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 .
Priority
2. The instant application is a CON of PCT/CN2023/081281 filed March 14, 2023.
3. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) by application no. PCTCN2022080837 filed March 15, 2022, which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on March 13, 2023 and April 2, 2026 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of each form 1449 is enclosed herewith.
Status of the Claims
5. Claims 1-2, 5-6, 8-9, 11-12, 14-15, 17-18, 20-21, 23-25, 27-29, 31-35, and 38 are pending and under consideration in the instant application.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 34-35 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.
The phrase “including the compound of formula (I) or the specific compounds exemplified herein” renders the claim indefinite. Claim 34 depends on claim 1, which is drawn to compounds of formula (I) already, so it is unclear what ‘including’ or ‘specific compounds exemplified herein’ refers to as the claim already refers to ‘compounds of formula (I)’ so it is unclear what Applicant attempting to include/exclude by that claim language. If the phrase ‘specific compounds exemplified herein’ is referring to the species of claim 32, for example, those are not recited in claim 1. Examiner cannot ascertain the metes and bounds of the claimed scope encompassed by ‘including” or “specific compounds exemplified herein.’
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 34 recites the broad recitation “a compound according to claim 1 or a pharmaceutically acceptable salt thereof,” and the claim also recites “including the compound of formula (I) or the specific compounds exemplified herein” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Conclusion
8. Claims 1-2, 5-6, 8-9, 11-12, 14-15, 17-18, 20-21, 23-25, 27-29, 31-33, and 38 are allowed.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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