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 1-6, 8-10 and 12-23 are pending in the application. Claim 1, 8-10, 12 and 15-23 are allowed. Claims 2-6, 13 and 14 are rejected.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on April 10th, 2026.
Response to Amendment / Argument
Applicant traverses the rejection of claims under 35 USC 112(b) based on amendment. Claim 14 is still considered in definite for the reason below.
All other objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Claim Rejections - 35 USC § 112(b)
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.
Claim 14 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.
Claim 14 refers to “the following table” but where the claim does not contain further text.
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 2 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. Parent claim 1 recites a crystalline compound characterized by one or more reflections. Dependent claim 2 recites a crystalline compound characterized by one or more reflections including each recited reflection of parent claim 1 and one additional reflection. First, the dependent claim recites that the crystalline form is characterized by “one or more” such that the explicit language of the dependent claim would suggest that it could be characterized only by the one additional reflection recited in the dependent claim and none of the reflections recited in the independent claim. Second, if the dependent claim need only be characterized by one or more peaks from a list including the same peaks of the independent claim, the dependent claim would cover each embodiment embraced by the independent claim and not provide a narrowing limitation. 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 3 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. Parent claim 1 recites a crystalline compound characterized by one or more reflections. Dependent claim 3 recites a crystalline compound characterized by one or more reflections including each recited reflection of parent claim 1 and five additional reflections. First, the dependent claim recites that the crystalline form is characterized by “one or more” such that the explicit language of the dependent claim would suggest that it could be characterized only by one or more of the additional reflections recited in the dependent claim and none of the reflections recited in the independent claim. Second, if the dependent claim need only be characterized by one or more peaks from a list including the same peaks of the independent claim, the dependent claim would cover each embodiment embraced by the independent claim and not provide a narrowing limitation. 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 4 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. Claim 4 recites that the crystalline compound is characterized by “one or more” reflections of parent claim 1. 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 5 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. Parent claim 1 recites a crystalline compound characterized by one or more reflections. Dependent claim 5 recites a crystalline compound characterized by one or more reflections including each recited reflection of parent claim 1 and one additional reflection. First, the dependent claim recites that the crystalline form is characterized by “one or more” such that the explicit language of the dependent claim would suggest that it could be characterized only by the one additional reflection recited in the dependent claim and none of the reflections recited in the independent claim. Second, if the dependent claim need only be characterized by one or more peaks from a list including the same peaks of the independent claim, the dependent claim would cover each embodiment embraced by the independent claim and not provide a narrowing limitation. 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 6 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. Parent claim 1 recites a crystalline compound characterized by one or more reflections. Dependent claim 6 recites a crystalline compound characterized by one or more reflections including each recited reflection of parent claim 1 and five additional reflections. First, the dependent claim recites that the crystalline form is characterized by “one or more” such that the explicit language of the dependent claim would suggest that it could be characterized only by one or more of the additional reflections recited in the dependent claim and none of the reflections recited in the independent claim. Second, if the dependent claim need only be characterized by one or more peaks from a list including the same peaks of the independent claim, the dependent claim would cover each embodiment embraced by the independent claim and not provide a narrowing limitation. 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 13 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. Grandparent claim 1 recites a crystalline compound characterized by one or more reflections. Parent claim 9 recites NMR properties and dependent claim 13 recites a crystalline compound characterized by one or more reflections including each recited reflection of grandparent claim 1 and five additional reflections. First, the dependent claim recites that the crystalline form is characterized by “one or more” such that the explicit language of the dependent claim would suggest that it could be characterized only by one or more of the additional reflections recited in the dependent claim and none of the reflections recited in the independent claim. Second, if the dependent claim need only be characterized by one or more peaks from a list including the same peaks of the independent claim, the dependent claim would cover each embodiment embraced by the parent claim 9 and not provide a narrowing limitation. 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
Claims 1, 8-10, 12 and 15-23 are allowed.
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
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