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, 8-11, 21, 22, 28, 30-35, 39-42, 48-58 and 60 are currently pending in the instant application. Applicants have amended claims 2-5, 9-11, 21, 22, 28, 30-33, 35, 39, 40, 42, 48-53, 55, 56, 58 and 60 and canceled claims 6, 7, 12-20, 23-27, 29, 36-38, 43-47, 59 and 61 in an amendment filed on November 30, 2023. Claims 1-5, 8-11, 22, 28, 30-33, 49, 50, 52-58 and 60 are rejected, claim 21 is objected and claims 34, 35, 39, 40, 41, 42, 48 and 51 are considered allowable in this Office Action.
I. Priority
The instant application is a 371 of PCT/US2022/032000, filed on June 2, 2022 which claims benefit of US Provisional Applications 63/195,943, filed on June 2, 2021 and 63/288,313, filed on December 10, 2021.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 30, 2023, February 22, 2024 and March 17, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(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.
Claims 1-5, 8, 9, 11, 22, 28,30, 31, 32, 49, 50 and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem 67394638 (created November 30, 2012). The instant invention claims
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The PubChem 67394638 reference teaches the compound
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wherein R7 is F; R4-R6 are H; R3 is H; Ra1 and Ra2 are H; Rb1 and Rb2 are H; one of R1 and R2 is methyl and the other is cyclopropyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1, 9, 11, 22, 30, 31, 33, 49, 50 and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2171160-05-5 (entered in STN on January 29, 2018). The instant invention claims
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The RN 2171160-05-5 reference teaches the compound
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wherein R6 is F; R4-R5 and R7 are H; R3 is H; Ra1 and Ra2 combine to form a carbonyl; one of R1 and R2 combines with one of Rb1 and Rb2 to form pyrrolidine and the other R1 and R2 is methyl; the other Rb1 and Rb2 is H. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1, 3, 5, 8, 9, 11, 22, 28,30, 31, 32, 49, 50 and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Magne, et al. (Advanced Synthesis and Catalysis, 359 (22), and supporting information, 2017, 4036-4042). The instant invention claims
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The Magne, et al. reference teaches the compound
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(see compound 1f, page S13) wherein R5 is F; R4, R6 and R7 are H; R3 is H; Ra1 and Ra2 are H; Rb1 and Rb2 are H; one of R1 and R2 is C3 alkenyl and the other is C3 alkynyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1-5, 8, 9, 11, 22, 28,30, 31, 49, 50 and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 848764-74-9 (entered in STN on April 19, 2005). The instant invention claims
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The RN 848764-74-9 reference teaches the compound
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wherein R5 is F; R4, R6, R7 are H; R3 is H; Ra1 and Ra2 are H; Rb1 and Rb2 are H; one of R1 and R2 is methyl and the other is dioxane. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1-5, 8-11, 22, 28,30, 31, 49, 50 and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2107983-01-5 (entered in STN on August 3, 2017). The instant invention claims
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The RN 2107983-01-5 reference teaches the compound
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wherein R4 is F; R5, R6, R7 are H; R3 is H; Ra1 and Ra2 are H; Rb1 and Rb2 are H; one of R1 and R2 is methyl and the other is methyl substituted with CN. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 22 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 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, claim 22 recites the broad recitation R5 which is selected from the group consisting of H, F, Cl, OMe, OH and Me, and the claim also recites “optionally wherein R5 is OMe or F” 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. Applicants are suggested to amend claim 22 by deleting the narrower language or the broader language to overcome the rejection.
Claim 28 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 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, claim 22 recites the broad recitation L which is selected from the group consisting of
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, and the claim also recites “optionally wherein L is
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” 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. Applicants are suggested to amend claim 28 by deleting the narrower language or the broader language to overcome the rejection.
Claims 53-58 and 60 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. Specifically, the limitation in claim 53 which is drawn to “or at least one compound of any of compounds 1-218” do not clearly define the structure or name of each compound. The examiner must refer to the specification to find the structures of the various compounds being referred in claim 53. A claim referring to the specification is improper except in rare instances and fails to particularly point out the subject matter that applicant regards as the invention. Ex parte Fressola, 27 USPQ 2d 1608 (1993). To overcome the rejection, Applicants need to insert the structures of each ligand disclosed in claim 53.
V. Objections
Dependent Claim Objections
Dependent Claim 21 is objected as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
VI. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626