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 1-7 are pending in the application. Claims 2 and 3 are rejected. Claims 1-3 and 5-7 are objected to. Claim 4 is allowable.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/KR2022/014781, filed on September 30, 2022, which claims priority to Korean Application No. KR10-2021-0129839, filed on September 30, 2021.
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. § 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on March 28, 2024 is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claim 1-3 and 5-7 are objected to because of the following informalities:
Claim 1 should be amended to recite, “A compound of Formula (1)” for clarity and consistency.
Claim 1 should be amended to include the word “wherein” before the recited variable definition for ring B (i.e., after preamble) for proper Markush language.
Claim 1 should be amended to recite, “n is an integer from [[of]] 0 to 4” for sake of clarity and consistency.
Claim 1 should be amended to recite, “k is an integer from [[of]] 0 to 4” for sake of clarity and consistency.
Claim 1 should be amended to recite, “p is an integer from [[of]] 0 to 4” for sake of clarity and consistency.
Claim 1 should be amended to recite, “q is an integer from [[of]] 0 to 4” for sake of clarity and consistency.
Claim 1 should be amended to include the word “and” before the recited variable definition for ring A for proper Markush language.
Claim 2 should be amended to recite, “...is one selected from the group consisting of...” for sake of clarity and consistency.
Claim 3 should be amended to recite, “...is one selected from the group consisting of...” for sake of clarity and consistency.
Claim 5 should be amended to recite, “...is one selected from the group consisting of...” for sake of clarity and consistency.
Claim 6 should be amended to recite, “...is one selected from the group consisting of...” for sake of clarity and consistency.
Claim 7 should be amended to recite, “...consisting of the following compounds[[.]]:” for proper claim format.
Claim 7 should be amended to correct for the typographical errors found in the nomenclatures for compound 30 and 31.
Appropriate correction is required.
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.
Claim 3 is 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 3 recites the following as alternative definitions for variable ring A and is rejected as indefinite:
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443
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.
It is unclear where Applicant intended the point of attachment to be for the above moieties with respect to a compound of Formula (1).
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.
Claims 2 and 3 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.
Claim 2 recites
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as an alternative for variable ring B. However, parent claim 1 does not provide for a 1,2-diazole moiety in the definition of ring B. Therefore, claim 2 fails to include all the limitations of parent claim 1.
Claim 3 recites
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as an alternative for variable ring A. However, parent claim 1 does not provide for variable Y6 being defined as an oxygen atom. At least for this reason, claim 3 fails to include all the limitations of parent claim 1.
Claim 3 recites
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as an alternative for variable ring A. However, parent claim 1 does not provide for variable Y6 being defined as a sulfur atom. At least for this reason, claim 3 fails to include all the limitations of parent claim 1.
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 1-7 are free of the prior art. Claim 4 is allowable. Claims 1-3 and 5-7 would also be allowable if amended to overcome the claim objection(s) and/or rejection(s) under 35 U.S.C. § 112 as indicated above.
Closest Prior Art
The closest prior art is Deng et al. (PCT Publication No. WO 2019/024908 A1; February 7, 2019) which teach the following compound VII-a-7 on e.g., page 78:
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227
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.
The above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula (1), wherein ring A is
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and Y1 and Y2 are each CH. The above prior art compound, however, does not correlate to the instantly claimed compound of formula (1) with respect to variable R4 (i.e., haloalkyl in prior art compound) and ring B (i.e., absent in prior art compound). Furthermore, the prior art does not provide any teaching, suggestion or motivation to modify the above prior art compound to arrive at the instantly claimed invention. Accordingly, instant claims 1-7 are not prima facie obvious over the prior art.
Conclusion
Claims 2 and 3 are rejected. Claims 1-3 and 5-7 are objected to. Claim 4 is allowable.
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/D.M.S./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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