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 .
Claim Objections
Claim 1-3 are objected to because of the following informalities: they contain periods in the middle of the claims at the end of the limitations defining R4 and R13 and the two recitations defining R14 and R15. Appropriate correction is required.
Claim Rejections - 35 USC § 101 / 112
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.
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.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, or alternatively, 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 pre-AIA the applicant regards as the invention.
Claim 7 does/do not fall within at least one of the four categories of patent eligible subject matter, and is indefinite, because it is not a proper process claim as it fails to set forth any steps involved in the process. Thus, claim 7 is rejected as a “use” claim under alternative grounds based on 35 U.S.C. 101 and 112 per MPEP 2173.05(q).
Claim Rejections - 35 USC § 112
Claims 1-10 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 limitations for R4, R13, R14, and R15, but thereafter recite contradictory limitations for “R4 and R13 together with the nitrogen atom to which they are bonded” and twice for “R14 and R15 together with the carbon atom to which they are bonded”, rendering the claims indefinite. For purposes of compact prosecution, such limitations are interpreted herein as disjunctive, e.g., R4 and R13 are as previously singly defined or as subsequently jointly defined. Claims 4-10 are rejected as depending from such indefinite claims.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Claude Clapot et al. (GB 2015521 A; published 12 September 1979; of record) discloses pyrrolidine-2-one derivatives useful as herbicides having general formula
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132
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wherein Ar may be phenyl with two halogen substituents and R1 may be a C1 to 4 alkyl radical (abstract), which corresponds to the substituted pyrrolidin-2-one of general formula (I) of the instant claims wherein R1 and R5-R9 are H, R10 is a C1-C8 alkyl, A1-A3 are CH, and R11-R12 are halogen, but R2 of Claude Clapot et al. is H or methyl (abstract) which does not correspond to the CR2R3COXR4 of general formula (I) of the instant claims.
Fischl et al. (US 2019/0225575 A1; published 25 July 2019) discloses antiviral compounds (title) such as FP 240:
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119
192
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(Table 2 page 269), which corresponds to the substituted pyrrolidin-2-one of general formula (I) of the instant claims wherein R1 and R5-R10 are H, X is NH, R4 is a C3-cycloalkyl, A1-A3 are CH, and R12 is a halogen, but FP 240 of Fischl et al. has a carbonyl rather than R2 and R3 of the instant claims, and a hydrogen rather than R11 of the instant claims. Fischl et al. also discloses intermediate compounds used for formulating the antiviral compounds, such as I-245:
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93
205
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(Table 1 page 191), which corresponds to the substituted pyrrolidin-2-one of general formula (I) of the instant claims wherein R1-R2 and R5-R10 are H, R3 is OH, X is NH, R4 is a C3-cycloalkyl-C1-alkyl, A1-A3 are CH, and R12 is a halogen, but FP 240 of Fischl et al. has hydrogens rather than R11 and R12 of the instant claims, and is an intermediate compound used in the formulation of the antiviral compounds of Fischl et al. such that there would have been a lack of motivation to select FP 240 of Fischl et al. as a lead/starting compound suitable for modification, and furthermore the compounds of Fischl et al. are antiviral compounds rather than herbicides and/or plant growth regulators as are the compounds of the instant claims.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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