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 -----1/22/2024, which is a national stage application of PCT/DE2022/200128 filed 6/14/2022, which claims foreign priority to DE10 2021 207 929.6 filed 7/23/2021.
As filed, claims 16-34, 36, and 37 are pending; and claims 1-15 and 35 are cancelled.
Election/Restrictions
Applicant's election with traverse of Group IV – Claims 33-35 in the reply filed on 7/31/2026 is acknowledged.
Regarding the lack of unity requirement, the traversal, in summary, is on the ground(s) that the cited compound of 5,6,7,8-tetrahydro-2-anilinoacridone in Taggi does not have the benzyl group or the 1-phenylalkyl radicals for instant variable R1.
This is found persuasive because the cited compound of 5,6,7,8-tetrahydro-2-anilinoacridone in Taggi does not have the benzyl group or the 1-phenylalkyl radicals required for instant variable R1. In addition, the compound of instant formula (I) is not anticipated or rendered prima facie obvious by any prior art compound. Accordingly, the compound of instant formula (I) is a special technical feature that makes a contribution over the prior art.
The lack of unity and election of species requirement are hereby withdrawn, and claims 16-34, 36, and 37 will be examined herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/15/2024; 12/9/2024; 2/13/2025; 7/15/2025; 12/8/2025; 1/21/2026; 4/28/2026; 5/27/2026; and 9/3/2026 has been considered by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejection - 35 USC §§ 101 & 112
The following is a quotation of 35 U.S.C. § 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following is a quotation of the second paragraph of 35 U.S.C. § 112:
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.
Although a claim should be interpreted in light of the specification disclosure, it is improper to read limitations contained in the specifi-cation into the claims. In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969); In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975).
A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See, e.g., Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966) (holding that the following claim was definite, but that it was not a proper process claim under 35 U.S.C. § 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sul-fonic acid.”); Ex parte Dunki, 153 USPQ 678 (B.P.A.I. 1967) (finding the following claim to be an improper definition of a process claim: “The use of a high carbon austen-itic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding fric-tion.”).
Claims 26-28 provide for the use of a compound of instant formula (I), but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Accordingly, claims 26 and 28 are rendered indefinite and rejected under 35 U.S.C. 112.
Claims 26-28 are also rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 24, 26, 28-32, and 37 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 24, the claim recites the following phrase, “wherein the halogen radicals include fluorine, bromine or chlorine radicals”.
Firstly, the limitation, “halogen”, in the abovementioned phrase, recite the term "include", which is synonymous with "comprising", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
The term “compound” contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148. By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
Thus, a contradiction arises within the definition of “halogen” because a "compound" requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claims 24 indefinite.
Regarding claims 26 and 28, the claims recite the phrase, “providing the compound”, and it is unclear to the Examiner what active step applicant is intending to encompass the word, “providing”. Accordingly, the metes and bounds of this claim are unclear, which rendered this claim indefinite.
Regarding claims 29 and 31, the phrase, "in particular", is synonymous as “preferably”, which renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 31, 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).
Regarding claim 37, the term, "including", in this instance, is synonymous as “preferably”, which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 30, the claim is dependent of claim 29, and the claim failed to correct the indefiniteness issue of claim 29, which rendered the claim indefinite.
Regarding claim 32, the claim is dependent of claim 31, and the claim failed to correct the indefiniteness issue of claim 31, which rendered the claim indefinite.
Claim Objections
Claims 16, 29, and 31 are objected to because of the following informalities:
Regarding claim 16, 29, and 31, the claims recite the phrase, “C1- and C12-radicals, and aryl radicals”.
Such expression can be clarified by reciting -- C1- and C12-radicals,
Regarding claim 16, 29, and 31, the claims recite the phrases, “wherein n assumes the value 0 or 1” and “wherein m assumes the value 0 or 1”.
Such expression can be clarified by reciting -- “wherein n is 0 or 1 -- and -- wherein m is 0 or 1 --.
Regarding claims 29, the claim recites the phrase, “comprises the following process steps”.
Such expression can be clarified by reciting -- comprises
Regarding claims 31, the claim recites the phrase, “comprises at least the following process steps”.
Such expression can be clarified by reciting -- comprises at least --.
Appropriate correction is required.
Claims 17-23, 25, 30, 33, 34, and 36 are objected to as being dependent upon an objected base claim, but would be allowable if the objection of the base claim is corrected.
Conclusion
Claims 24, 26-32, and 37 are rejected.
Claims 16-23, 25, 29, 30, 31, 33, 34, and 36 are objected.
Claims 1-15 and 35 are cancelled.
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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