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 .
Status of Claims
The claims filed October 23, 2024 are acknowledged and entered. Claims 1-14 are pending.
Priority
This application is a CON of PCT/CN2023/091293, filed April 27, 2023, which claims priority of CN202210472873.7, filed April 29, 2022; and claim priority of CN202210473993.9, filed April 29, 2022; and claims priority of CN202210623900.6, filed June 2, 2022.
Information Disclosure Statement
Acknowledgement is made of the Information Disclosure Statement filed on January 3, 2025 All references have been considered except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Claim Objections
Claim 14 is objected to for being of improper form because it fails to recite the structures of Form CSII and Form CSIII. MPEP 2173.05(s) states Where possible, claims are to be complete within 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 …’ ” This condition is not met here, since it is practical to define the invention in words, simply by putting the structures into the claim. See Ex parte Fressola, 27 USPQ2d 1608, 1609.
The claim should be amended to include the chemical structures corresponding to Forms CSII and CSIII. Appropriate correction is required.
Claim Rejections - 35 USC § 112d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3-5 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 3-5 and 11 are substantial duplicates of claims 2 and 10, respectively. Claims 3-5 depend directly or indirectly from claim 2 and recite the Form CSII, wherein the X-ray powder diffraction pattern comprises one or two or three characteristic peaks at 2theta values of 14.7⁰±0.2⁰, 21.1⁰±0.2⁰ and 21.8⁰±0.2⁰ (claim 3); and 13.5⁰±0.2⁰, 15.6⁰±0.2⁰ and 17.5⁰±0.2⁰ (claims 4-5). Claim 11 depends from claim 10 and recites the Form CSIII, wherein the X-ray powder diffraction pattern comprises one or two or three characteristic peaks at 2theta values of 4.3⁰±0.2⁰, 11.1⁰±0.2⁰ and 12.9⁰±0.2⁰. Claims 3-5 and 11 do not further limit Form CSII or Form CSIII because the claims do no more than recite additional XRPD peaks which are properties that are inherent to Forms CSII and CSIII recited in claims 2 and 10. Thus, claims 3-5 and 11 are not teaching a new or different crystalline form of claim 2 or claim 10, rather they just add additional peaks which only adds more detail to the claim. The co-crystal of Form CSII which is present in claim 2 identical to the cocrystal forms in claims 3-5. The co-crystal of Form CSIII which is present in claim 10 identical to the cocrystal form in claim 11.
The claims are therefore rejected for failing to further limit the subject matter of the claims upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-2, 6-10 and 12-13 are allowed.
Claim 14 would be allowable if amended to overcome the objection set forth above.
The following is a statement of reasons for the indication of allowable subject matter: The closest reference to the instant claims is Missling (WO 2019/200345 A1) (cited by Applicant in IDS filed January 3, 2025) (hereinafter “Missling”). Missling teaches a crystalline form of tetrahydro-N,N-dimethyl-2,2-diphenyl-3-furanmethanamine hydrochloride ( see paragraph [0005]). The difference between Missling and the instant claims is that the instant claims require a tartaric acid or citric acid co-crystal. Missling does not teach the co-crystals of the claimed invention. There is no teaching which would have motivated one of ordinary skill in the art before the effective filing date of the instant application to modify Missling into the claimed invention with any reasonable expectation of success.
Conclusion
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August 3, 2026
/KEVIN S MARTIN/Examiner, Art Unit 1624
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