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 .
According to a preliminary amendment filed on Nov. 3, 2023, the applicants have canceled claims 14-18 and 20, amended claims 1-13 and 19 and furthermore, have added new claims 21-25.
Claims 1-13, 19 and 21-25 are pending in the application.
Claim Objections
Claim 21 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in alternate only. See MPEP § 608.01(n).
Claim Rejections - 35 USC § 112
5. 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, 2, 12 and 25 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 2 recite the broad recitation 3 to 12-membered saturated or unsaturated heterocyclyl for variables R21 and R22, and the claims also recite 3 to 6-membered heterocyclyl or a 5- to 6-membered heteroaryl which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In claim 12, the term - - - wherein the methods for treatment of a body of the animal by surgery or therapy and diagnostic methods practiced on the animal body are excluded - - - is vague and indefinite since the actual intent is not clear.
Claim 25 is directed to use of a compound of claim 1 for controlling a disease vector. However, it is not clear who is being treated, what is the disease and furthermore, the step of administration is also missing in the claim.
Claim Rejections - 35 USC § 102
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 24 is rejected under 35 U.S.C. 102(a) (1) as being clearly anticipated by Sakanishi (EP 3766881 A1, cited on applicant’s form 1449).
Sakakashi discloses heteroaryl pyrimidine compounds as pest control agent. The seed (see paragraph 0093 on pages 12-13) disclosed by Sakakashi clearly anticipates the instant claim.
Allowable Subject Matter
Claims 3-11, 13, 19 and 22-23 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.
The instant compounds of formula (I) are allowable over the prior art since they are neither disclosed nor obvious over the prior art. In the prior art, De Lombaert (WO 2002/028839 A1, cited on applicant’s form 1449) discloses Benzimidazole derivatives as CRF modulators which are related to the instant compounds. However, the most closely related compound (see compound 10f on page 75) disclosed by De Lombaert differs from the instant compounds by having all variables A1-A4 as Carbon atoms instead of atleast one of them as Nitrogen atom. Furthermore, there is no teaching, suggestion or motivation in the prior art to modify the compound of De Lombaert to prepare instant compounds.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621