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
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election of group I, drawn to compounds of the formula I and method of making thereof and elected species:
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in the reply filed on 6/26/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
The examiner notes that claims 9-14 have been amended to represent statutory method of use claims and these claims remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1-8 is contained herein.
Priority
The present application is a continuation of PCT application No. PCT/CN2022/072519, filed on January 18, 2022, which claims the priority of China Patent Application No. 202111293452.X, filed on November 03, 2021.
However, a certified English version of the foreign priority document was not received.
Failure to provide a certified translation may result in no benefit being accorded for the non-English application (i.e., the examiner respectfully requests submission of the appropriate English translated version of the foreign priority document if benefit is sought). See MPEP 213.04.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
In the preamble of claim 1, “A compound or pharmaceutically acceptable salts thereof” should be written as “A compound or a pharmaceutically acceptable salt thereof”. Thus the claim and claims dependent on it are objected to.
In claim 2 and other claims that have the word “The” (see below):
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should be written as “the” since claims should only begin with a capital letter and end with a period. See MPEP 608.01(m). Correction is required.
In claim 5, the preamble should embrace proper Markush language such as “wherein the compound is selected from the group consisting of..” or similar language. Additionally commas should be inserted between each compound, the word “and” inserted before the last compound, and a period inserted at the end of the claim.
The examiner recommends that claims 6-8 (drawn to method claims) be rewritten in proper format usually found in patented claims (e.g. A process of preparing a compound of formula A comprising the steps, 1) reacting compound B with compound C under conditions, etc.) instead of the current format to complete clarity. Correction is required.
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 1-8 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 pre-AIA the applicant regards as the invention.
In the instant claim 1, the scope of “useful as SRSF6..” is indefinite with respect to “useful” as the metes and bounds of this term is not clear. Specification does not address what Applicants intend by this language as well. Thus the scope of this claim and claims dependent on it are rejected. Correction is required.
In claim 1, “C1-C3 alkenyl group” is rendered indefinite since a minimum of 2 carbons are needed to make an alkene chain (e.g., C=C).
In claim 1 and other claims language such as “the substituted amino group is replaced..” is unclear. What does Applicant intend by replacing the latter group (e.g. replacing the entire amino group, substituting said group with the further recited embodiments or something else?). The examiner will assume all reasonable possibilities in terms of applying art.
In claim 2 and other claims, groups such as “hyperpiperazinyl”, “multi-substituted”, “high-piperazinyl” are not recognized by those skilled in the art and the specification does not allude to the chemical entities of these species. Thus the groups are unclear and indefinite.
Claim 3 recites R2 may be “N-phenylpiperazinyl” but then later states in the claim that this definition is further defined to different groups (e.g. benzyl substituted piperazinyl, etc.) which are not synonymous with each other that makes the claims indefinite since there was no language prior that the original embodiment could be further modified. Same claim recites “N-benzyl hyperpiperazinyl” which was not previously recited for this variable. See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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.
Claims 7-8 are 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. Claims 7-8 do not further limit claim 6 with respect to “the solvent”, “the reaction temperature”, “the base”, etc. since there was no prior mention of these embodiments in claim 6.
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 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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over compounds with the following registry numbers associated with STNext in REGISTRY:
RN 1025965-40-5, RN 1026150-19-5, and RN 1026235-54-0 REGISTRY.
STNext in REGISTRY teaches the following compounds and their relative information:
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,
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The compounds have the limitation wherein X = -OH, R1 = benzyloxy, and R2 = substituted amino. Thus the claims are anticipated.
Conclusion
Claims 1-8 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 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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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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