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 .
Claim Objections
Claims 38, 41, 45 and 63-65 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim may not depend from another multiple dependent claim. See MPEP § 608.01(n). Accordingly, claims 38, 41, 45 and 63-65 have not been further treated on the merits.
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 1, 2, 5, 6, 8, 21 and 22 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.
The terms insensitive and sensitive in the limitations “…impact- or detonation-insensitive…” and “…impact- or detonation sensitive…” are relative terms which render the claims indefinite. The terms are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
What is or is not “…impact- or detonation-insensitive…”, or “…impact- or detonation-sensitive…”, would appear to be wholly subjective characterizations and wholly dependent upon subjective criteria. How is the public to determine the metes and bounds of the claims without some objective standard with respect to the terms insensitive and sensitive?
Furthermore, summarizing the discussion at MPEP 2173.05(g), note that when a claim merely recites a description of a problem to be solved, or a function or result achieved by the invention (“…impact- or detonation-insensitive particles…”), and this use of functional language fails to provide a clear-cut indication of the scope of the claimed subject matter embraced by the claim, then the claim is indefinite. In the instant case, it is noteworthy that inventor has been painstaking when reciting what is already known - i.e. solid, crystalline 2-bromo-1-(3,3-dinitroazetidin-1-yl)ethenone (ABDNAZ), diagramed as instant Formula I, and its pharmaceutically acceptable salts - and then uses conveniently functional language at the exact point of novelty: “…impact- or detonation-insensitive particles…”.
Clarification is in order.
Claim 2 is included in this rejection because the recitation “…at least one of (i)-(iv) applies…” renders (i)-(iii) indefinite since they are silent with respect to the “…impact- or detonation-insensitive particles…” limitation. (Only (iv) is drawn to this limitation.)
Claim 5 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.
In part (iv), the term substantially is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Clarification is in order.
Claims 7, 9, 26, 29, 32, 38, 41, 45 and 62-65 are also 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.
The claims all depend, or ultimately depend, upon an indefinite claim yet do not clarify the indefiniteness. Claims 7, 9, 26, 29, 32, 38, 41, 45 and 62-65 are also, therefore, indefinite.
Allowable Subject Matter
Claim 61 is 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 following is a statement of reasons for the indication of allowable subject matter:
The closest prior art appears to be US 8,471,041 B2, cited in the IDS, which teaches a method of synthesizing ABDNAZ, obtained in high yield and purity as clear, colorless or white crystals, which eliminates the handling of solid explosive intermediates that are impact and friction sensitive (abstract; column 2, line 50; column 6, line 59; column 7, line 64; Examples beginning at column 10). However, the reference does not, teach, show, suggest or make obvious the instant solid, crystalline ABDNAZ, or its pharmaceutically acceptable salts, which is impact insensitive in accordance with the objective standard determination criteria recited in the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 9/28/2025