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 13-17 are objected to because of the following informalities: the 'or' between claim 1 and their derivatives has been mistakenly deleted in cla. Appropriate correction is required.
Claims 4 objected to because of the following informalities: the placement of "and III". Additionally, formula III and IV have poor image resolution. 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 5 and 9- 20 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 10- 20 provide for the application of a compound, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process Applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claims 11, 15 and 19 are rejected because the scope of the claims are indefinite due to an open ended Markush grouping. Claims 11 and 19 are indefinite in scope because it states, “sulfydryl-containing molecules” and then list several specific compounds. It is unclear if it also then includes different compounds including derivatives of these compounds as well. Claim 15 is indefinite because it states, “substituents comprises” and “substituted indyl comprises” and then list several specific groups. 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).").
Claims 5 and 9 are indefinite in scope because of the phrase “in particular” it is unclear if this means the steps following the phrase are optional. For the purposes of examination the phase “in particular” was considered not optional as otherwise the claim would recite no additional limitations.
The term “derivatives ” in claims 11, 13 and 19 is a relative term which renders the claim indefinite. The term “derivatives ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the specification provides examples of derivatives it does not provide a definition and one of ordinary skill in the art would not know where a derivative would be considered to end and a new molecule would begin. If it has two atoms the same is that a derivative or a new molecule? One of ordinary skill would not know. For the purposes of examination the term derivative was taken to be limited to the compounds in paragraph [0025] as the broadest reasonable interpretation of benzothiaselenazole-l-oxide derivatives as based on the specification. All other derivatives were considered to be any other compound.
Claims 11, 13-17 and 19 are indefinite in scope because of the phrase “based on”. The meaning of the phrase “based on” is unclear due to the uncertainty if the phrase and what it is trying to state. One of ordinary skill in the art would not know if the phrase requires: that the molecule must contain the desired structure (e.g. Se-S covalent linkage, benzothiaselenazole-1-oxide compound), be made from the desired structure, or just be loosely based on the desired structure but doesn’t require any elements of the structure. Thus the scope of claims 11, 13-17 and 19 are indefinite.
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 10-13 and 18- 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) 10-13 and 18- 20 does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of an application, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Allowable Subject Matter
Claims 1-3 and 6-7 are allowed.
Conclusion
Claims 4 and 8 are objected to.
Claims 5 and 9- 20 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).
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/ALISON AZAR HASTINGS/ Examiner, Art Unit 1627
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