DETAILED ACTION
This action is in response to Applicant’s submission dated April 12, 2024, in which Applicant amended claims 3-4, 14-15, 18, 20-21, 23-24, 29, 31, 33-34, 37, 41, and 43-45, and canceled claims 5-13, 16-17, 19, 22, 25-26, 28, 30, 32, 35, 38-40, and 46-49.
Information Disclosure Statement
The references contained in the IDS dated February 6, 2026 and October 30, 2023 are made of record.
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 .
Specification
The Specification is objected to because a Brief Description of the Drawings section is lacking for Figures 1a, 1b, 1c, 1d, 2, 3, 4a, 4b, 4c, 5, 6a, 6b, and 6c.
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(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.
Claims 2, 3, 20-21, 24, 29, and 33 are rejected under 35 U.S.C. 112(b) and/or (d),.
Claim 2 is rejected under 35 U.S.C. 112(d) because it is of the same scope and therefore redundant of claim 1. Examiner recommends cancelation of claim 2.
Parent claim 3 is rejected under 35 U.S.C. 112(b) because it recites “and/or” in step (a) for compounds 10 and 10A and dependent claim 4 recites “and”, so the scope of claim 4 is narrower than parent claim 3.
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, 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).
In the present instance, claim 20 is rejected under 35 U.S.C. 112(b) because it recites the broad recitation salt of (10) and/or a salt of (10A), and the claim also recites preferably a hydrochloride salt of (10) and/or a hydrochloride salt of (10A), which is the narrower statement of the range/limitation. Further, it recites preferably the dihydrochloride salt (10C) and/or the dihydrochloride salt (10D). Correction is required.
Similarly, claim 21 is rejected under 35 U.S.C. 112(b) because it recites broader base and preferably a tertiary amine, which is narrower and also more preferably pyridine, which is the narrowest. Correction is required.
Further, claim 24 is rejected under 35 U.S.C. 112(b) because it recites the broader NaOH, then preferably 30% aq. NaOH solution, which is narrower. Correction is required.
Claim 29(b) is rejected under 35 U.S.C. 112(b) because the 1 is missing from the beginning of (7). Correction is required.
Finally, claim 33 is rejected under 35 U.S.C. 112(b) because it recites metal catalyst, followed by preferably the metal catalyst is palladium (II) acetate, which is narrower.
Regarding element (b) of claim 33 is rejected under 35 U.S.C. 112(b) because the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Objections
Claims 4 and 34 are objected to as being dependent upon rejected dependent claims 3 and 33, respectively, but would be allowable if rewritten in independent form including all of the limitations of the base claims and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application is assigned is 571-273-8300.
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/ERICH A LEESER/Primary Examiner, Art Unit 1622
United States Patent and Trademark Office
Tel. No.: (571) 272-9932