DETAILED ACTION
A restriction requirement Office action was mailed 6 February 2026 (“Office Action”).
Applicant’s reply to the Office Action was received 6 April 2026 (“Reply”).
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
Status of the Claims
The listing of claims filed 30 November 2023 via preliminary amendment has been examined.
Claims 1–26 are pending. Claims 10, 11, 16–18, and 22 are currently amended.
Priority
The instant application was filed 30 November 2023; is a national stage application of PCT/IB2022/055195, filed 3 June 2022, and claims priority to India 202111024851, filed 4 June 2021. Applicant’s claim for foreign priority is acknowledged, and a copy of the priority document has been received.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 30 November 2023 is acknowledged and has been considered.
Reply to Restriction Requirement and Election of Species
Applicant’s election with traverse of Group I in the Reply is acknowledged.
Applicant’s election of species with traverse in the Reply is acknowledged.
The restriction requirement and election of species requirements are withdrawn.
Objections to the Specification
The title of the invention is objected to because it refers to the purported merits of the invention (“Novel”).
Appropriate correction is required.
For guidelines for the preparation of patent titles, see MPEP § 606 (Explaining: The word novel should not be included in the title of the invention).
Objections to the Specification
The abstract of the disclosure is objected to because it recites: (i) language referring to the purported merits (“novel”); (ii) legal phraseology (“comprises”); (iii) phrases that can be implied (“The present invention relates to” and “Further, the present invention also describes”); and (iv) multiple paragraphs.
Appropriate correction is required.
For guidelines for the preparation of patent abstracts, see MPEP § 608.01(b) (Explaining: The abstract should be in narrative form and avoid legal phraseology (e.g., means, said), terms referring to purported merits of the invention (e.g., new, novel), and phrases that can be implied (e.g., The disclosure concerns, The disclosure defined by this invention). The language should be clear and concise, and not repeat information given in the title. It should not compare the invention with the prior art. The abstract is generally limited to a single paragraph within the range of 50 to 150 words in length.).
Claim Objections
Claims 18 and 22 are objected to for reciting “the said process” because the word “said” is redundant of “the.”
Claim 26 is objected to for missing a status identifier.
Appropriate correction is required.
For guidance on claim amendments, see MPEP § 714(II)(C) (“After each claim number, the status identifier of the claim must be presented in a parenthetical expression.”).
Claim Rejections - 35 U.S.C. § 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.
Claims 3, 11, 16–18, 20, and 22 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
(i) Claim 3 recites: “The process as claimed in claim 2, wherein said process is carried out in the presence of a suitable halogenating agent and a suitable base.”
The term “said process” renders the claim indefinite because it is unclear which step or steps in claims 1 and/or 2 the halogenating agent and base are utilized in.
Claims 11, 16, and 17 depend from claim 3 and incorporate without curing the ambiguity.
Examiner recommends amending the claim to recite “the step of reacting the compound of formula (IV) with a compound of formula (III) and a suitable amine of formula (RaRbNH) or with a compound of formula (IIIa)” if claim 3 was intended to modify claim 2; or recite, for example, “step a)” if claim 3 was intended to modify a step in claim 1 [see, e.g., claim 5, which recites: “The process as claimed in claim 1, wherein step-d) is carried out . . .”].
(ii) Claim 18 recites: “The process as claimed in claim 1, wherein the said process is carried out in the presence of a suitable solvent.”
The term “said process” renders the claim indefinite because it is unclear which step or steps in claim 1 the solvent is utilized in.
(iii) Claim 20 recites, “the hydrolysis step.”
A claim introducing subject matter for the first time typically recites the indefinite article “a” preceding the subject matter. The same claim or a subsequent claim referring back to the same subject matter typically recites the definite article “the” preceding the subject matter. Such formal claim drafting provides proper antecedent basis for the claimed subject matter and avoids ambiguity, therefore improving the clarity of the claims.
There is insufficient antecedent basis for using definite article “the” in “the hydrolysis step” because there is no preceding recitation of indefinite article “a hydrolysis step.” Thus, it is unclear which step in claim 1 that claim 20 is modifying.
(iv) Claim 22 recites: “The process as claimed in claim 1, wherein the said process is carried out in the presence of a suitable catalyst.”
The term “said process” renders the claim indefinite because it is unclear which step or steps in claim 1 the catalyst is utilized in.
Appropriate correction is required.
Allowable Subject Matter
Claims 1, 2, 4–10, 12–15, 19, 21, and 23–25 are allowed.
The claims are directed to: a compound of formula (Z) [claim 24], a process of making and using a compound of formula (IV) [claims 1, 2, 4, and 8–23]; a process of making a compound of formula (IV) [claim 6]; a process of making a compound of formula (I) [claim 7].
The compounds and methods of making the compounds noted in the paragraph above are novel and non-obvious. The closest prior art is WO 2019/150220 [IDS], which discloses: a process of making a compound of formula (VI) from a compound of formula (VIII) as recited in instant claim 1, step a) (p.84, Ex. 10, step 1); a conversion of a compound of formula (VII) in instant claim 1 to a related oxetane-substituted compound (p.78, Ex.5, step 1); and an oxidation of a thietane to a dioxidothietane-substituted compound (p.76, Ex.2, step 3). But the reference does not disclose the claimed process of converting a compound of formula (VII) to a compound of formula (VIII) to a compound of formula (VI) as recited in the instant claims; or a compound of formula (Z).
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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/J.M.N./Patent Examiner, Art Unit 1623 /GEORGE W KOSTURKO/ Primary Examiner, Art Unit 1621
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