP 213.04.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record. The NPL document at line CD referencing a compound in REGISTRY is illegible and should be replaced for clarity. Correction is required.
Specification
Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics." Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
It is recommended that the structure of Formula I be inserted into the abstract to accurately illustrate the claimed invention.
Claim Objections
Claim 7 is objected to because of the following informality:
The preamble of this claim should be amended to incorporate appropriate alternative language such as “wherein the compound is selected from the group consisting of..” or other similar language. 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 1-4 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 pre-AIA the applicant regards as the invention.
In the instant claim 1 and other claims, the phrase "preferably" 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). Thus the claim and claims dependent on it which do not rectify the issue are considered indefinite.
Claim 1 states that variable Y may be selected from “O” which results in the oxygen atom possessing three bonds and being positively charged. However the formula I is intended to be neutral. Thus the scope is unclear.
Claim 3 recites the following language:
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. The embodiment 5-6 membered heterocyclyl-CH2n (see red arrow) was not recited previously as an embodiment for R5 as shown above. Thus the scope is unclear.
See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected 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. Claim 9 does not further limit claim 1 with respect to “stereoisomer” since this language was not recited previously in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-3 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over US Patent 5,258,510-mentioned in IDS.
US Patent 5,258,510 teaches the following compounds and compositions thereof (see col. 322, li. 20, col. 345, li. 20, and abstract for compositions):
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wherein Y = -CH, m = 0, R2,3,5 = H, R4 = heteroaryl or H, and R1 = methyl or chloro which anticipates the claims.
Conclusion
Claims 1-4 and 8-9 are rejected. Claim 7 is objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey 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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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624