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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 04/17/2024 has been considered here.
Election/Restrictions
Applicant’s election of Group I (claims 1-5 and 14-19) in the reply filed on 06/24/2026 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 § 818.01(a)).
As such the restriction is made final.
Claim Objections
Claims 1-2, 5, and 17-19 are objected to because of the following informalities: The list of possible R groups is not grammatically correct in these claims. The list should read “wherein R is selected from hydrogen and a C1-C4 alkyl group.” In claim 2, it should read, “wherein R is a methyl group.” 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 1-5 and 14-19 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 recites the limitation of “wherein R is selected from hydrogen, and C1-C4 alkyl” however there are two different chemical structures provided in claim 1. It is not clear whether the limitation of what R can be selected from is for one of or both of the structures. This issue becomes particularly relevant when looking at the dependent claims, such as claim 2, where R is limited to being a methyl group. It is not clear whether both R’s are limited to the claim limitation or can the R of formula (I) be a hydrogen while the R of formula (II) is a methyl. The same issue is present in claims 5, 17, 18, and 19. as well. As such, one with ordinary skill in the art would not understand the metes and bounds of the claims, they are indefinite. For purposes of search and consideration, the claims are understood to read “wherein R is selected from hydrogen, and an C1-C4 alkyl group for formula (I) and formula (II).”
Claim 17 recites a limitation wherein the compound of formula (I) having the configuration of formula (Ia) wherein R is selected from hydrogen and C1-C4 alkyl, however claim 17 depends from claim 2. Claim 2 limits the R to a methyl group. It is not clear how the R can be hydrogen or C2-C4 alkyls when it is limited to a methyl group. As such, the claim is indefinite. For purposes of search and configuration, claim 17 is understood to read “wherein R is a methyl group”.
Claims 2-4 and 14-16 are indefinite as they depend from an indefinite claim.
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.
Claim 17 is 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 17 fails to further limit the subject matter upon the claim upon which it depends (i.e., claim 2) as it recites the R group is hydrogen or a C1-C4 alkyl group, but claim 2 limits R to a methyl group. 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
The following is a statement of reasons for the indication of allowable subject matter: The compound of formula (I) seems to be free of the art. After reviewing the references submitted in the IDS of 04/17/2024 and searching the art, it seems that while there are compounds that are structurally very similar to the compound of formula (I), the combination of the position of the oxygens in the ring along with the R group being hydrogen or a C1-C4 alkyl group is not found in the art. As such, at this time the teachings of the instant claim seem to be free of the art. Further, the method of making a similar structure as claimed in the instant claims is known (as discussed in the references in the IDS), however there is no motivation in the art to move the position of the oxygen while also limiting the R group to those selections listed in the instant claims.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./ Examiner, Art Unit 1611
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