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 .
Claims 1-14 and 20-25 are currently pending in this Application. Claims 20 and 21 are withdrawn from further consideration by the Examiner, 37 C.F.R. § 1.142(b), as being drawn to a non-elected invention. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations.
Priority
CONTINUING DATA
This application is a 371 of PCT/EP2022/061628 04/29/2022
FOREIGN APPLICATIONS
SWEDEN SE2150555-7 04/30/2021
SWEDEN SE2130172-6 06/22/2021
SWEDEN SE2230036-2 02/04/202
Information Disclosure Statement
Applicant’s Information Disclosure Statements, filed on October 19, 2023; December 12, 2023; April 04, 2024; and February 12, 2026, have been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
Election/Restrictions
Applicants’ election, without traverse, claims 1-14 and 22-25, drawn to products of Formula II,
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and the species
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in the reply filed on June 16, 2026, is acknowledged. Therefore, the restriction requirement is considered proper and is maintained.
Claim Rejections - 35 USC § 112
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.
Claims 2 and 3 are 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.
Claims 2 and 3 recite definitions for the variable R2 and R3, which are not defined in parent claim 1. Claims 2 and 3 recite “or R2 and R3 together with the carbon atom to which they are attached, form a C2-C6cycloalkyl”. Parent claim 1, does not allow for R2 and R3 to form a ring. As such the scope of claims 2 and 3 is broader than the claim from which they depend on and are properly rejected. 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.
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear, so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants’ regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.", (see MPEP § 2173).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). Claim 12 is 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 pre-AIA the applicant regards as the invention.
In the present instance, claim 12, page 22, line 14, recites “ 2-(2-chlorophenyl)-7-(6-(dimethylamino)-7,8-difluoroisoquinolin-4-yl)-5,7- diazaspiro[3.4]octane-6,8-dione” and the claim also recites, “such as isomer 1 as described herein” [emphasis added] which is the narrower statement of the range/limitation. The term "such as" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate correction is required.
In another instance claim 12, page 24, recites “such” between the last two recited compounds. It is unclear why this term is used. Appropriate correction is required.
Allowable Subject Matter
Claims 2, 3 and 12 would be allowable once the rejections outlined above have been overcome.
Claims 1, 4-11, 13, 14 and 22-25 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims are directed to products of Formula II,
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as defined in claim 1. The closest prior art is US Patent Publication No.2009/0099186 A1, which teaches similar products of Formula
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and their method of use. The instant claims have a cyclobutyl group with mandatory substituents that are not covered or suggested by the prior art.
Therefore, claims 1, 4-11, 13, 14 and 22-25 are allowed.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMAL A SAEED whose telephone number is (571) 272-0705.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicants are 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, Adam C Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626
