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 .
Claims 1-72 are pending in the application. Preliminary amendment filed 16 August 2023.
Priority
This application is a 371 of PCT/US2022/016696 filed 02/17/2022, which claims the benefit of 63150940 filed 02/18/2021.
Claim Objections
Claim 18 is objected to because of the following informalities: In claim 18, Formula 1 and 2 have the TBS protecting group. The protecting group in formula 3 is TBDMS. Is TBS also used as a notation for t-butyldimethylsilyl? Correction is needed for consistency. This also applies to claim 54. 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 1-17, and 35-53 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.
Claim 1 is drawn to a process for making compound of formula 16. However, only two steps (a) and (b) are recited as alternatives. These two steps are seen only as part of the process steps. Additional steps are seen to be needed to arrive at the compound of formula 16. This renders the claim indefinite. This also applies to claim 35 since claim 35 recites only the epoxide ring opening as a step in the process for making formula 16.
Claim 1 recites at least one step chosen from and recites parts (a) and (b). If the step in part (b) is chosen does it mean that the epoxide ring opening as in part (a) need not be chosen since the claim recites at least one step chosen from? This also applies to claims 18 and 35.
Claims 2 is drawn to the process of claim 1 wherein both steps (a) and (b) are used. Additional steps are needed to get to formula 16 which are not recited.
Claims 3-17, 37, and 42-46, which depend from a rejected base claim that is unclear/indefinite are also rendered unclear/indefinite and are rejected for the same reasons. All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
Conclusion
1. Claims 1-17, and 35-53 are rejected.
2. Claims 18-34, and 54-72 are allowable. Since claims18, 20-22, and 25-30 are found to be allowable, claims 54-55, 60, and 66-72 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693