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 .
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.
Current Status of 18/717,807
This Office Action is responsive to the amended claims of 7 June 2024.
Claims 1-15 are currently pending.
Priority
Applicant’s claim for the benefit of the prior-filed applications PCT/CN2022/137656 (filed 8 December 2022), CN 202111493784.2 (filed 8 December 2021), and CN 202211131813.5 (filed 16 September 2022) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The Examiner has determined, for the purposes of the instant action, that the effective filing date of the instant claims is 8 December 2022, at least due to the lack of an English translation of the earlier priority document. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Information Disclosure Statement
The information disclosure statement (IDS) received on 7 June 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, this information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: The last clause in the definition of “B” within claim 1 states “the number of heteroatom is 1 to 3”. This should be amended to read “the number of heteroatoms is 1 to 3”. The same heteroatom grammar error exists all the way at the bottom of clam 1. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: The structures within claim 4 are drawn so closely together that the R1 and R2 groups are almost touching, which is not appropriate, as they are not part of the same structure. Applicant may choose to separate these structures by a reasonable amount. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: A proper Markush group should have commas separating the alternative members. See MPEP 2173.05(h). Commas should be placed in claim 12 between the alternate chemical structures. The word “and” should also be placed before the final structure. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: The phrase “a S-isomers” is grammatically incorrect. 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 1-15 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 recites “k” within structure I, but then only defines “K” further on in the claim. It is unclear if “K” is equivalent to “k”. This renders claims 1-15 indefinite. Applicant may choose to amend the claim to consistently use the same capitalization for this variable.
Claim 1 states that B may be absent. It is unclear to the reader what the complete structure of either formula I or formula II would be when ring B is absent. Specifically, it is not clear if the R5 and L2 groups would still be present, and if they would still be present, how they would be connected. This renders claims 1-15 indefinite. Applicant may choose to amend instant claim 1 so that ring B cannot be absent. The presence of ring B is also discussed in claims 5-6.
Claim 1, within the definition of “B” states that “R6 and R7 together with the attached carbon atom jointly form…”. This renders claims 1-15 indefinite, because R6 and R7 are directly attached to at least two carbon atoms. Applicant may choose to amend the quoted section immediately above such that “atom” is plural.
Claim 1 and 15 each recite a limitation that includes the term “preferably”. Claim 1 also includes the phrases “but without aromatic structure” and “preferably 1 or 2” in parentheses at the end of the claim. Exemplary and/or preferential claim limitations cause the reader to be confused as to the exact scope of a claim. See MPEP 2173.05(c)(I) and MPEP 2173.05(d). These limitations render claim 1-15 indefinite. Applicant may choose to delete the preferential limitations from claims 1 and 15.
Claim 1 recites, in the final section of the claim, limitations on heterocyclyl and heteroaryl groups. Because each of these groups appears more than once within the claim, it is not clear if these limitations refer to, for example, one of the heterocyclyl groups or all of the heterocyclyl groups. This renders claims 1-15 indefinite. Applicant may ament the last part of the claim to make clear that, for example, the heterocyclyl limitations apply to all heterocyclyl groups within the claim.
Claim 14 recites the “use” of a compound of claim 1 without providing any steps involved in these processes. A claim of this type is 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. See MPEP 2173.05(q). This renders claims 14-15 indefinite.
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 12-14 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 12 recites various compounds that have only a single substituent on the B ring. For example, compound I-1 of claim 12 shows ring B to be a phenyl ring with an N-pyrrolidine-CH2- substituent. That substituent satisfies the -L2-R4 limitations of claim 1, but does not satisfy the –(R5)n limitation of claim 1. Therefore, claim 12 fails to limit the scope of instant claim 1, its parent claim, and instead attempt to expand its scope.
Claims 13-14 each recites “a racemate, a R-isomer, a S-isomers [sic], and a mixture thereof” of the compound of claim 1, but claim 1 does not mention any of these items. Therefore, each of claims 13-14 fail to limit the scope of instant claim 1, their parent claim, and instead attempt to expand its scope.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by:
LIU (WO 2024/055879 A1, International Publication Date 21 March 2024; Priority Document CN 202211126580.X, Filed 16 September 2022).
LIU teaches the compound below on page 17 therein (Pg. 4 of the priority document). Defining the variables of formula I of instant claim 1 as follows produces the compound of LIU: L1 is equal to -NH-; R1 is a C4 alkyl group; k is equal to 1; R2 is H; R3 is H; m is equal to 1; ring B is a phenyl ring; R5 is methoxy; n is 1; L2 is -(CRbRc)p-(NRd)q-, wherein p is 1, q is 0, and Rb and Rc are H; and R4 is -N(Re2Re3Re4), wherein Re4 is absent and Re2 and Re3 are each methyl groups. Defining the variables of formula II of instant claim 1 as follows produces the compound of LIU: L1 is equal to -NH-; R1 is a C4 alkyl group; X is CR2, wherein R2 is H; R3 is H; X2 is methylene; ring B is a phenyl ring; R5 is methoxy; n is 1; L2 is -(CRbRc)p-(NRd)q-, wherein p is 1, q is 0, and Rb and Rc are H; and R4 is -N(Re2Re3Re4), wherein Re4 is absent and Re2 and Re3 are each methyl groups.
PNG
media_image1.png
267
268
media_image1.png
Greyscale
Conclusion
No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights