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 .
Current Status of 18/540,293
This Office action is responsive to the claims of 12/14/2023. Claims 1-8 are pending and have been examined on the merits.
Priority
Applicants identify the instant application as a continuation of PCT/CN2022/082764, filed 03/24/2022.
Information Disclosure Statement
No information disclosure statement was provided by Applicants for consideration at the time of examination.
Specification
The abstract of the disclosure is objected to because the figure of the compound of Formula (I) is grainy and difficult to read. 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).
The disclosure is objected to because of the following informalities: The figure of Formula (I) in [0005] is grainy and difficult to read. [0005-0012] contain grainy images of substituent R6. As drawn, it is unclear where the attachment of these substituents is supposed to occur. Based on the example compounds of the specification, it appears that attachment is at the nitrogen atom. To clearly denote this, a squiggly line should be placed over the bonds from the nitrogen atoms such as
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. This change should be applied to all instances of R6 in the specification. The figures of [0019-0023] are grainy and difficult to read. The reagents/reaction conditions over the reaction arrows are particularly difficult to read
Appropriate correction is required.
Claim Objections
Claims 1- 6 are objected to because of the following informalities: Claims 1-6 contain numerous grammatical and formatting errors and lack a consistent format. A uniform format must be adhered to throughout the claim set. MPEP 608.01(m) states "[e]ach claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i)."
Claims 3-6 do not begin with a capital letter. Additionally, claims 3 and 4 contain multiple sentences punctuated by periods. Each of claims 3-6 must be amended so that the first word of the claim begins with a capital letter. Further, in claims 3 and 4, all internal periods must be replaced with semicolons, and each claim must terminate with a single period.
In claims 3 and 4, each instance of the word "Or" should be corrected to lowercase "or."
The phrase "is characterized in that" appearing in claims 2-6 should be deleted and replaced with "wherein." The phrase "the described" of claims 2-6 is redundant and should be removed.
Claim 2 recites “T the compound.” The extraneous “T” should be deleted and replaced with “The.”
Claims 1 and 2 list substituents for each respective R group separated by commas, however only the list for R5 includes a terminal comma in these lists. These lists should contain the word "or" proceeding the final entry of the list. For example, R5 represents -H, Cl, -I, or -Br.
The listings of substituents in claims 1 and 2 do not consistently end with a semicolon, whereas claims 3-6 separate defined substituents using semicolons. The format of the claims must be consistent throughout the claim set. Either all substituent lists should terminate with semicolons, or none should. The examiner recommends using a semicolon after the definition of each R group.
The structure of Formula (I) in claim 1 is grainy and difficult to read. It is not possible to distinguish the R groups and any potential stereochemistry in the molecule.
Appropriate correction is required.
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 1-6 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 claims recite the substituent R6 defined as a group of compounds. However, the depicted structures of R6 do not clearly indicate the point of attachment to the structure of Formula (I). Additionally, the depicted structures of R6 include an additional methyl group in their structures. For example, the first substituent of R6 in claim 1 is a 1,4-dimethylpiperidine moiety. However the molecule of Embodiment 1 shows only a 4-methylpiperidine functionality. As a result, the scope of the claimed compounds cannot be reasonably determined.
The examiner suggests amending the structures of R6 to include a squiggly line perpendicular to the bond of attachment such as
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. This depiction clearly identifies the point of attachment to the core scaffold.
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.
Claim 7 and 8 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to the “use of the compound of any of claims 1 in the preparation of a drug for treating cancer.” Such a use claim does not recite a process comprising steps, nor does it recite a manufacture or composition of matter. Accordingly, the claims are not directed to a statutory category of invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.K.E./Examiner, Art Unit 1625
/Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625