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
This application, filed 12/19/2023 is a National Stage entry of PCT/CN2022/101942, International Filing Date: 06/28/2022. PCT/CN2022/101942 claims foreign priority to PCT/CN2021/103244, filed 06/29/2021; and foreign priority to PCT/CN2022/091064, filed 05/06/2022. Certified copies of the foreign priority applications are of record.
Status of Claims
Claims 1-17 are currently pending.
Claims 1-17 were examined and are rejected.
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 1-17 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.
Claims 1, 11, and 14 recite “R1 is H, R2 is F and R3 is H or CH3, R1 is H, CH3 or F, R2 is OCH3 and R3 is H and…”. The presence of “and” instead “or” at each recitation for all of R1, R2 and R3 renders the claim indefinite, because it is uncertain which recitations are required or alternative. Claims 2-10, 12-13, and 15-17 are similarly rejected for depending on the above independent claims.
Claims 3 and 8 recite “selected from the group comprising…”. This language renders the claim indefinite because “selected from the group” implies selection from a closed, defined list while “comprising” is open-ended and is not exclusive. See MPEP 2173.05(h)(I): A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. The metes and bounds as such aren’t clear.
Claims 5 and 7 both recite “preferably”; this renders the claims indefinite, as it is uncertain if the claim scope is limited to the narrower limitations following “preferably”.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the claimed methods of preparing a compound of formula (I) are not taught or suggested by the prior art. Kesteleyn et. al., WO 2016180696 A1 (cited in the IDS) represents the closest prior art. Kesteleyn teaches processes of preparing compounds of formula (I), wherein formula (I) is structurally the same as formula (I) of the instant claims. While some of the processes taught by Kesteleyn share some of the same reagents as the instant claims, Kesteleyn doesn’t teach or suggest the step of claim 1 wherein 3-methoxy-5-methylsulfonyl-aniline is reacted with a compound of formula (II), reacting a compound of formula (XXVII) with 3-methoxy-5-methylsulfonyl-aniline in the presence of a phase transfer catalyst as recited by instant claim 11, or hydrogenating a compound of formula (III) as recited by instant claim 14.
Information Disclosure Statement
The IDS filed on 12/19/23 has been considered.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH PIHONAK whose telephone number is (571)270-7710. The examiner can normally be reached Monday-Friday 9:00-5:30 EST.
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SARAH . PIHONAK
Primary Examiner
Art Unit 1627
/SARAH PIHONAK/ Primary Examiner, Art Unit 1627
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