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 .
Priority
This Application is a National Stage CON of PCT/CN2023/114140 filed on August 22, 2023. Acknowledgment is made of applicant’s claim for foreign priority to a People’s Republic of China Patent, under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. CN202211124671X, filed on September 15, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 29, 2024 is acknowledged and has been considered.
Status of the Claims
Acknowledgement is made of claims in the filed Application 18/676,514 with original claims 1-5. No amendments, cancellations or additions have been made to the originally-filed claims.
Thus, claims 1-5 represent all the claims currently under consideration
Claim Objections
Claim 1 is objected to because of the following informalities: The chemical formular NO2 is written as N02 - with a zero, instead of NO2 with a letter O. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 4 and 5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter, process, machine, manufacture or composition of matter, because of the following; claim 4 recites, “Use of the chiral amine-squaramide compound of formula (I)” and claim 5 recites, “The use according to claim 4, wherein the..,” (emphasis added).
A use claim is not considered a method for lack of distinct steps. Additionally, per MPEP § 2173.05(q), “Use” claims that do not purport to claim a process, machine, manufacture or composition of matter fail to comply with 35 U.S.C 101. In re Moreton, 288 F.2d 708, 129 USPQ 227, 228 (CCPA 1961), (“one cannot claim a new use per se, because it not among the categories of patentable invention specified in 35 U.S.C § 101”). Rather, the claims as presented can be drawn to any of these two distinct categories of invention; method or composition of matter. Accordingly, to overcome this rejection, Applicant would need to make the necessary amendments.
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 4 and 5 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.
Regarding instant claims 4 and 5, the phrases “Use of” (claim 4), and “The use” (claim 5), (emphasis added), as recited are ambiguous describing a compound and possibly method of use. The recited “use” claims lack active positive steps. Per the MPEP § 2173.05(q), attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). Accordingly, Applicant is requested to clearly distinguish a category of invention under 35 U.S.C. 101 for each claim.
Allowed Claims
Instant claims 1, 2 and 3 are free of prior art. Thus, the claims are allowed.
The following is Examiners statement for reasons for allowance: The closest prior art appears to be inventor’s prior work; Lin et al. 2020 (Lin Xufeng, Han Zhao and Gu Haorui, Foreign Patent Application: CN 111116474A, Published on May 08, 2020, machine translation thereof, cited in IDS), hereon after, Lin.
Regarding claim1: Lin teaches a broad genus compounds of formula (I), a chiral amine-urea compound based on a spiro-dihydroindene skeleton, a method of preparation and application thereof as shown below.
Instant Application (claim 1)
Lin et al. 2020 (CN111116474A) (claim 1)
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wherein,
X is H, CH3;
R1, R6, R3, R4 are H;
R2, R5 are H or CH3;
a moiety
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R9 phenyl, substituted phenyl, phenylmethylene or phenylethylidene, the substituted phenyl is 1-5 membered replaced with substituents selected from F, CI, Br, I, NO2, CN, C1-4 alkyl, C1-4 perfluoroalkyl, C1-4 alkoxy, C1-4 perfluoroalkoxy,
an enantiomer thereof, a racemate thereof or a diastereomer thereof.
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wherein,
x is H or C1-10 An alkyl group;
y is O or S;
R1、R6 are respectively and independently H, F, Cl, Br, I, C1-10Alkyl radical, C1-10Perfluoroalkyl group, C1-4Alkoxy radical, C1-4 Perfluoroalkoxy, C3-6Cycloalkyl radical, C6-14 Aryloxy, 5-12 membered heteroaryloxy, C6-14Arylmethyleneoxy, 5-12 heteroarylmethyleneoxy, C6-14An aryl group, a 5-12 heteroaryl group,
said C3-6Cycloalkyl radical, C6-14Aryloxy, 5-12 membered heteroaryloxy, C6-14Arylmethyleneoxy, 5-12 heteroarylmethyleneoxy, C6-14Aryl, 5-12 heteroaryl optionally substituted with 1,2, 3 or 4RaSubstitution;
R2、R3、R4、R5are respectively and independently H, F, Cl, Br, I, C1-10Alkyl radical, C1-10Perfluoroalkyl group, C1-4Alkoxy radical, C1-4Perfluoroalkoxy, C3-6Cycloalkyl radical, C6-14Aryloxy, 5-12 membered heteroaryloxy, C6-14Arylmethyleneoxy, 5-12 heteroarylmethyleneoxy, C6-14An aryl group, a 5-12 heteroaryl group,
said C3-6Cycloalkyl radical, C6-14Aryloxy, 5-12 membered heteroaryloxy, C6-14Arylmethyleneoxy, 5-12 heteroarylmethyleneoxy, C6-14 Aryl, 5-12 heteroaryl optionally substituted with 1,2, 3 or 4RbSubstitution;
R7、R8are each independently H, C1-10Alkyl radical, C1-10 Perfluoroalkyl group, C6-14Aryl radical, C6-14Arylmethylene, C6-14 An arylethylene group, a 5-12 heteroarylmethylene group,
said C6-14Aryl radical, C6-14Arylmethylene, C6-14 Arylethylene, 5-12 heteroarylmethylene optionally substituted with 1,2, 3 or 4RcSubstitution;
or, R7And R8Together with the carbon atom to which they are attached form C3-10 Cycloalkyl, 5-12 membered heterocyclyl,
said C3-10 Cycloalkyl, 5-12 membered heterocyclyl is optionally substituted with 1,2, 3 or 4RcSubstitution;
R9is H, C1-10Alkyl radical, C1-10Perfluoroalkyl group, C6-14Aryl radical, C6-14Arylmethylene, C6-14An arylethylene group, a 5-12 heteroarylmethylene group,
said C6-14Aryl radical, C6-14Arylmethylene, C6-14Arylethylene, 5-12 heteroarylmethylene optionally substituted with 1,2, 3 or 4RdSubstitution;
Ra、Rb、Rc、Rd are respectively F, Cl, Br, I and NO independently2、CN、C1-4Alkyl radical, C1-4Perfluoroalkyl group, C1-4Alkoxy radical, C1-4Perfluoroalkoxy, -CH2O-、C3-6Cycloalkyl radical, C6-14Aryl radical, C6-14Aryloxy, 5-14 membered heteroaryl
The instant invention differs from Lin in this manner; The genus compound of formula (I) in Lin’s CN111116474A contained an amine-urea/ thiourea moiety,
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where Y is O or S, while the instant claimed invention contains an amine squaramide
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at a similar position.
While Lin’s genus and the instant claimed invention both have the spirobiindane skeleton, they differ in that Lin discloses compounds containing urea / thiourea moieties. Prior art does not teach or suggest the urea or thiourea pharmacophore can be replaced or substituted with a squaramide moiety. Thus, the instantly claimed invention is not taught, suggested or anticipated by the closest prior art of record. Additionally, the urea/ thiourea moiety and the squaramide moiety are not functionally equivalent or obviously substitutable groups. Therefore prior art does not render obvious the instant invention.
Considering other close prior art from different inventors, Xu and Qi, 2021 (Xu Changming and Qi Yinsheng, CN 112916042A, Published on June 8, 2021 and the machine translation thereof) hereon after Xu. Xu teaches chiral amine compounds based on spirobiindane skeleton and the preparation method thereof and discloses genus of compound (I) as shown below, which differs from the instantly claimed invention in that Xu’s genus compounds have a chiral quaternary ammonium salt.
While Xu teaches a quaternary ammonium salt, he does not disclose or suggest replacing the ammonium quaternary salt with a squaramide moiety.
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Xu and Qi, 2021
(CN 112916042A)
A compound of formula (i): R1、R2、R3、R4、R5 And R6 Each independently selected from hydrogen, halogen, aryl, substituted aryl, heteroaryl, substituted heteroaryl, silicon base, substituted silicon base, C1-C12Alkyl, fluoroalkyl, C3-C8Cycloalkyl, alkyl with functional group, C1-C4Alkoxy, fluoroalkoxy, aryloxy, substituted aryloxy, heteroaryloxy, substituted heteroaryloxy, nitro, cyano or acyl of (a);
R7and R8Are respectively and independently selected from hydrogen and C1-C12Alkyl, fluoroalkyl, C3-C8Cycloalkyl, alkyl with functional group, aryl, substituted aryl, heteroaryl or substituted heteroaryl;
X-selected from hydroxide, halogen anion, acetate, triflate, methanesulfonate, p-toluenesulfonate, phenoxide or alkoxide.
Additionally, examples in the instant invention are distinctly different from those disclosed by Lin and disclosed by Xu as shown in the sample examples below.
Instant Application
Lin (CN111116474A)
Xu (CN 112916042A)
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[0050]
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[0037]
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[0053]
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[0056]
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[0038]
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[0074]
Accordingly, while the cited prior art references disclose compounds with a spirobiindane skeleton, there appears to be no references that teach, suggest, or anticipate the instantly claimed invention. Furthermore, prior art discloses compounds with the urea/thiourea or ammonium salt, which are not substitutable or functional equivalents of a squaramide moiety. Thus the claimed invention, instant claim 1 is novel and allowed.
Regarding instant claims 2 and 3; The instant claims recite further limitations on the compound of formula (I); an enantiomer, a racemate or diastereomer thereof wherein the chiral amine-squaramide of formula (I) is as illustrated in the claim (instant claim 2); and a method of preparing the chiral amine squaramide of formula (I) comprising of the following step: allowing a compound of formula (II), as recited and shown, and a compound of formula (II-e) to have an additional reaction in an organic solvent to obtain a compound of formula (I) (instant claim 3). The instant limitations in claims 2 and 3 are novel for at least the reasons discussed above regarding instant claim 1, because the prior art on record does not teach, suggest, anticipate or render obvious the additional claimed limitations.
Accordingly, instant claims 2, reciting the chiral amine compound of formula (I), an enantiomer thereof, a racemate thereof or a diastereomer thereof and as further illustrated in the claim is allowed. Similarly, instant claim 3, a limitation on a method of preparing the chiral amine squaramide of formula (I) comprising of the recited steps
is allowed.
Conclusion
Thus, Claims 4 and 5 are rejected.
Claims 1-3 are allowed.
Communication
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/P.O./Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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