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 .
According to paper filed on Nov. 5, 2025, the applicants have amended claim 20 and furthermore, have added new claims 29-34.
Claims 20 and 29-34 are pending in the application.
Election/Restriction
4. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim 20, drawn to A method of preparing an amine salt of compound FA, classified in CPC class C07D.
II. Claims 29-30, drawn to A method of preparing compound of claim 29, classified in CPC class C07C.
III. Claims 31-34, drawn to A method of preparing compound of claims 31 and 32, classified in CPC class C07C.
The inventions are independent or distinct, each from the other because:
Inventions I, II and III are directed to related inventions. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are not capable of use together. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The method of preparing amine salt of compound FA is classified in CPC class C07D while the methods of preparing compounds of inventions II and III are classified in CPC class C07C and therefore, constitutes a burdensome search.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
In the originally filed application, claim 20 was the only claim present and was examined. The newly added claims 29-34 were not present in the originally filed
application. Therefore, claims 29-34 are withdrawn from further consideration as being directed to non-elected subject matter.
Response to Arguments
Applicant's arguments filed on Nov. 5, 2025 have been fully considered but they are not persuasive. The applicants argue that claim 20 is amended to overcome ODP rejection. This is not true. The applicant’s attention is drawn to claims 7-8 of PAT 11,241,418. Claim 8 of the cited patent is directed to preparing amine salt represented by diisopropylethyl amine salt of compound FA. Therefore, it would have been obvious to one skilled in the art to prepare diisopropylethyl amine salt of compound FA with reasonable expectation of success.
Conclusion
The ODP rejection of claim 20 over claims 7-8 of U.S. Patent 11,241,418 is maintained.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621