DETAILED ACTION
Claims 1-15 are pending.
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
The instant application filed 03/27/2024 is a National Stage entry of PCT/CN2022/122205, International Filing Date: 09/28/2022 claims foreign priority to 202111155906.7, filed 09/29/2021 claims foreign priority to 202211141499.9, filed 09/20/2022.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on 4/15/2024 and 9/10/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the Information Disclosure Statements are being considered by the Examiner.
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 1-15 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 states, “ m is 0-5; preferably, m is 1, 2, or 3; and more preferably, m is 1 or 2;”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation 0-5, and the claim also recites 1 or 2, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Claims 14 and 15 are directed to the “use” of the composition without having any steps in the method claim. Therefore this claim is interpreted as being directed to the composition of matter with the “intended use” of preparing or treating. The claims are indefinite as outlined as follows. "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, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
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, 5-11, 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hillig et al. “Discovery ofpotentSOS1inhibitorsthatblockRAS activation via disruption of the RAS–SOS1 interaction,” Proceedings of the National Academy of Sciences of the United States of America, February 12, 2019, Vol. 116, No. 7, pp. 2551-2560.
Hillig teaches compound 10 which anticipates claims
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190
220
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This compound 10 has the A group as a C10 aryl, R1 is H, R0 is H, R2 is C1 alkyl, and m=0.
Q1 is CR4, R4 is H;
Q2 is CR5, R5 is -OR7, R7 is C1 alkyl;
Q3 is CR5, R6 is -OR7, R7 is C1 alkyl;
Q4 is CH.
Claim Rejections - 35 USC § 102
Claims 1, 3, 5-10, 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,272,824 issued 9/13/1966.
The ‘824 patent teaches the following compound:
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294
748
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This compound has the A group as a C6 aryl, R1 is H, R0 is H, R2 is H, and m=0.
Q1 is CR4, R4 is H;
Q2 is CR5, R5 is -OR7, R7 is C1 alkyl;
Q3 is CR5, R6 is -OR7, R7 is C1 alkyl;
Q4 is CH.
Claim Rejections - 35 USC § 102
Claims 1, 4-10, 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 956,254 published 4/22/1964.
The ‘254 reference teaches the following compound:
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262
740
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This compound has the A group as a C5 heterocycyl, R1 is H, R0 is H, R2 is H, and m=1, R3 is C1 alkyl.
Q1 is CR4, R4 is H;
Q2 is CR5, R5 is H;
Q3 is CR5, R6 is -OR7, R7 is C1 alkyl;
Q4 is CH.
Claim Rejections - 35 USC § 102
Claims 1-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017023905 published 2/9/2017.
The ‘905 reference teaches the following compound:
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356
574
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This compound has the A group as a C6 aryl, R1 is H, R0 is H, R2 is C1 alkyl, and m=2, R3 is Halogen and C1 alkoxy.
Q1 is CR4, R4 is H;
Q2 is CR5, R5 is H;
Q3 is CR5, R6 is halogen;
Q4 is CH.
The ‘905 reference teaches these compounds as pharmaceuticals and in carriers, see claim 7-10.
Allowable Subject Matter
Claim 12 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.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J SCHMITT whose telephone number is (571)270-7047. The examiner can normally be reached M-F 8-6 MidDay Flex.
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/MICHAEL J SCHMITT/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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