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 .
Claims 1-20 are pending in this application.
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 1-20 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 following reasons apply:
Claims 1, 18-20 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the variables X2, X3, X4, X5 and X6 in formula (I) which is not defined within the claim.
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definitions for the variables X2, X3, X4, X5 and X6 where there are no variables X2, X3, X4, X5 and X6 in formula (I).
Claim 1 is vague and indefinite in that it is not known what is meant by “X2 to X6”, which is a range which does not particularly point out and distinctly claim the subject matter which applicants regard as the invention, i.e., it fails to indicate that which is embraced by the range. The definitions of each individual variable must be clearly set forth herein.
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by general formula (II), (IIa), and (IIb) in lines 11-12 on page 4 of the claims. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by general formula (I) in the last line of the claim. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claims 2-5 are vague and indefinite in that it is not known what is meant by general formula (I), (II), (IIa), (IIb), and (III) in the claims. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claims 6-8 are vague and indefinite in that it is not known what is meant by general formula (IIa) in the claims. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claims 9-11 and 17 are vague and indefinite in that it is not known what is meant by general formula (IV) in the claims. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claim 12 is vague and indefinite in that it is not known what is meant by general formula (II), (IIa), and (IIb) in the claim. A formula is not general when all of the variables are defined. Deletion of ''general'' is suggested.
Claim 13 recites the limitation "the solvent" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "R5R6R7C" in the definition of R3. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 is vague and indefinite in that it is does not end with a period.
608.01(m) Form of Claims [R - 3]
The claim or claims must commence on a separate sheet and should appear after the detailed description of the invention.< While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with "I (or we) claim", "The invention claimed is" (or the equivalent). If, at the time of allowance, the quoted terminology is not present, it is inserted by the clerk. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, >36 USPQ2d 1211< (D.D.C. 1995). ** >Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, 37 CFR 1.75(i).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 9-15 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Micuch et al., Tetrahedron. Micuch teaches the process of preparing a compound of formula (I) where X2 is CH3; X3 is H; X4 is CH3; X5 is H; X6 is CH3; R1 is CH3 and R2 is isopropyl where the compound of formula (IIb) is reacted with a compound of formula of III in the presence of MeMgBr and toluene at room temperature as set forth in examples 2d and 3d.
Claim(s) 1-4, 9-15 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanemasa et al., Tetrahedron Letters. Kanemasa teaches the process of preparing a compound of formula (I) where X2 is H; X3 is H; X4 is H; X5 is H; X6 is H; R1 is CH3 and R2 is CH3 or CH2CH3 where the compound of formula (IIb) is reacted with a compound of formula of III in the presence of EtMgBr and tetrahydrofuran at room temperature as set forth in reaction forming 5a, 5’a, 5b and 5’b.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/143,031 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the process preparing the compounds of formula (I) in 19/143,031 embraces in its entirety the process of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/716,645 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the process preparing the compounds of formula (I) in 18/716,645 embraces in its entirety the process of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624