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 .
Priority
2. The instant application claims is a national stage entry of PCT/CN2022/079388, filed March 4, 2022.
3. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) by application no. CN202110264844.7 filed in the Chinese Patent Office March 4, 2021, which papers have been placed of record in the file. The application names an inventor or inventors named in the prior application.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on September 1, 2023 is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS document was considered. A signed copy of form 1449 is enclosed herewith.
Election/Restrictions
5. Applicant’s election with traverse of Group I in the reply filed on March 23, 2026 is acknowledged. The traversal is on the ground(s) that all claims are so linked to form a single general inventive concept as they all depend on claim 1. This is not found persuasive because there is not a general inventive concept. For example, in Group I, claim 1 contains the compounds of formula I but claim 7 contains the compounds of formula II-a which are structurally divergent. Additionally, even if there was a general inventive concept across all groups, such as compounds of formula I, they do not make a contribution over the prior art as evidenced by the art rejections herein. Therefore, the claims lack unity of invention and the lack of unity requirement is maintained.
The requirement is still deemed proper and is therefore made FINAL.
6. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
7. As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species
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makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. If art is found on a non-elected species, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. Since art was found on a non-elected species, subject matter not embraced by the elected species is therefore withdrawn from further consideration. It has been determined that the entire scope claimed is not patentable.
Status of Claims
8. Claims 1-19 are pending in the instant application. The elected species
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reads on the present claims wherein X and Y are Cl, A is O, M is
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, R1 is
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. Applicant notes that claims 1, 3, 7-8, and 11 read on an elected species; however, claims 2, 4-5, 12, and 18-19 also read on the elected species and claim 7 does not read on the elected species. Therefore, claims 6-7, 9-10, and 13-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 1-5, 8, 11-12, and 18-19 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 2, 3, 5, 11, 12, and 19 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.
Claim 2 recites the following limitations:
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It is unclear how the ‘or’ portion of ‘and/or’ is functioning in the present claims. The ‘or’ renders the claim indefinite and Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 3 recites “when R1 is C2 to C6 alkenyl, the C2-C6 alkenyl is” but the ‘when’ renders the claim indefinite as claim 1, from which claim 3 depends, is limited to only C2-C6 alkenyl in the definition of R1. Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 5 recites the following limitations:
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It is unclear how the ‘or’ portion of ‘and/or’ is functioning in the present claims. The ‘or’ renders the claim indefinite and Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 11 recites “when R1 is C2 to C6 alkenyl, the C2-C6 alkenyl is” but the ‘when’ renders the claim indefinite as claim 1, from which claim 11 depends, is limited to only C2-C6 alkenyl in the definition of R1. Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 11 recites the following limitations:
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Variable R2 and all moieties containing R2 are cancelled from claim 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the following limitations:
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It is unclear how the ‘or’ portion of ‘and/or’ is functioning in the present claims. The ‘or’ renders the claim indefinite and Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 19 recites the following limitations:
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and another full page of ‘and/or’ limitations.
It is unclear how the ‘and’ portion of ‘and/or’ is functioning in the present claims. The ‘and’ renders the claims indefinite as each of these variables cannot have multiple definitions of the same variable. Examiner cannot ascertain the metes and bounds of the claimed scope.
Claim 19 recites variable definitions and permutations for variable R2; however, variable R2 does not appear in the formulae of claim 18. There is insufficient antecedent basis for this limitation in the claim.
11. 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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
12. Claims 2, 4, and 12 are 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 2 defines “
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.” Variables X and Y of claim 2 fail to include all limitations and fail to further limit the claim from which it depends.
Claim 4 is drawn to various Schemes 1-3, all of which are outside the scope of claim 1, from which claim 4 depends. All variables of Schemes 1-3, including but not limited to, A, X, Y, M, R1, and R2 are broader defined in claim 4 than they are in claim 1 and therefore fail to include all limitations and fail to further limit the claim from which it depends.
Claim 12 defines “
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.” Variable R1 of claim 12 is broaded than that of claim 1, fails to include all limitations and fail to further limit the claim from which it depends.
Claim 12 recites as follows:
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. The compounds fall outside the scope of claim 1, fails to include all limitations and fail to further limit the claim from which it depends.
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
13. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
14. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
15. Claims 4, 8, and 18-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2023/0242492.
US 2023/0242492 teaches anticipatory compounds, tautomers, and compositions, including for example:
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wherein X and Y are Cl, A is CH2, R1 is isopropyl.
Conclusion
16. Claim 1 is allowed.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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