This Office Action supersedes the Restriction Requirement mailed July 21st, 2026.
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 Objections
Claims 13 – 14 are objected to because of the following informalities: missing a conjunction between the R9 and n limitations. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: missing a conjunction between the R8a and n limitations. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: confusing wording. Claim 19 line 5 recites, “points connecting the rest part of the compound,” which is grammatically confusing. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: missing commas between structures. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: missing a conjunction between the last two structures. 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 16 – 18 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 16 recites the pyridone compound of claim 13 where R1a, R2a, R2b, R4a, R4b, R6 and L are as defined in any of claims 1 to 3. However, claims 1 to 3 have been canceled. Therefore, claim 16 lacks any antecedent basis for its limitations. See MPEP 2173.05(e). Moreover, if the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. See MPEP 608.01(n)(V). Therefore, given the uncertainty around what R1a, R2a, R2b, R4a, R4b, R6 and L can be claim 16 is rejected under 35 U.S.C. 112(b).
Claim 17 recites the pyridone compound of claim 13 where R1a, R2a, R2b, R4a, R4b,R5a, R5b, R6 and L are as defined in any of claims 1 to 3. However, claims 1 to 3 have been canceled. Therefore, claim 17 lacks any antecedent basis for its limitations. See MPEP 2173.05(e). Moreover, if the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. See MPEP 608.01(n)(V). Therefore, given the uncertainty around what R1a, R2a, R2b, R4a, R4b,R5a, R5b, R6 and L can be claim 17 is rejected under 35 U.S.C. 112(b).
Claim 18 recites the pyridone compound of claim 13 where R1a, R2a, R2b, R4a, R4b, R6, R7, and L are as defined in any of claims 1 to 3. However, claims 1 to 3 have been canceled. Therefore, claim 18 lacks any antecedent basis for its limitations. See MPEP 2173.05(e). Moreover, if the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. See MPEP 608.01(n)(V). Therefore, given the uncertainty around what R1a, R2a, R2b, R4a, R4b, R6, R7, and L can be claim 18 is rejected under 35 U.S.C. 112(b).
Discussion of the Closet Prior Art
The closet prior art is Canadian Patent Application CA 2933939 A1 to Chessari et. al. (Chessari’939) that teach compound 3 of structure
PNG
media_image1.png
212
178
media_image1.png
Greyscale
where R4a = R4b = H; R5a = R5b = CH3; X = CH; Y = carbonyl; M = CH; Z = C; L = -(CH2)- where n = 1; R6 = phenyl substituted with a F atom. See page 134 Row 3. See claim 13 limitation.
However, Chessari’939 fails to teach a pyridone compound as shown in Formula (I)
PNG
media_image2.png
200
400
media_image2.png
Greyscale
where R1a, R1b, R2a, R2b, R3 is as recited in claim 13. See claim 13 limiation. Moreover, neither did the prior art provide a motivation to extensively modify compound 3 of prior art Chessari’939 to render obivous the compound species of the exmained claims. Thus the closet prior art fails to anticipate and render obvivous the compounds of the examined application. Hence claims 13 – 22 are free of the prior art.
Conclusion
Claims 16 – 18 are rejected. Claims 13 – 15, and 19 – 20 are objected. Claims 21 – 22 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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, Kortney Klinkel can be reached at 571-270-5239. 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.
/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627
Prosecution Insights