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 18/841,895
This Office Action is responsive to the original claims of 27 August 2024.
Original claims 1-10 have been examined on the merits.
Priority
The effective filing date is 27 March 2023.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 August 2024, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to as the claim does not end with a period (instead, it ends with a semi-colon). Please revise accordingly.
Claim 3 is objected to as the illustrations are highly pixelated and missing commas in between each compound. Please enlarge each illustration and darken all bonds, heteroatoms, and substituents; also, please add commas in between each compound and the article -- or -- in between the last two compounds.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 4-6 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. These rejected claims contain “use” claims. “Use” claims are not statutory claims. Statutory claims are only drawn to methods, machines, manufacture, or compositions-of-matter. The rejected claim(s) do not fall within at least one of the four categories of patent eligible subject matter because “use” claims are not methods, machines, manufacture, or compositions-of-matter.
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 1-10 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 claims 4-6 and 10 are drawn to “use” claims. The “use” limitations render the metes and bounds of the claims undefined (hence rendering claims 4-6 and 10 indefinite under 35 USC 112(b)). The artisan does not know if the Applicants intend these “use” claims to be method claims, and if so, what the active/verb (“-ing”) steps are to conduct the objectives stated in these rejected claims. Please either cancel the claims or revise the “use” claims into proper method claims containing an objective and “-ing” ending verbs / steps to conduct the stated objective.
Claim 1 contains “i.e.” and parentheticals. This renders the metes and bounds of the claim undefined (hence rendering claim 1 indefinite under 35 USC 112(b)): the artisan does not know if the limitations following “i.e.” and/or the limitations within parentheticals are merely exemplary or are required limitations of the claim. Claims 2-10, which refer back to claim 1, are similarly rejected since these claims do not remedy the rationale underpinning the basis for rejecting claim 1.
Claim 2 contains “e.g.” and parentheticals. This renders the metes and bounds of the claim undefined (hence rendering claim 2 indefinite under 35 USC 112(b)): the artisan does not know if the limitations following “e.g.” and/or the limitations within parentheticals are merely exemplary or are required limitations of the claim. Claims 7-10, which refer back to claim 2, are similarly rejected since these claims do not remedy the rationale underpinning the basis for rejecting claim 2.
Claim 2 contains “preferably”. This renders the metes and bounds of the claim undefined (hence rendering claim 2 indefinite under 35 USC 112(b)): the artisan does not know if the limitations following “preferably” are merely exemplary or are required limitations of the claim. Claims 7-10, which refer back to claim 2, are similarly rejected since these claims do not remedy the rationale underpinning the basis for rejecting claim 2.
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.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS (American Chemical Society. Chemical Abstract Service. RN 137537-53-2. Entered into STN: 22 November 1991).
The prior art reference ACS teaches the compound:
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(see enclosed ACS prior art reference), wherein: R1 is a C6cycloalkyl; R2 is -C(=O)-NH2 (an “amide”); R3 is phenyl; R4-R7 are each hydrogen (H). This anticipates instant claims 1-2
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 2 (American Chemical Society. Chemical Abstract Service. RN 137537-29-2. Entered into STN: 22 November 1991).
The prior art reference ACS 2 teaches the compound:
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(see enclosed ACS 2 prior art reference), R1 is a C6cycloalkyl; R2 is cyano; R3 is phenyl; R4-R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 3 (American Chemical Society. Chemical Abstract Service. RN 212501-79-6. Entered into STN: 11 October 1998).
The prior art reference ACS 3 teaches the compound:
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(see enclosed ACS 3 prior art reference), wherein: R1 is an amino-substituted phenyl; R2 is carboxyl; R3 is tri-methoxy substituted phenyl; and R4-R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 4 (American Chemical Society. Chemical Abstract Service. RN 212501-75-2. Entered into STN: 11 October 1998).
The prior art reference ACS 4 teaches the compound:
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(see enclosed ACS 4 prior art reference), wherein: R1 is an phenyl; R2 is carboxyl; R3 is tri-methoxy substituted phenyl; and R4-R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 5 (American Chemical Society. Chemical Abstract Service. RN 212490-70-5. Entered into STN: 11 October 1998).
The prior art reference ACS 5 teaches the compound:
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(see enclosed ACS 5 prior art reference), wherein: R1 is an phenyl; R2 is amide; R3 is di-methoxy substituted and a bromo-substituted phenyl; and R4 and R7 are each hydrogen (H); R5 and R6 are each methoxy. This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 6 (American Chemical Society. Chemical Abstract Service. RN 849636-21-1. Entered into STN: 2 May 2005).
The prior art reference ACS 6 teaches the compound:
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(see enclosed ACS 6 prior art reference), wherein: R1 is a C3cycloalkyl; R2 is cyano; R3 is fluorine-substituted phenyl; and R4 is bromine; R5 is hydroxyl; and R6 and R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claim(s) 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 7 (American Chemical Society. Chemical Abstract Service. RN 849634-65-7. Entered into STN: 2 May 2005).
The prior art reference ACS 7 teaches the compound:
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(see enclosed ACS 7 prior art reference), wherein: R1 is a C3cycloalkyl; R2 is cyano; R3 is fluorine-substituted phenyl; and R4 is H; R5 is C3alkoxy; and R6 and R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 8 (American Chemical Society. Chemical Abstract Service. RN 849634-63-5. Entered into STN: 2 May 2005).
The prior art reference ACS 8 teaches the compound:
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(see enclosed ACS 8 prior art reference), wherein: R1 is a C3cycloalkyl; R2 is cyano; R3 is fluorine-substituted phenyl; and R4 is H; R5 is C2alkoxy; and R6 and R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 9 (American Chemical Society. Chemical Abstract Service. RN 849634-60-2. Entered into STN: 2 May 2005).
The prior art reference ACS 9 teaches the compound:
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(see enclosed ACS 9 prior art reference), wherein: R1 is a C3cycloalkyl; R2 is cyano; R3 is fluorine-substituted phenyl; and R4 is H; R5 is C2trifluoromethoxy; and R6 and R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 10 (American Chemical Society. Chemical Abstract Service. RN 849634-59-9. Entered into STN: 2 May 2005).
The prior art reference ACS 10 teaches the compound:
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(see enclosed ACS 10 prior art reference), wherein: R1 is a C3cycloalkyl; R2 is cyano; R3 is fluorine-substituted phenyl; and R4 is H; R5 is hydroxy; and R6 and R7 are each hydrogen (H). This anticipates instant claim 1.
The “use” claims 4-6 constitute intended use limitations. Nothing precludes the use as claimed.
Conclusion
No claims are presently allowable as written.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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