DETAILED ACTION
Claims 13-14 and 16-20 are currently pending in the instant application.
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 .
Response to Amendment
Applicant’s amendments and arguments filed 09/15/2026 have been fully considered and entered into the application. Applicant has overcome
The objection to claim 14 in view of Applicant’s amendment to the claim.
The double patenting rejections over US Pat. No. 10,131,663 and US 10,961,241 in view of Applicant’s amendments to the claims.
Claim Objections
Claim 13 is objected to because of the following informalities: The structure is still blurry and the N atoms still appear distorted. In the structure, there is no bond between the two nitrogen atoms in the ring -
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. Further the original structure is still shown in the claim and there is no strike through to shown that it has been deleted
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. Since claims 14 and 16-20 depend on claim 13 and do not fix the issue, they have been objected to as well. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 14 and 16-18 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 14 states “wherein the crystalline form is crystalline Form A” and depends on claim 13. However, since claim 14 only names the crystalline form of claim 13 as crystalline form A and does not add any additional limitations to distinguish said crystalline form, claims 13 and 14 appear to be drawn to the same crystalline form of a compound. Thus claim 14 fails to further limit the subject matter of claim 13, the claim upon which it depends.
Claims 16-18 all states “wherein the crystalline form has an X-ray powder diffraction pattern with at least one specific peak at … 15.5, 18.6 and 24.6” in addition to including other peaks. Claims 16-18 all depend on claim 13 but have additional peaks beyond claim 13. Thus claim 16 only requires one specific peak, which can be 12.3. However the peak 12.3 is not found in the limitations of claim 13, and thus the scope of 16 is broader than claim 13, the claim upon which it depends. Similarly for claims 17-18. 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 13 and 19-20 would be allowable once the objection to claim 13 is overcome.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
