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 .
According to a preliminary amendment filed on April 29, 2024, the applicants have canceled claims 1-30 and furthermore, have added new claims 31-50.
Claims 31-50 are pending in the application.
Claim Rejections - 35 USC § 112
4. 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 31, 43-44 and 47-50 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.
In independent claim 31, variable R5c is defined but not present in the formula.
In independent claim 31, variable R1c is not defined.
In claim 47, variable R5c is defined but not present in the formula.
Claim Rejections - 35 USC § 102
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 31-33, 36 and 44-49 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Martin (Organic Mass Spectrometry, cited on applicant’s form 1449).
Martin discloses mass spectra of Sceletium alkaloids. The deuterated compounds 5,5,7,7-d mesembrine, 4,5-d mesembrine and 5,7,7-d mesembrenone (see table 2 on page 4) disclosed by Martin anticipate the instant claims when either variables R4, R3a and R3b represent D and variable m represents 2 or 1 or one of variables R4 and R5 represents D and the other represents H and variables m and n represent 2 in the instant compounds of formula (I).
Allowable Subject Matter
Claims 34-35 and 37-42 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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