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 .
DETAILED ACTION
Claims 1, 6-10, 12, 13, 17-20, 22, 23 and 28 are pending in the application. Claims 17, 18 and 22 are rejected. Claim 23 is objected to. Claims 1, 6-10, 12, 13, 19, 20 and 28 are withdrawn from further consideration.
Response to Amendment / Argument
Objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
On pages 14 and 15 of the response, Applicant addresses the amendment to claim 17 regarding maintenance of pi conjugation, this issue is addressed in the newly necessitated rejection below. The language of claim 17 does not require that all atoms of the wall be in conjugation with each other. Similarly, Applicant refers to “complete equatorial conjugation” on page 15 of the remarks, which is not a limitation in the instant claims.
On pages 13 and 14 of the response, Applicant addresses the limitation of a functional group and asserts that “the aromatic methine (-CH=) group” is the functional group. The fact that one position might be involved in a reaction, such as the reactions asserted by Applicant, does not make it a “functional group” per se. Furthermore, the references cited by Applicant only suggest that Applicant’s assertions are inconsistent with the art since the Chemistry LibreTexts refers to the aromatic ring as the functional group, not the individual methine groups. The same is true for the Wikipedia page.
Election/Restrictions
The instant claims are being examined according to MPEP 803.02. The elected species is free of the prior art and examination has been extended to include the scope of claim 23, which is free of the prior art, and further extended to include the species cited below under 35 USC 102. Additional subject matter outside this scope is withdrawn.
Claim Rejections - 35 USC § 112(d)
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.
Claim 22 is 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. Applicant has amended claim 17 to require that the equatorial cyclization is an aryl-aryl coupling. An aryl-aryl coupling involves reaction of two aryl groups with each other. Claim 22 recites generic terms of “a reaction to create a diimide linkage, or a reaction to create an alkynyl linkage.” These terms encompass reactions that do not necessarily contain an aryl-aryl bond. A reaction that includes two aryl groups anywhere in the coupling partners is not considered an aryl-aryl coupling any more than a reaction that includes two alkyl groups anywhere in the coupling partners is considered an alkyl-alkyl coupling. 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.
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.
Claim(s) 17, 18 and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe et al. Tetrahedron Letters 1995, 36, 7677-7680.
The prior art teaches compounds of the following formula on page 7677:
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The prior art teaches the following precursor steps on page 7678:
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The instant claims are product-by-process claims. Regarding the method steps recited in claim 17, the prior art structure “2” corresponds to an end cap including a macrocyclic compound have a plurality of functional groups that are hydroxyl groups and corresponding to the second depicted option in claim 17 where R is an alkyl group. Regarding the definition of R’’, there is no requirement that this group be present in the final compound and a halogen could be displaced by a benzyl alcohol. The following step leads to the formation of compound 1:
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Since the instant claims are drafted as product-by-process, the prior art compound would be embraced where the following portion is considered to be the result of creating a tubular wall from a plurality of reactive compounds:
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The equatorial cyclization would then correspond to the ring bearing R2 and R3 being introduced via an aryl-aryl coupling.
Regarding instant claim 18, MPEP 2113(I) notes: ‘"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)’. In this situation, the prior art structure could be generated in any permutation including where the benzyl groups are introduced and a functional group on the phenyl ring is subsequently reacted to introduce the aryl group that is subsequently bound to the aryl group containing R2 and R3. Regarding instant claim 22, since the claims are drafted as a product-by-process, the recitation of a Suzuki-Miyaura cross coupling reaction to create a linkage including a phenylene group is not deemed to distinguish from the phenylene group bearing R2 and R3 in the prior art regardless of the how it could otherwise be introduced.
Regarding the newly amended limitation to claim 17 of “wherein the plurality of reactive compounds is selected such that pi conjugation is maintained axially and equatorially in the tubular wall of the tubular compound,” the term “maintain” has meanings that include “to keep in an existing state (as of repair, efficiency, or validity): preserve from failure or decline”. It is first noted that none of the pieces recited to form the tubular compound of claim 17 are required to have pi conjugation (besides the end cap, which is not part of the wall). The only reference to pi conjugation occurs in the provision that pi conjugation is “maintained”. Therefore, even if no pi conjugation existed prior to generation of the tubular compound, any pi conjugation would have been maintained. Similarly, the claims do not require any new pi conjugation to occur (in an axial or equatorial direction) during formation of the tubular compound. Regardless, since the corresponding aromatic rings are still intact in the starting materials and products, the same pi conjugation exists after formation of the final product. Therefore, pi conjugation is maintained in forming the tubular wall.
Allowable Subject Matter
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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