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 .
Specification
The disclosure is objected to because of the following informalities: pages 117-139 include many location
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Appropriate correction is required.
The disclosure is objected to because of the following informalities: pages 58-61 have several mentions of
Appropriate correction is required.
Claim Interpretation
Claims 80 and 87-88 are examined and interpretated as written, however, the applicant is suggested to review if they truly meant to claim Ag(OAc)2 or if they meant AgOAc as taught on page 121.
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, 3, 5, 8-9, 11-13, 31-34, 41-42, 49, 57-59, 63, 70, 80, 87, 88 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.
Claims 1, 9, 12, 13, 31-33 are rejected because the scope of the claims are indefinite due to an open ended Markush grouping. Claims 1, 9, 12, 13, 31-33 are indefinite in scope because they state, ‘comprising the structure/compound/template/complex of/etc.” It is unclear if it also then includes different compounds including derivatives of these compounds as well. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022) (each independent claim recites "a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit." … (emphasis added). "Given the breadth of variation among the specified alternatives and the use of the open-ended word ’comprising’ to define the scope of the list, we affirm the Board's conclusion that the pending claims recite improper Markush language and are indefinite under § 112(b).").
For the purpose of examination the broadest reasonable interpretations include compounds of that exact structure/compound/template/complex of/etc and derivatives thereof.
Claims 13, 34, 49, 57, 59, 63, 70, 80, 87, 88 are rejected due to not providing the formula mentioned in the claims and without reference to the claim that provides the formula it is unclear if the mentioned formula is the same as shown in the alternate claim. "Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table 'is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.' Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993)" (MPEP 2173.05(s)).
Claims 3, 5, 8-9, 11-12, 32-33, 41-42, 49, 57-59, 63, 70 are indefinite because of either the phrase “has the structure” or “having the structure” it is unclear if this phase is meant to be open ended like “comprising” or closed like “consisting of”. For example claim 3 states “The palladium-coordinating template compound of claim 2, having the structure of Formula II:” this is indefinite in scope because it is unclear if the palladium-coordinating template compound of claim 2 is more than the structure of Formula II and simply contains it or if it must be exactly the structure of Formula II.
For the purpose of examination the broadest reasonable interpretations include compounds of that exact structure/compound/template/complex of/etc and derivatives thereof.
Claims 34 and 57 recites the limitation "the template chaperone compound of formula II" in in step (i). There is insufficient antecedent basis for this limitation in the claim. The claims do not recite a template chaperone compound of formula II. Instead they recite a template compound of formula II and a template chaperone compound of formula IV. Thus the scope of the claim is unclear. Based on the instant specification the broadest reasonable interpretation is that claims 34 and 57 was meant to read on template chaperone compound of formula IV.
Claims 3, 32 are rejected because it depends improperly on canceled claim 2. Thus the scope of the claim is indefinite because it is unclear what the compound of claim 2 is because there is no claim 2. "If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be
rejected as incomplete". MPEP 608.01(n) (V).
Claims 5 and 33 are rejected because it depends improperly on canceled claim 4. Thus the scope of the claim is indefinite because it is unclear what the compound of claim 4 is because there is no claim 4. "If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be
rejected as incomplete". MPEP 608.01(n) (V).
Claims 8-9 are rejected because it depends improperly on canceled claim 7. Thus the scope of the claim is indefinite because it is unclear what the compound of claim 7 is because there is no claim 7. "If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be
rejected as incomplete". MPEP 608.01(n) (V).
Claims 11-12 are rejected because it depends improperly on canceled claim 10. Thus the scope of the claim is indefinite because it is unclear what the compound of claim 10 is because there is no claim 10. "If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete". MPEP 608.01(n) (V).
Claim 70 is rejected because it depends improperly on canceled claims 14-30, 35-40, 43-57, 60-62, 64-69. Thus the scope of the claim is indefinite because it is unclear what the methods of claims 14-30, 35-40, 43-57, 60-62, 64-69 are because there are no claims 14-30, 35-40, 43-57, 60-62, 64-69. "If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete". MPEP 608.01(n) (V).
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN(STN, ACS CAS REGISTRY 2755170-79-5, Entered STN: 04 Jan 2022) .
The reference REGISTRY 2755170-79-5 teaches the following compound, wherein R1=trifluoromethyl, m=2, n=0, X=N. This anticipates claims 1, 3.
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Claim(s) 1, 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN(STN, ACS CAS REGISTRY 2755170-82-0, Entered STN: 04 Jan 2022) .
The reference REGISTRY 2755170-82-0 teaches the following compound, wherein R1=OMe, m=2, n=0, X=N. This anticipates claims 1, 5.
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Claim(s) 6 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN(STN, ACS CAS REGISTRY 1287189-55-2 , Entered STN: 28 Apr 2011) .
The reference REGISTRY 1287189-55-2 teaches the following compound, wherein R1=R2=phenyl substituted with trifluoromethyl. This anticipates claims 6, 8.
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Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SWAGER (SWAGER et al., WO 2016011194 A1, 2016-01-21) .
The reference SWAGER teaches the following compound (see reference figure 135, page 199). This anticipates claim 9.
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Claim(s) 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN(STN, ACS CAS REGISTRY 126230-12-4 , Entered STN: 06 Apr 1990).
The reference REGISTRY 126230-12-4 teaches the following compound, wherein R1=R2=phenyl substituted with trifluoromethyl. This anticipates claim 11.
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Claim(s) 41-42, 58 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN(STN, ACS CAS REGISTRY 2755170-80-8 , Entered STN: 04 Jan 2022).
The reference REGISTRY 2755170-80-8 teaches the following compound, wherein R1=C1 alkoxy, m=2 Q=
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X=CH, n=0, p=0. This anticipates claim 41-42, 58.
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Claim(s) 1, 3, 5-6, 8-9, 11-13, 34, 41-42, 49, 57-59, 63, 70 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fan (Fan et al., Unified Template Strategy for Editing Multiple Remote C–H Bonds, Posted on 11 October 2021).
The reference Fan teaches (pages 5-9):
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This anticipates claims 1, 3, 5-6, 8, 11, 13, 41-42, 58, 70.
The reference Fan teaches “In all cases, the incorporated palladium within the directing template and template chaperones can be easily recovered as the TC-Pd-MeCN complex and recycled with no loss in reaction efficacy (see Supplementary Information 2.8)”(page 6).
This anticipates claims 9 and 12.
The reference Fan teaches “Through consecutive selective C–H functionalization at multiple sites, the direct molecular editing of heteroarene carbon-hydrogen (C–H) bonds has the potential to grant rapid access into diverse molecular space; a valuable but often challenging venture to achieve in medicinal chemistry. Contrasting with electronically-biased heterocyclic C–H bonds, remote benzocyclic C H bonds on bicyclic aza-arenes are especially difficult to differentiate due to lack of intrinsic steric/electronic biases. Through careful consideration of distance and geometric parameters, we herein report a unified catalytic directing template strategy that enables the modular functionalization of chemically-similar and adjacent remote positions on bicyclic aza-arene scaffolds. Differentiated by using two structurally distinct catalytic directing templates, this method enables direct C–H olefination, alkynylation, and allylation at previously inaccessible C6 and C7 positions of quinolines, and is amenable to the iterative, modular, and late-stage C–H editing of quinoline-containing pharmacophores and pharmaceuticals. This report, in combination with our previous C5-selective template and other complementary methods, now fully establishes a unified ‘molecular editing’ strategy to directly modify aza-arene heterocycles at any given site”(abstract).
The claims do not recite a template chaperone compound of formula II. Instead they recite a template compound of formula II and a template chaperone compound of formula IV. Thus the scope of the claim is unclear. Based on the instant specification the broadest reasonable interpretation is that claims 34 and 57 was meant to read on template chaperone compound of formula IV.
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The reference Fan teaches (page 15):
This anticipates claims 34, 57, 63.
The reference Fan teaches (page 13):
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This anticipates claims 49, 59.
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.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10858383 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Patent ‘383 claims the following compound, wherein R1=phenyl, R2= substituted C1 alkyl.
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This anticipates claim 6. Claim 6 is interpreted that any compound of formula IV is a compound of claim 6 as this is the broadest reasonable interpretation due to the lack of specific required features beyond those specified in the claim.
Conclusion
Claims 1, 3, 5-6, 8-9, 11-13, 31-34, 41-42, 49, 57-59, 63, 70, 80, 87, 88 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR HASTINGS whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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.
/ALISON AZAR HASTINGS/ Examiner, Art Unit 1627
