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 .
Formal Matters
Claims 1-2 were originally presented on 10/16/2023 and are pending and under examination.
Priority
This application is a DIV of 17/343,503, filed 06/09/2021, which is a CON of 16/853,412, filed 04/20/2020, which is a CON of 15/895,783, filed 02/13/2018, which is a CIP of 14/857,500, filed 09/17/2015, which claims the benefit of PRO 62/121,157, filed 02/26/2015, and PRO 62/051,875, filed 09/17/2014.
Information Disclosure Statement
No Information Disclosure Statements have been filed.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities: the steps of the claims, e.g., “a.”, “b.”, etc. should be written as “a)” or “(a)”. Appropriate correction is required.
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.
"The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.", (see MPEP § 2173).
Claims 1-2 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 1 and 2 recite synthesis procedures for a benzazolo[3,2-a]quinolinium chloride salt comprising multiple synthetic steps. In step a), a 2-aminoacetanilide is formed by reacting a mixture of o-phenylenediamine and ethyl acetate. Step b) requires reacting a second mixture “…comprising a 2-aminoacetanilide and a benzaldehyde of formula…” The metes and bounds of the claims are unclear because “a 2-aminoacetanilide” as recited in step b) is ambiguous. It is unclear whether this is intended to be limited to the 2-aminoacetanilide formed in step a) or can more broadly encompass any 2-aminoacetanilide, e.g., a substituted 2-aminoacetanilide.
Other steps of the claims clearly require reacting mixtures comprising a compound formed in the previous step by reciting “…said [compound from previous step]…” Step b), in contrast, does not recite “…said 2-aminoacetanilide…”, rendering it unclear whether this 2-aminoacetanilide is the 2-aminoacetanilide formed in the prior step.
The Examiner suggests amending step b) of each of claims 1 and 2 to recite “…the 2-aminoacetanilide…” or “…said 2-aminoacetanilide…” to clearly convey that the 2-aminoacetanilide in step b) is the same 2-aminoacetanilide formed in step a).
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 4,590,275
US Patent No. 8,124,770
US Patent No. 9,085,574
US Patent No. 9,889,128
US Patent No. 10,624,885
US Patent No. 11,311,531
US Patent No. 11,786,520
Conclusion
Applicant is requested to specifically point out the support for any amendments made to the disclosure in response to this Office action, including the claims (M.P.E.P. §§ 714.02 and 2163.06). In doing so, applicant is requested to refer to pages and line (or paragraph) numbers (if available) in the as-filed specification, not the published application. Due to the procedure outlined in M.P.E.P. § 2163.06 for interpreting claims, other art may be applicable under 35 U.S.C. § 102 or 35 U.S.C. § 103(a) once the aforementioned issue(s) is/are addressed.
Applicant is reminded that MPEP §2001.06(b) clearly states that “[t]he individuals covered by 37 C.F.R. 1.56 have a duty to bring to the attention of the examiner, or other Office official involved with the examination of a particular application, information within their knowledge as to other copending United States applications which are "material to patentability" of the application in question." See Armour & Co. v. Swift & Co., 466 F.2d 767, 779, 175 USPQ 70, 79 (7th Cir. 1972). MPEP §2001.06(b) clearly indicates that “if a particular inventor has different applications pending in which similar subject matter but patentably indistinct claims are present that fact must be disclosed to the examiner of each of the involved applications.” See Dayco Prod. Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D ANDERSON whose telephone number is (571)272-9038. The examiner can normally be reached on Monday-Friday, 7:30 am - 4:00 pm PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached on 571-272-5541. 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.
/James D. Anderson/Primary Examiner, Art Unit 1629
UNITED STATES PATENT AND TRADEMARK OFFICE
500 Dulany Street
Alexandria, VA 22314-5774
Tel. No.: (571) 272-9038