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 .
DETAIL ACTION
This office action is a response to a 371 application filed 7/27/2023, which is a national stage application of PCT/JP2022/003130 filed 1/27/2022, which claims foreign priority to JP2021-013677 filed 1/29/2021.
As filed, claims 1-3 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/27/2023 and 4/10/2025 has been considered by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-3 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 1, the claim recites the phrase, “a compound having a 5-X-2-thienyl group”. Suzuki-Miyaura coupling reaction conditions require the abovementioned compound to have an organoboron group, and the transitional phrase, “having”, could be interpreted as either open- or close-ended, according to the guidance in MPEP 2111.03(IV). However, the word, “compound”, is singular and requires a definite chemical formula, and therefore, “having”, cannot be interpreted as open-ended. Therefore, it is unclear to the Examiner how the abovementioned compound can undergo Suzuki-Miyaura coupling reaction without having an organoboron group. The metes and bounds of this claim is unclear, which rendered the claim indefinite.
Regarding claim 1, the claim is drawn to a method of making a compound of instant formula (I). However, the claim only recites the reaction step for making 2-amino-3-nitro-4-(5-X-2-thienyl)pyridine. Therefore, it is unclear to the Examiner how the compound of instant formula (I) can be made from 2-amino-3-nitro-4-(5-X-2-thienyl)pyridine. The metes and bounds of this claim is unclear, which rendered the claim indefinite.
Regarding claims 2 and 3, the claims are dependent of claim 1, and they failed to correct the indefiniteness issue of claim 1, which rendered these claims indefinite.
Conclusion
Claims 1-3 are rejected.
The instant claims are drawn to a method of making a compound of instant formula (I); and the use of Suzuki-Miyaura coupling reaction does not appear to have been disclosed previously in the prior arts. For at least this reason, the instant claims are substantially differentiated from any prior art reference, such as U.S. Patent Application Publication No. 2008/0125381, hereinafter Hirao (see IDS filed 7/27/2023). Furthermore, the prior art provide insufficient guidance or motivation that would have led a person having ordinary skill in the art to arrive at the instantly claimed process.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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