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 1-17 are pending in the application. Claims 1, 3-5, 8, 9, 12, 13 and 15-17 are rejected. Claim 2 is objected to. Claims 6, 7, 10, 11 and 14 are allowed.
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.
Claims 1, 3-5, 8, 9, 12, 13 and 15-17 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.
Claim 1 is rejected as indefinite since the definition of Y and Z provides for the option C(RA)2 but the provisions only refer to Z and Y being “CRA”. It is unclear if the provisions are missing a substituent and were intended to refer to “C(RA)2” or were intended to refer to some narrower embodiment where one instance of RA has a particular definition. Dependent claims 3-5 and 15-17 are rejected as indefinite for the same reason since they do not correct the issue.
Claim 4 is rejected as indefinite since the claim recites that the alkyl and alkoxy groups are optionally substituted by halogen but also that the definition of R7 is inclusive of alkyl groups. Parent claim 1 defines R7 as the optional substituent of R6. It is therefore unclear which aspect is controlling the scope of optional substituents for R6 in claim 4.
Claim 5 is rejected as indefinite since it defines variables not required by any position in claim 1.
Claim 8 is rejected as indefinite since the claim recites that the alkyl and alkoxy groups are optionally substituted by halogen but also that the definition of R7 is inclusive of alkyl groups. Parent claim 6 defines R7 as the optional substituent of R6. It is therefore unclear which aspect is controlling the scope of optional substituents for R6 in claim 6.
Claim 9 is rejected as indefinite since it defines variables not required by any position in claim 6.
Claim 12 is rejected as indefinite since the claim recites that the alkyl and alkoxy groups are optionally substituted by halogen but also that the definition of R7 is inclusive of alkyl groups. Parent claim 10 defines R7 as the optional substituent of R6. It is therefore unclear which aspect is controlling the scope of optional substituents for R6 in claim 12.
Claim 13 is rejected as indefinite since it defines variables not required by any position in claim 10.
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 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. Claim 5 limits variables not required by claim 1 and therefore claim 5 would appear to embrace every compound embraced by its parent claim. 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 9 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 9 limits variables not required by claim 6 and therefore claim 9 would appear to embrace every compound embraced by its parent claim. 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. Claim 13 limits variables not required by claim 10 and therefore claim 13 would appear to embrace every compound embraced by its parent claim. 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 6, 7, 10, 11 and 14 are allowed.
Claim 2 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.
Closest Prior Art
The closest prior art appears to be U.S. Patent PGPub No. 2024/0124465 A1 by Min et al., which discloses compounds of the following general formula:
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142
190
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.
As an example, the prior art teaches the following structure on page 223:
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258
533
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There are several differences relative to the instant claims. Most notably, the prior art teaches the presence of a piperidine ring at the corresponding position to the instantly required azetidine ring. The prior art generic teachings (page 2), however, do not teach that the corresponding position should be a non-condensed azetidine. Even if there were a motivation to use a non-condensed azetidine, the modified structure would still not correspond to the instant claims since the instant variable R5 (corresponding to the phenyl ring in the prior art structure) does not permit substitution by an amine substituent.
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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