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 18/997,442
This Office Action is in response to the amended claims of 01/21/2025.
Claims 1-3, 5, 9-10 and 15 are original; and claims 4, 6-8, and 11-14 are currently amended.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on 01/21/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Priority
Effected filing date is 07/21/2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 13-15 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 13-15 are constructed in “use“ form and does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter)(see MPEP 2173.05(q)).
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 1-15 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 1-10 and 13-14 contain numerous occurrences of parentheticals. For example see circled parentheticals below:
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Claims are not allowed to have limitations within parentheticals since the readers does not know whether the limitation within the parentheticals are merely exemplary or a required limitation of the claim. Only abbreviations are allowed in parentheticals. Thus, parentheticals of 1-10 and 13-14 renders metes and bounds of 1-10 and 13-14 undefined hence rendering 1-10 and 13-14 indefinite.
Claims 11-12 and 15 are also rejected for depending on rejected claims 1.
Claims 13-14 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 13-15, drawn to “use of”, is properly interpreted as a “use” claim. As such, the metes and bounds of claims 13-14 are undefined (hence rendering claim 13-14 indefinite) since claim 13-14 attempts to claim a process without setting forth any active steps involved in the process. As such, the artisan has no idea what active steps (active verbs) are needed to conduct the “use” claim. Use claims are indefinite because they merely recite a use without any active, positive steps delimiting how the use is actually practiced. See MPEP 2173.05(q). Claim 15 is similarly rejected as it depends on rejected claim 14.
Claims 7-15 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.
Dependent Claims 7-8, 10,13 and 14 recites limitation “polymorph of formula (I-B)” . There is insufficient antecedent basis for “polymorph of formula (I-B)” in claim 1. Claim 1 does not recites “polymorph of formula (I-B)”. As drafted, “polymorph of formula (I-B)” in claims 7-8, 10,13 and 14 renders the metes and bounds of claims 7-8, 10,13 and 14 undefined. Hence renders claims 7-8, 10,13 and 14 indefinites
Claims 9,11-12 and 15 are also rejected for depending on rejected claims 8 and 14.
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 7-15 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.
Dependent Claims 7-8, 10,13 and 14 recites limitation “polymorph of formula (I-B)”, which fails to properly further limit independent claim 1, since claim 1 has no limitations drawn to “polymorph of formula (I-B)”. Thus claims 7-8, 10,13 and 14 rejected under 35 U.S.C. 112(d).
Claims 9,11-12 and 15 are also rejected for depending on rejected claims 8 and 14.
Conclusion
No claims are allowed as written.
Examiner did not find prior art on independent claims 1 and 2. Daniel et.al ( US 20180273494) disclose compound I-A and I-B, but Daniel does not disclose crystalline for of compound of formula I-A9 (paragraph [0668]) and I-B (paragraph [0672]) with X-ray diffraction pattern as stated in claims 1 and 2. A person skilled in the art is not able to envision X-ray diffraction pattern, thus Daniel is a close art but not a prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rehana Ismail whose telephone number is (703)756-4776. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571)272-913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.I./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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