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 .
Claims 1-23 are pending in this application.
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 1-7, 11 and 13-23 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. The following reasons apply:
Claims 1, 2 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the second occurrence of “3-methyloxetan-3-yl” which appears in line 2 and again in lines 9-10 in the definition of R1.
Claim 11 recites the limitation "2-methyl-oxazole" with respect to the species 45 (4th species on page 67) and species 81 (5th species on page 68) variable R1. There is insufficient antecedent basis for this limitation in the claim.
Claims 14 and 21 are substantial duplicates of claim 1, as the only difference is a statement of intended use, which does not limit the scope of the claim under the broadest reasonable interpretation and therefore is not given material weight. Note In re Tuominen 671 F.2d 1359, 1360, 213 USPQ 89, 90 (C.C.P.A. 1982).
Claims 15-20 provide for the use of the compound of claim 1, 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.
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.
(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.
Claim(s) 1-10 and 13-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cuervo et al., WO 2020/077024. Cuervo teaches the compounds, compositions, process of preparing and method of use of the compounds of formula (I) where A1 is CH, A2 is CH, A3 is CCl, A4 is CH, R1 is cyclopropyl as set forth in example 25.
Claim(s) 1-7, 13-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakaitani et al., JP 2018087173. Sakaitani teaches the compounds, compositions, process of preparing and method of use of the compounds of formula (I) where A1 is CH or N, A2 is CH or CF, A3 is CH or CF, A4 is CH, R1 is 3-pyridyl as set forth in example 4-7, 4-26 and 4-27.
Claim(s) 1-10 and 14-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 354157-03-2, 842116-39-6, 1016843-58-5, 1144472-04-7, 1193002-3-3 and 1193002-21-9 as follows:
354157-03-2
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31 Aug 2001;
842116-39-6
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04 Mar 2005;
1016843-58-5
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24 Apr 2008;
1144472-04-7
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08 May 2009;
1193002-3-3
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20 Nov 2009; and
1193002-21-9
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20 Nov 2009.
Claim Objections
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 22 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim must be stated in the alternative. See MPEP § 608.01(n).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached on 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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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624