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 .
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.
Claim 22 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.
It is unclear why the first diagramed structure is labeled twice, once as “b” and then again as “(b)”.
Clarification is in order.
Furthermore, there is insufficient antecedent basis for the L-V moiety which appears in structure (a) of the claim.
The examiner respectfully suggests that the moiety should properly be: V-L.
Claim 26 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.
The claim is drawn to a route of synthesizing a compound of formula (c), yet the claim depends from a claim which teaches an alternate and incompatible route of synthesis of the compound of formula (c).
The examiner respectfully suggests that claim 26 should properly depend from claim 21 (not claim 22).
Claim 27 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.
It is unclear how a moiety L-V in diagramed starting material of structure (a) is transformed into the moiety V-L in the final compound of formula (I).
The examiner respectfully suggests that the L-V moiety in diagramed structure (a) should properly be the moiety: V-L.
Claim 29 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.
The identity of the substituent PN is unclear because it is undefined.
Clarification is in order.
Claim 23-25 and 28 are also 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.
The claims all depend or ultimately depend from an indefinite claim yet do not relieve the indefiniteness. Dependent claims 23-25 and 28 are also, therefore, indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
If a generic claim is presented in a separate application after the issuance of a patent claiming one or more species within the scope of the generic claim, the generic claim may be rejected on the grounds of nonstatutory double patenting. (MPEP 806.04(i).)
Claims 27-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 11 of U.S. Patent No. 12,404,241 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Inventor teaches a process of preparing a compound of formula (I) comprising contacting a compound of formula (i) with a compound of formula (a) in the presence of base, in a solvent, under conditions suitable to obtain a compound of formula (I) (independent claim 27).
Dependent claim 28 (from claim 27) teaches that starting compound (i) is obtained by contacting a compound of formula (e) with a compound of formula (h) in the presence of base, in a solvent, under conditions suitable to provide a compound of formula (i).
Dependent claim 29 (from claim 27) teaches that starting compound of formula (a) is obtained by contacting a compound V-L-LG with a compound of formula (n) in the presence of base, in a solvent, to obtain the compound of formula (a).
Patented claims 1-3 and 11 of US 12,404,241 B2 teach the same overall synthetic strategy as the instant claims outlined above, albeit with narrower set of compound defined by formula (I). To wit:
a=1 or 2 in instant formula (I), while the patent teaches that in formula (I), by structure, a=1.
LG is a leaving group in instant formula (i), while the patent teaches that the corresponding moiety in formula (i) is Br or Cl.
X is N or CRx in instant formulas (I) and (a), while the patent teaches that X is N in formula (I) and corresponding formula (b).
Other substituent definition comparisons may be made between the instant claims and those of the patent and are similar to those above.
In short, that patented claims and those of the instant invention are related in a species/genus fashion. That is, the patented claims are a narrower teaching of the more general teaching of the instant claims. Note, however, that if a generic claim is presented in a separate application after the issuance of a patent claiming one or more species within the scope of the generic claim, the generic claim may be rejected on the grounds of nonstatutory double patenting. (MPEP 806.04(i).)
Allowable Subject Matter
Claims 17-21 and 30-36 are allowed. The following is a statement of reasons for the indication of allowable subject matter:
The closest art is applicant’s own work, cited above. The reference does not teach, show, suggest or make obvious to the two separate and distinct synthetic strategies of instant independent claims 17 and 30, and their associated dependent claims, for the synthesis of compounds of formula (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 7/3/2026
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