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
This application is a CON of PCT/EP2021/082236 (11/19/2021)
and claims foreign priority to PCTCN2020130577 (11/20/2020).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
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.
Claims 15-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a “use” is recited without specifying any method steps.
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 15-19 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.
Claims 15-19 are “use” claims that one of ordinary skill in the art would not understand the scope of the claimed invention (MPEP 2173.05(q)).
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.
Claims 1-14, 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wynne et al. (US20100048660).
Wynne teaches Example 61 ([0297], Table 2) which has the following structure:
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200
400
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2-(3-chlorophenyl)-2H-benzo[d][1,2,3]triazol-5-amine
and anticipates claim 1’s Formula (I) when:
R1,3,4,5,6 are H;
R2 is halogen (Cl).
Thus, claims 1-11 read on the prior art and are anticipated.
Regarding claim 12, Wynne teaches the preparation of the same compounds that anticipate (p. 11), including where R3-L1 is H2O. Regarding claims 13 and 20, the intended use does not limit the claim in a manner that distinguishes the compound over the prior art. Regarding claim 14, Wynne teaches the compound and formulated as a pharmaceutical composition ([0245]-[0255], which one of skill in the art would at once envisage in a manner that anticipates the claim (MPEP 2131.02 III.). Regarding claim 21, the claim is interpreted as a product-by-process such that the process steps do not distinguish the claims from the prior art (MPEP 2113). Regarding claim 22, Wynne teaches administering an effective amount of a compound of formula (I) ([0244]: “administering to the patient an effective amount of a compound of formula (I)”, [0245]-[0265], claim 1).
Thus, the claims are anticipated.
Conclusion
No claims allowed.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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