DETAILED ACTION
Notice of Pre-AIA or AIA Status
The inventor or joint inventor should note that the instant invention, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 96-114 are pending in the instant invention. According to the Amendments to the Claims, filed April 15, 2025, claims 96-114 were amended and claims 1-95 were cancelled.
Status of Priority Objection - Priority Date
This invention is a Continuation (CON) of US Application No. 17/125,955, filed December 17, 2020 and now US 11,878,985, which is a Divisional (DIV) of US Application No. 16/449,967, filed June 24, 2019 and now US 10,927,125, which is a Divisional (DIV) of US Application No. 15/805,716, filed November 7, 2017 and now US 10,370,386, which is a Divisional (DIV) of US Application No. 14/511,425, filed October 10, 2014 and now US 9,840,516.
Similarly, the inventor or joint inventor should further note that this invention’s claim to priority under 35 U.S.C. § 119(e) to US Provisional Application Nos.: a) 62/052,366, filed September 18, 2014; b) 62/034,619, filed August 7, 2014; and c) 61/889,460, filed October 10, 2013, was objected to in the Non-Final Rejection, mailed on January 16, 2025. Consequently, the effective filing date, for examination and prosecution on the merits, is that of US Application No. 14/511,425, filed October 10, 2014.
Status of Restrictions / Election of Species
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The forthcoming second Office action and prosecution on the merits includes claims 96-114, drawn to substituted piperazines having the structure (I’b), shown to the right.
Similarly, the inventor or joint inventor should further note that the sections of U.S.C. Title 35 that formed the basis of prior rejections formulated, as well as any references supporting said rejections, that are not included with this Office action, may be found in the Non-Final Rejection, mailed on January 16, 2025.
Moreover, the inventor or joint inventor should further note that any rejections and/or objections of record not explicitly addressed herein below, are hereby withdrawn, in light of the inventor’s or joint inventor’s arguments and/or the Amendments to the Claims, filed April 15, 2025.
Thus, a second Office action and prosecution on the merits of claims 96-114 is contained within.
New Claim Objections
Claim 96 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
A compound having the following structure (I’b):
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(I’b)
or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof,
wherein:
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is a double bond;
(i) R’ is R1; and
R” is R2c; or
(ii) R’ is H; and
R” is R1;
R1 is aryl or heteroaryl, wherein the aryl or heteroaryl is optionally substituted with one or more substituents independently selected from the group consisting of halo, cyano, C1-C6 alkyl, C1-C6 haloalkyl, cyano-C1-C6 alkyl, aminylcarbonyl-C1-C6 alkyl, hydroxy-C1-C6 alkyl, alkoxy-C1-C6 alkyl, C3-C8 cycloalkyl-alkyl, C2-C6 alkynyl, aminylcarbonyl, C1-C6 alkyl-aminylcarbonyl, C3-C8 cycloalkyl-aminylcarbonyl, aminyl, C1-C6 alkylaminyl, C1-C6 alkyl-carbonylaminyl, C2-C6 alkenyl-carbonylaminyl, hydroxy, C1-C6 alkoxy, C1-C6 haloalkoxy, =O, aminylsulfone, C3-C8 cycloalkyl, cyano-C3-C8 cycloalkyl, C1-C6 alkyl-cycloalkyl, aminylcarbonyl-C3-C8 cycloalkyl, fused C3-C8 cycloalkyl, and heteroaryl;
R2a is H, halo, C1-C6 alkyl, C1-C6 haloalkyl, hydroxy, C1-C6 alkoxy, C3-C8 cycloalkyl, aryl, or heteroaryl;
R2b is H, halo, C1-C6 alkyl, C1-C6 haloalkyl, hydroxy, C1-C6 alkoxy, C3-C8 cycloalkyl, aryl, or heteroaryl;
R2c is H, halo, C1-C6 alkyl, C1-C6 haloalkyl, hydroxy, C1-C6 alkoxy, C3-C8 cycloalkyl, aryl, or heteroaryl;
X is N;
Y is CR6;
Z is CR6;
each R6 is independently H, cyano, C1-C6 alkyl, cyanoalkyl, guanidinylalkyl, amidinylalkyl, aminylalkyl, aminylcarbonyl, CO2NRaRb, amino, alkylaminyl, haloalkylaminyl, hydroxyalkylaminyl, guanidinylalkylaminyl, amidinylalkylaminyl, aminylalkylaminyl, heterocyclylalkylaminyl, arylalkylaminyl, heteroarylalkylaminyl, heterocyclylaminyl, arylaminyl, heteroarylaminyl, C1-C6 alkoxy, alkylaminylalkoxy, alkylcarbonylaminylalkoxy, guanidinylalkoxy, amidinylalkoxy, aminylalkoxy, heterocyclylalkoxy, arylalkoxy, heteroarylalkoxy, heterocyclyloxy, aryloxy, heteroaryloxy, aminylsulfonyl, heterocyclyl, aryl, or heteroaryl;
each Ra is independently H or C1-C6 alkyl;
each Rb is independently H or C1-C6 alkyl; or
Ra and Rb, together with the nitrogen atom to which they are attached, form a heterocyclyl;
L1 is a bond;
each R3a is independently H, halo, cyano, C1-C6 alkyl, cyanoalkyl, aminylcarbonylalkyl, carboxyalkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, C2-C6 alkynyl, aminylcarbonyl, CO2H, amino, or hydroxy;
each R3b is independently H, halo, cyano, C1-C6 alkyl, cyanoalkyl, aminylcarbonylalkyl, carboxyalkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, C2-C6 alkynyl, aminylcarbonyl, CO2H, amino, or hydroxy;
each R4a is independently H, halo, cyano, C1-C6 alkyl, cyanoalkyl, aminylcarbonylalkyl, carboxyalkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, C2-C6 alkynyl, aminylcarbonyl, CO2H, amino, or hydroxy;
each R4b is independently H, halo, cyano, C1-C6 alkyl, cyanoalkyl, aminylcarbonylalkyl, carboxyalkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, C2-C6 alkynyl, aminylcarbonyl, CO2H, amino, or hydroxy;
L2 is a bond;
Q is -C(NR8’)-, -C(O)-, -NR8C(O)-, -NR8S(O)2-, or -S(O)2-;
R8 is H, C1-C6 alkyl, or hydroxyalkyl;
R8’ is H, cyano, C1-C6 alkyl, or hydroxy; and
(iii)
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is a double bond;
R9 is H, cyano, C1-C6 alkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, CO2H, alkoxycarbonyl, or heteroaryl; and
R10 is H, cyano, C1-C6 alkyl, aminylalkyl, alkylaminylalkyl, hydroxyalkyl, CO2H, alkoxycarbonyl, or heteroaryl; or
(iv)
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is a triple bond;
R9 is absent; and
R10 is H, C1-C6 alkyl, aminylalkyl, alkylaminylalkyl, or hydroxyalkyl;
with the proviso that if R1 is pyridyl, then at least one of R2a, R2b, or R2c is not H.
Appropriate correction is required. See MPEP § 2173.02.
Claim 97 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 96, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is aryl, wherein the aryl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 98 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 97, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is phenyl, wherein the phenyl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 99 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The compound of claim 97, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein the aryl is substituted with one or more substituents independently selected from the group consisting of halo, cyano, C1-C6 alkyl, C1-C6 haloalkyl, cyano-C1-C6 alkyl, aminylcarbonyl-C1-C6 alkyl, hydroxy-C1-C6 alkyl, alkoxy-C1-C6 alkyl, C3-C8 cycloalkyl-alkyl, C2-C6 alkynyl, aminylcarbonyl, C1-C6 alkyl-aminylcarbonyl, C3-C8 cycloalkyl-aminylcarbonyl, C1-C6 alkylaminyl, C1-C6 alkyl-carbonylaminyl, hydroxy, C1-C6 alkoxy, C1-C6 haloalkoxy, aminylsulfone, C3-C8 cycloalkyl, cyano-C3-C8 cycloalkyl, C1-C6 alkyl-cycloalkyl, aminylcarbonyl-C3-C8 cycloalkyl, fused C3-C8 cycloalkyl, and heteroaryl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 100 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The compound of claim 97, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein the aryl is substituted with one or more substituents independently selected from the group consisting of fluoro, chloro, bromo, cyano, methyl, ethyl, isopropyl, difluoromethyl, trifluoromethyl, hydroxymethyl, methoxymethyl, aminylcarbonyl, hydroxy, methoxy, and cyclopropyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 101 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 102 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 96, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is heteroaryl, wherein the heteroaryl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 103 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 102, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein the heteroaryl is thiophenyl, pyridinyl, pyridinonyl, pyrimidinyl, indolinonyl, benzothiophenyl, indazolyl, benzoimidazolyl, benzoisoxazolyl, benzooxazolyl, benzodioxazolyl, quinolinyl, tetrahydroquinolinyl, quinolinonyl, dihydroquinolinonyl, quinazolinyl, or dihydrobenzodioxinyl, wherein the thiophenyl, pyridinyl, pyridinonyl, pyrimidinyl, indolinonyl, benzothiophenyl, indazolyl, benzoimidazolyl, benzoisoxazolyl, benzooxazolyl, benzodioxazolyl, quinolinyl, tetrahydroquinolinyl, quinolinonyl, dihydroquinolinonyl, quinazolinyl, or dihydrobenzodioxinyl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 104 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 103, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein the thiophenyl, pyridinyl, pyridinonyl, pyrimidinyl, indolinonyl, benzothiophenyl, indazolyl, benzoimidazolyl, benzoisoxazolyl, benzooxazolyl, benzodioxazolyl, quinolinyl, tetrahydroquinolinyl, quinolinonyl, dihydroquinolinonyl, quinazolinyl, or dihydrobenzodioxinyl is substituted with one or more substituents independently selected from the group consisting of fluoro, chloro, methyl, and amino.
Appropriate correction is required. See MPEP § 2173.02.
Claim 105 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 106 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 107 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The compound of claim 96, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein Q is -C(O)-.
Appropriate correction is required. See MPEP § 2173.02.
Claim 108 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The compound of claim 96, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein:
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is
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.
Appropriate correction is required. See MPEP § 2173.02.
Claim 109 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 110 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 111 is objected to because of the following informalities: for clarity and precision, the claim is dependent upon an objected base claim. Appropriate correction is required. See MPEP § 2173.02.
Claim 112 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 111, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is aryl, wherein the aryl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 113 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 111, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is phenyl, wherein the phenyl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
Claim 114 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound of claim 111, or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof, wherein R1 is heteroaryl, wherein the heteroaryl is optionally substituted with one or more independently selected substituents.
Appropriate correction is required. See MPEP § 2173.02.
New Claim Rejections - 35 U.S.C. § 112(d)
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
(d) REFERENCE IN DEPENDENT FORMS. Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 99 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The inventor or joint inventor should note that claim 99 recites the limitation, The compound of claim 97, wherein R1 is substituted with one or more substituents selected from…, in lines 1-7 of the claim. According to claim 96, R1 is not recited as optionally substituted, with respect to the substituted piperazines having the structure (I’b). Consequently, since The compound of claim 97, wherein R1 is substituted with one or more substituents selected from…, fails to specify a further limitation to the substituted piperazines having the structure (I’b), as recited in claim 97, and/or fails to include all the limitations of the substituted piperazines having the structure (I’b), as recited in claim 97, the instant dependent claim is rendered improperly dependent under 35 U.S.C. § 112(d).
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claim to place the dependent claim in proper dependent form, particularly as stated in the section above entitled New Claim Objections, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 100 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The inventor or joint inventor should note that claim 100 recites the limitation, The compound of claim 97, wherein R1 is substituted with one or more substituents selected from…, in lines 1-4 of the claim. According to claim 96, R1 is not recited as optionally substituted, with respect to the substituted piperazines having the structure (I’b). Consequently, since The compound of claim 97, wherein R1 is substituted with one or more substituents selected from…, fails to specify a further limitation to the substituted piperazines having the structure (I’b), as recited in claim 97, and/or fails to include all the limitations of the substituted piperazines having the structure (I’b), as recited in claim 97, the instant dependent claim is rendered improperly dependent under 35 U.S.C. § 112(d).
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claim to place the dependent claim in proper dependent form, particularly as stated in the section above entitled New Claim Objections, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 101 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The inventor or joint inventor should note that claim 101 recites the limitation, The compound of claim 96, wherein R1 has one of the following structures:…. According to claim 96, R1 is not recited as optionally substituted, with respect to the substituted piperazines having the structure (I’b). Consequently, since The compound of claim 96, wherein R1 has one of the following structures:…, fails to specify a further limitation to the substituted piperazines having the structure (I’b), as recited in claim 96, and/or fails to include all the limitations of the substituted piperazines having the structure (I’b), as recited in claim 96, the instant dependent claim is rendered improperly dependent under 35 U.S.C. § 112(d).
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claim to place the dependent claim in proper dependent form, particularly as stated in the section above entitled New Claim Objections, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 104 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The inventor or joint inventor should note that claim 104 recites the limitation, The compound of claim 103, wherein R1 is substituted with one or more substituents selected from…, in lines 1-2 of the claim. According to claim 96, R1 is not recited as optionally substituted, with respect to the substituted piperazines having the structure (I’b). Consequently, since The compound of claim 103, wherein R1 is substituted with one or more substituents selected from…, fails to specify a further limitation to the substituted piperazines having the structure (I’b), as recited in claim 96, and/or fails to include all the limitations of the substituted piperazines having the structure (I’b), as recited in claim 96, the instant dependent claim is rendered improperly dependent under 35 U.S.C. § 112(d).
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claim to place the dependent claim in proper dependent form, particularly as stated in the section above entitled New Claim Objections, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 105 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The inventor or joint inventor should note that claim 105 recites the limitation, The compound of claim 96, wherein R1 has one of the following structures:…. According to claim 96, R1 is not recited as optionally substituted, with respect to the substituted piperazines having the structure (I’b). Consequently, since The compound of claim 96, wherein R1 has one of the following structures:…, fails to specify a further limitation to the substituted piperazines having the structure (I’b), as recited in claim 96, and/or fails to include all the limitations of the substituted piperazines having the structure (I’b), as recited in claim 96, the instant dependent claim is rendered improperly dependent under 35 U.S.C. § 112(d).
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claim to place the dependent claim in proper dependent form, particularly as stated in the section above entitled New Claim Objections, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Allowable Subject Matter
No claims are allowed.
Conclusion
The inventor’s or joint inventor’s arguments and/or the Amendments to the Claims, filed April 15, 2025, necessitated the new ground of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). The inventor or joint inventor 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DOUGLAS M. WILLIS, whose telephone number is 571-270-5757. The Examiner may normally be reached on Monday thru Thursday from 8:00-6:00 EST. The Examiner is also available on alternate Fridays.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. Jeffrey Murray, may be reached on 571-272-9023. The fax phone number for the organization where this invention or proceeding is assigned is 571-273-8300.
Information regarding the status of an invention may be obtained from Patent Center. For more information about Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions on access to Patent Center, contact the Patent Electronic Business Center (PEBC) at 866-217-9197 (toll-free) or ebc@uspto.gov.
/DOUGLAS M WILLIS/
Primary Examiner, Art Unit 1624
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