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 1-9 are pending.
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 8-9 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 the claims recite the use of the instant compounds. Applicant is suggested to rewrite the claims to “The method of preventing or controlling bacterial diseases of plants”.
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 2-3 and 8-9 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 expression “The polysubstituted nitrogen-containing heterocyclic derivative of claim 1, a method for preparing the polysubstituted nitrogen-containing heterocyclic derivative comprising the following steps…” recited in claims 2-3 renders the claims indefinite. It’s not clear if the claims are directed to a compound made by a process or if the claims being directed to a method of making.
Claims 8-9 are considered indefinite as there is no active step recited in the claims.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,663,457 (‘457).
‘457 teaches a compound, 1-cyclopropy-6-fluoro-7-chloro-1,4-dihydro-4-oxo-1,8-naphthyridine-3-carboxlic acid (see claim 3). ‘457 teaches a mixture of water and 1-cyclopropy-6-fluoro-7-chloro-1,4-dihydro-4-oxo-1,8-naphthyridine-3-carboxlic acid (see col. 11, lines 20-31).
The method of how to make such compound would not change the compound itself. Therefore, the limitations of claims 2-3, as compounds by process of making claims, are met.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2017/113268 (‘268), Machine English translation is also provided.
‘268 teaches the compound OK-EM033, a one of the preferable compounds for treating amyotrophic lateral sclerosis (see the abstract and claim). ‘268 teaches the excipients could be talc (see page 6/12, 10th paragraph). ‘268 also teaches the suitable dosage forms include emulsions (see page 6/12, 4th paragraph).
As for claims 8-9, the limitations recited are considered as intended use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN MING R HUI whose telephone number is (571)272-0626. The examiner can normally be reached Mon - Fri 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAN MING R HUI/Primary Examiner, Art Unit 1627
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