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 .
Priority
The present Application, filed December 1, 2023, is a national stage entry under 35 U.S.C. § 371 of International Patent Application No. PCT/CN2022/096370, filed May 31, 2022, which claims priority to Chinese Patent Application No. CN20210612811, filed June 2, 2021.
Status of the Claims
In the amendment filed December 1, 2023, and new claims 11-14 are added and claims 3-6 and 8-10 are amended. Claims 1-14 are currently pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 1, 2023 is acknowledged.
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.
Claims 3-6 and 11-14 are indefinite:
Claims 3-6 and 11-14 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.
In particular, each of these claims, depending from claim 1 (claims 3-6) or from claim 2 (claims 11-14), recites a narrowed Markush group for several variable chemical moieties, and then recites even more narrowed Markush groups for the same variables, describing the narrower groups as being preferable or more preferable. For example, claim 3 recites the compound of claim 1 wherein R1, R4, R5, R6, and R7 are selected from a smaller set of chemical functional groups than that of claim 1, but also recites “preferably” an even smaller Markush group, “more preferably” a still smaller Markush group, and so on. Claims 4-6 and 11-14 are similar. Description of examples or preferences in this manner should be set forth in the specification rather than the claims because, when recited in the claims, examples and preferences create confusion over the intended claim scope. See MPEP § 2173.05(d) and cases cited therein.
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 1-2, 4-6, and 12-14 are anticipated by Matsumoto:
Claims 1-2, 4-6, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the non-patent publication, Reaction of pyridinium dicyanomethylide with diphenylcyclopropenone and diphenylcyclopropenethione, Chem. Comm., 24, pgs. 1045-1046 (1976) by Matsumoto et al. (hereinafter, “Matsumoto”).
Claim 1 recites a compound of formula I
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142
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where the variable moieties are as defined.
Matsumoto 1,3-dipolar cycloaddition of pyidinium dicyanomethylide to diphenycyclopropenone to produce 2H-quinolizin-2-one (compound 4):
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89
92
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Compound 4 of Matsumoto is a compound of instant claim 1, formula 1, where X is CR4; Y is CR5; Z is CR6; W is CR7; R4-R7 is each hydrogen; R1 is cyano; and R2 and R3 are each phenyl (6-membered aryl).
With respect to claim 2, compound 4 of Matsumoto is a compound of instant formula III, where R1-R7 are as defined above. With respect to claim 4, as noted above, instant R4-R6 are hydrogen in compound 4 of Matsumoto. With respect to claims 5 and 6, as noted above, instant R2 and R3 are each phenyl in compound 4 of Matsumoto.
Claims 12-14 combine the limitations of claims 4-6, respectively, with the limitations of claim 2. As noted above, compound 4 of Matsumoto is a compound of claim 2, and also satisfies the limitations of claims 4-6. As such, compound 4 of Matsumoto anticipates claims 12-14, as well.
Claims 1-6 and 11-14 are anticipated by Yang:
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the non-patent publication, Controllable synthesis of 3-iodo-2H-quinolizin-2-ones and 1,3-diiodo-2H-quinolizin-2-ones via electrophilic cyclization of azacyclic ynones, Chem. Comm., 55, pgs. 12607-12610 (2019) by Yang et al. (hereinafter, “Yang”).
Yang teaches electrophilic annulation of azacyclic ynones to produce various 3-iodo-2H-quinolizin-2-ones and 1,3-diiodo-2H-quinolizin-2-ones (Abstract) as well as further transformations of these products (e.g. pg. 12609, Scheme 2). As one further transformation produce, Yang discloses compound 5, obtained via a Suzuki reaction of the 1,3-diiodo-2H-quinolizin-2-one, compound 3a:
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84
77
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Yang compound 5 is a compound of instant claim 1 where X is CR4; Y is CR5; Z is CR6; W is CR7; R4-R7 is each hydrogen; and each of R1-R3 is phenyl (6-membered aryl).
With respect to claim 2, compound 5 of Yang is a compound of instant formula III, where R1-R7 are as defined above. With respect to claim 3, as noted, instant R1 is phenyl (6-membered aryl) and instant R4-R7 are each hydrogen in compound 5 of Yang. With respect to claim 4, as noted above, instant R4-R6 are hydrogen in compound 5 of Yang. With respect to claims 5 and 6, as noted above, instant R2 and R3 are each phenyl in compound 5 of Yang.
Claims 11-14 combine the limitations of claims 3-6, respectively, with the limitations of claim 2. As noted above, compound 5 of Yang is a compound of claim 2, and also satisfies the limitations of claims 3-6. As such, compound 5 of Yang anticipates claims 11-14, as well.
Allowable Subject Matter
Claims 7-10 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.
Conclusion
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/ALEXANDER K. SHOWALTER/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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