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 17-36 are pending in the application. Claims 18 and 35 are rejected. Claim 36 is objected to. Claims 17 and 19-34 are allowed.
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/CN2022/098750, filed June 14th, 2022, which claims priority under 35 U.S.C. 119(a-d) to CN202110661381.8, CN202111341577.5, CN202210421052.0, and CN202210626997.6, filed June 15th, 2021, November 12th, 2021, April 20th, 2022 and June 2nd, 2022.
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on January 22nd, 2024.
Claim Objections
The phrase “selected from” should be added before the colon in line 2 of claim 36.
Claim 36 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 30. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 36 only recites the stereochemical permutations of the structures recited in claim 30 such that any embodiment embraced by claim 30 is also embraced by claim 36 and vice versa.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Every structure falling with the scope of parent claim 17 falls within the scope of dependent claim 18. For instance, the first two structures of claim 18 represent the only two alternatives for formula (II), i.e. that R1 is one of two options. The final four structures of claim 18 similarly represent the four permutations between the definition of R1 and a stereocenter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 35 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Every structure falling with the scope of parent claim 34 falls within the scope of dependent claim 35. For instance, the first two structures of claim 35 represent the only two alternatives for formula (I), i.e. that R1 is one of two options. The final four structures of claim 35 similarly represent the four permutations between the definition of R1 and a stereocenter. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claim 17 and 19-34 are allowed.
The closest prior art is WO 2016/001631 A1 that teaches compounds of the following general formula:
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The prior art compounds contain a carbonyl between the two rings whereas the corresponding carbon of the instant formula is substituted by R5 and R6 that are not permitted to form a carbonyl. The broadest disclosure only provides for a carbonyl at the corresponding position, and the prior art provides insufficient guidance or motivation regarding why the broadest disclosure should be modified to arrive at any compounds instantly claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626