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 .
DETAILED ACTION
Claims 1-5, 11, 12, 18, 19, 21-26, 28-32, 38-43, 46 and 49-51 are pending in the application. Claims 1-3, 38, 41, 43, 46, 50 and 51 are rejected. Claims 4, 5, 11, 12, 18, 19, 21-26, 28-32, 39, 40, 42 and 49-51 are objected to.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2022/021624, filed on March 24, 2022, which claims benefit of Provisional Application No. 63/166,516, filed on March 26, 2021.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on September 21, 2023 and August 1, 2024 are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claims 49-51 are objected to because of the following informalities:
Claim 49 should be amended to include the word -or- where indicated below for proper Markush language:
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Claim 49 should be amended to recite “...a mixture of two or more compounds selected from the consisting of ;and...” for sake of clarity.
Claim 50 should be amended to replace “a compound” with -the compound- for sake of clarity and consistency.
Claim 51 should be amended to replace “a compound according to claim 1” with -the compound according to claim 1- for sake of clarity and consistency.
Appropriate correction is required.
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 1-3, 38, 41, 43, 46, 50 and 51 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.
Claims 1-3 recite “R3 is...O” and is rejected as indefinite. It is unclear whether Applicant intended the “O” to be, for example, an oxygen anion or an oxo (i.e., =O) group. Based on the intermediate structure provided on page 99 of the instant specification, it appears Applicant’s original intent was to recite: “R3 is H, =O, or OH” (i.e., “O” is an oxo). It is, therefore, suggested Applicant make the appropriate corrections as long as the newly amended claims are supported by the original disclosure. Dependent claims 38, 41, 43, 46, 50 and 51 do not correct the issue of indefiniteness with respect to parent claim 1 and are likewise rejected.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(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.
The following is a quotation of pre-AIA 35 U.S.C. § 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2 is rejected under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, 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.
Claim 2 recites the limitation “wherein R1 is a C3-8 cycloalkyl.” Parent claim 1 recites alternatives for variable R1- one of which is “C3-6 cycloalkyl.” Parent claim 1, however, does not provide for “C3-8 cycloalkyl” as recited in dependent claim 2. Therefore, claim 2 fails to include all the limitations of the claim upon which it depends. It is suggested Applicant amend claim 2 to replace “wherein R1 is a C3-8 cycloalkyl” with -wherein R1 is a C3-6 cycloalkyl-.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 4, 5, 11, 12, 18, 19, 21-26, 28-32, 39, 40 and 42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-5, 11, 12, 18, 19, 21-26, 28-32, 38-43, 46 and 49-51 are pending in the application. Claims 1-3, 38, 41, 43, 46, 50 and 51 are rejected. Claims 4, 5, 11, 12, 18, 19, 21-26, 28-32, 39, 40, 42 and 49-51 are objected to.
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/D.M.S./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626