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 1-20 are pending and are now evaluated on its merits.
Priority
This application is a continuation in part application which claims domestic benefit to U.S. provisional application 63/238,754, with a filling date of 08/30/2021.
Information Disclosure Statement
The information disclosure statement (IDS) dated 02/28/2024 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits.
Claim Objections
Claims 9 and 19 are objected to because of the following informalities: The compound
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of claims 9 and 19 is not fully outlined in relation to all the compounds of the claims. Appropriate 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 and 16-20 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 claims 1 and 16, the phrase "R5 is hydrogen or C1-C4 alkyl" renders the claim indefinite because it is unclear whether the limitation of R5 is an embodiment of the parent compound. R5 is not illustrated on the parent compound nor a limitation correspondent to W, R and R1.
Claims 2-8 and 17-20 are similarly indefinite as being dependent on claims 1 and 16, thus having the same limitation without further limiting.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Veselinovic et al. Antibacterial potential of selected 4-phenyl hydroxycournarins: Integrated in vitro and molecular docking studies, Med Chem Res., April 2014, Pages 1626-1634.
Regarding claims 1-2 and 7, Veselinovic teaches the antibacterial activity of selected 4-phenyl hydroxycoumarins against Gram+ and Gram-. Of the selected 4-phenyl hydroxycoumarins Veselinovic teaches compound
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, wherein with respect to claimed invention W is a C6 aryl, R and R1 is H (relevant to claims 1-2 and 7).
Claims 1-2 and 9 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Jadhav et al. Heterogeneously Catalyzed Pechmann Condensation Employing the Tailored Zn0.925Ti0.075O NPs: Synthesis of Coumarin, ACS Omega, May 2019, Pages 8522-8527.
Regarding claims 1-2 and 9, Jadhav teaches the synthesis of coumarin and its derivatives using the Ti(IV)-doped ZnO matrix forming catalyst Zn0.925Ti0.075O having a high surface area and good Lewis acidity (abstract). Of the coumarins Jadhav teaches compound
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(Pg. 8524), with respect to claimed invention W is a C6 aryl, R1 is a methyl and R is H (relevant to claims 1-2 and 9).
Allowable Subject Matter
Claims 10-15 are 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKHAIL O'DONNEL ROBINSON whose telephone number is (571)270-0777. The examiner can normally be reached Monday-Friday 7:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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