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 .
Application and Claims Status
Applicant’s amendments filed on January 26, 2026 are acknowledged and entered.
Claims 1-53 were pending. In the amendment as filed on January 26, 2026, applicants have amended claims 26 and 44; cancelled no claims; and added no new claims. Therefore, claims 1-53 are currently pending.
Elections/Restrictions
This action is in response to an election from a Restriction Requirement filed on November 28,
2025. Applicant’s election without traverse of Group X, drawn to a process for making a compound of formula VI, which reads on claims 44-53, in the reply filed on January 26, 2026 is acknowledged.
Applicant further elected compound of formula VI (midazolam, shown below) as their elected species. Examination will be limited to claims directed to the elected species, which are presently claims 44-53, to the extent that they are readable on the elected embodiment.
PNG
media_image1.png
200
376
media_image1.png
Greyscale
Claims 1-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b),
as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Therefore, claims 44-53 are presently under examination. Applicant timely traversed the restriction (election) requirement in the reply filed on January 26, 2026.
Priority
The instant application claims the benefit of the provisional application 63/375,439, filed September 13, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) filed on March 29, 2024 is in compliance with the provisions of 37 CFR 1.97. All references have been considered except where marked with a strikethrough. A signed copy of Form 1449 is included with this Office Action.
Specification - Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to: for insufficiently describing the nature of the chemical process and for failing to meet the minimum length requirements. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Specification - Drawings
Acknowledgement is made of the drawings received September 13, 2023.
The drawings are objected to because:
The view numbers and reference characters are not oriented in the same direction. In the instant drawings, all FIG. labels are oriented in the opposite direction of the figure themselves and reference characters, except for FIG. 7, FIG. 11A, FIG. 11B, and FIG. 14. As recited in 37 CFR 1.84:
(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
The instant drawings are not numbered in consecutive Arabic numerals. As recited in 37 CFR 1.84:
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking
In Fig. 1, the text around some of the drawings is too small to discern what is written. In Fig. 4, the text above and below the reaction arrows is blurry and illegible. As recited in 37 CFR 1.84:
(l) Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
Figures 11A and 11B are missing a period after the abbreviation of “FIG” in “FIG 11A” and “FIG 11B”, which should read “FIG. 11A” and “FIG. 11B”.
FIG. 3 and FIG. 4 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: In FIG. 15, reference characters 2, 3, 4, 4b, 5, 6, and 1 are not mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification – Disclosure
On page 45, para 00156, FIG. 16 is incorrectly referenced as the figure that portrays a new manufacturing route to midazolam. It should, instead, reference FIG. 15. The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Claim Objections
Claim 44 is objected to because of the following informalities:
In the limitation of step a., the phrase “to a container and adding about 5 to 6 mole equivalents…” is not properly formatted with the rest of the claims. The limitation should be indented. Appropriate correction is required.
In the limitation of step b., there is a semicolon that needs to be removed between “product; comprising”. Appropriate correction is required.
Claim 46 is objected to because of the following informalities:
For each step within claim 46, the step is written with a single, open parenthesis around the letter, whereas all previous and later claims use a period after a step. For instance, instant claim 46 step j is written as “j)” while instant claim 44 step a is written as “a.”. Examiner further notes that reference to steps within the claims also use the parenthesis. For example, claim 46 step j recites “dissolving the solids of step i) in a sufficient quantity…” Examiner suggests consistent punctuation for all claim steps and for the steps written within the claims themselves.
For process claims, active language is required to describe the process with the use of the gerund verb form. In claim 46, step l, Applicant recites “…and held at this temperature for about 30 mins”. Examiner suggests amending the claim to instead recite “…and holding at this temperature…”. Furthermore, Examiner suggests completely writing “minutes” in claim 46, step l, instead of the shorthand “mins”.
Claim 47 is objected to because of the following informalities:
For process claims, active language is required to describe the process with the use of the gerund verb form. The preamble of claim 47 currently recites, “The process of claim 44, wherein the process comprises:”. To overcome the objection, the claim may be amended to recite “The process of claim 44, comprising:”. In claim 47, step n, Applicant recites “…is added to adjust the pH to greater than 10”. Examiner suggests amending the claim to instead recite “…and adding about 5 M aqueous alkali hydroxide to adjust the pH to greater than 10”. The entirety of steps p and q of claim 47 are not written in the required gerund verb form. Appropriate correction is required. Examiner requests Applicant reviews the instant claims for any additional process claims that are not correctly written with the gerund verb form.
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.
Claims 44-53 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 term “sufficient” in claim 44 step d, claim 44 step e, claim 44 step g, claim 46 step j, and claim 47 step p, is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What is a sufficient amount of water? Is it one ml, or is it one gallon, or is it one bathtub-full?
Regarding claim 45, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 47 is rejected to as vague as it can have many interpretations. First, let’s begin with the lettering of its steps. Claim 47 depends on claim 44 and begins sequentially with the next step letter, letter j, since claim 44 ends with step i. However, claim 47, step j, begins by going back to claim 44, step d. If the claim dependency and step numbering are to be followed, one could not possibly practice all of the required steps of claim 44, and then proceed to claim 47, which requires going back to claim 44, step d, with any expectation of following the process properly. Next, claim 47, step j, asks practitioner to go back to claim 44, step d. Is the practitioner now supposed to continue at claim 44, step e; or continue at claim 47, step k. Between the claim 47 letter sequence and the claim 47 references to earlier claim steps (in a process claim no less) has created twin confusions for the Examiner in understanding how to practice this invention. Appropriate correction is required.
Claim 48 is rejected to for its listing of solvent mixtures of “water/methanol”, “water/isopropanol”, and “acetonitrile/water” as vague. Claim 48 depends on claim 44 and points specifically to step f, which details extracting the solution with a “water-immiscible organic solvent”. As far as the Examiner is aware, water is completely miscible with methanol, isopropanol, and acetonitrile, thus rendering claim 48 as vague because the solvent mixtures listed include both water-immiscible and water-miscible combinations
Claims 49-53 are rejected for lack of antecedent basis. Each refer back to claims drawn to non-elected inventions. For example, claim 49 recites “a process for the preparation of midazolam comprising combining one or more processes of claim 35, 36-40, 41-42, 43, or any combination thereof with the process of claims 44-48.” However, claims 35-43 have been withdrawn from examination so there is insufficient antecedent basis for this limitation in this claim. Similarly, claims 50-53 lack proper antecedent basis.
Claims 50-53 are rejected for use of the phrase “in series” as vague. As the claims are currently written, it would be impossible to complete claims 44-48 “in series”: later claim 47, step j, asks that the practitioner alter the conditions of an earlier step at claim 44, step d. If performing this sequence “in series” as recited in claims 50-53, it would be impossible to undo the actions of claim 44, step d by the time claim 47, step j, occurs.
Claim 44 lacks antecedent basis for the phrases “the compound of formula VI” and “the compound of formula V”. To overcome the rejection, the phrases may be amended to “a compound of formula VI” and “a compound of formula V”.
Claim 44, step b, lacks antecedent basis for the phrase “the mixture”. To overcome the rejection, the phrase may be amended to “the melted mixture”.
Claim 44, step c, lacks antecedent basis for the phrase “the reacted product”. To overcome the rejection, the phrase of step c may be amended to “the product”, or alternatively, the phrase in claim 44, step b, may be amended to “a reacted product”.
Claim 44, step d, lacks antecedent basis for the phrase “the mixture of c)” as no mixture is mentioned in step c. To overcome the rejection, the phrase may be amended to “a mixture”.
Claim 44, step e, lacks antecedent basis for the phrase “the solution of d)” as no solution is mentioned in step d. To overcome the rejection, the phrase may be amended to “a solution”, or alternatively, step d may be amended to end with the phrase “forming a solution.”
Claim 44, step f, lacks antecedent basis for the phrase “the organic layers”. To overcome the rejection, the phrase may be amended to “an organic layer”.
Claim 44, step i, lacks antecedent basis for the phrase “the resultant solution”. To overcome the rejection, the phrase may be amended to “the resultant solution of h)”.
Claim 46, step j, lacks antecedent basis for the phrase “the solids of step i)” (of claim 44). There is insufficient antecedent basis for this limitation in the claim since step i only recites “a solid.” Examiner suggests amending claim 46, step j, to recite “the solid of step i)”.
Claim 46, step k, lacks antecedent basis for the phrase “the solution of j)” since two solutions are mentioned in step j. To overcome the rejection, the phrase may be amended to specify which solution of step j.
Claim 46, step m, lacks antecedent basis for the phrase “the resulting crystals”. What resulting crystals? Crystal formation was never mentioned.
Claim 47, step k, lacks antecedent basis for the phrase “the solution of d)” as no solution is mentioned in step d. Is “the solution of d)” referring to a solution from claim 44, step d, or from a solution from claim 47, step j?
Claim 44, step l, lacks antecedent basis for the phrase “the solution of e)”. Is this meant to be the solution referenced in claim 44, step e, or the solution from claim 47, step k?
Claim 47, step m, lacks antecedent basis for the phrase “the slurry of f)” as no slurry is mentioned in claim 44, step f, and there is no step f in claim 47. Is this meant to be the slurry referenced in claim 47, step l?
Claim 44, step o, lacks antecedent basis for the phrase “the solution of h)”. Is this meant to be the solution referenced in claim 44, step h, or the solution from claim 47, step n?
Claim 44, step q, lacks antecedent basis for the phrase “the solution of j)”. Is this meant to be the solution referenced in claim 47, step j, or some solution from later steps in the instant claim?
Claim 44, step r, lacks antecedent basis for the phrase “the resultant crystals from j)”. There are no crystals, resultant or otherwise, mentioned in claim 47, step j.
CONCLUSION
All claims are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 am.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.A.B./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624