DETAILED ACTION
Claims 1-11 are currently pending in the instant application.
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 .
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Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Objections
Claims 1-11 are objected to because of the following informalities: the use of parenthesis when referring to compounds of Formula (IV) is inconsistent. For example, in claim 1, step c it states “carbonylation of compound of formula IV rather than compound of formula (IV). Similarly, this issue occurs throughout the claims - some of the compounds of formula do not have parenthesis surrounding the roman numerals in the text of the claim. In claim 4, in the scheme under step b, the scheme shows (XI-a) but then the text of the claim refers to the compound as a formula XI(a). Appropriate correction is required.
Claim 11 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 4. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 11 merely repeats that the compound of formula XIX is utilized in synthesis of a compound of formula I. However, this limitation is already found in claim 4 and thus claim 11 does not impart any additional limitations to claim 4, the claim upon which it depends.
Claim 1 is objected to because of the following informalities: after step b) in the second line, it states “to make a reaction mixture; to obtain a compound of formula (IV)”. The “;” appears unnecessary. Appropriate correction is required.
Claims 2-4 are objected to because of the following informalities: the period is not found at the end of the claim. The period is found following the end of the text of the claim rather than following the scheme below the text.
Claim 5 is not in proper Markush format. See MPEP 2173.05 (h) which states that Markush type claim recites alternatives in a format such as “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm' r Pat. 1925), MPEP 803.02. The claims do not contain the phrase “or” between the final two species, or recite “selected from the group” in the preamble. See for example claim 5, step b, under bromination with. Appropriate 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 1-11 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.
At the end of claim 1, it states three conditions:
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. However, there is no compound of Formula (XVI), (XVIII), (XV), (XI-1) recited elsewhere in the claim. Thus, it is unknown what the structures of the compounds of said formulas are which renders the claim 1 unclear. As claims 2-11 do not fix this issue, they have also been rejected.
Claim 4 states under step a) protection of compound of formula VIII with protecting agents. However, the scheme underneath shows a compound of formula VII rather than VIII. Thus it is unclear if it should be a compound of formula VII or formula VIII that is protected.
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. Similarly under step b of claim 4, it states “treatment of a compound of fomrua VIII(a)” but the scheme shows a compound of formula (VIIII-a). As such, the scope of claim 4 is unclear.
Claim 5 recites the limitation "in turn addition of N, N-dimethylformamide and tetrahydrofuran in the ratio of 1:1: to obtain compound of formula V" at the end of step c. However, it is unclear what the limitation “in turn addition” means. Further, it is unclear whether Claim 5 is referring to the compound of formula VIII(a) or VIIII(a) given inconsistency:
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Claim 8 states in the 4th line of the claim, “the condensation of compound of Formula XVIII in solvent toluene using base sodium methoxide is carried out”. However it is unclear what is being condensed with the compound of formula XVIII as claim 8 depends on claim 7 which depends on claim 2, which does not show a compound of formula XVIII.
Claim 10 states in the 5th line from the end of the claim “isolation is carried out in toluene under cooling”. However it is unclear what is being isolated.
Prior Art Not Otherwise Cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO2013/068552 teaches compound of formula I
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but does not teach a process of synthesizing said compound through a compound of formula XIII
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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