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
This office action is in response to applicant’s communication filed on 2/10/26. Claims 1, 4, 8, 11, 20, 31, 35, 37, 39, 42, 51 and 55-61 are pending in this application. Upon further consideration, the examiner withdraws the allowance of applicant’s elected species as shown below. Rejection of applicant’s elected species (shown below) is included within this office action.
Applicant’s elected species:
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Also, due to applicant’s claim amendments filed 2/10/26, the 102 rejection in the office action filed on11/10/25 is withdrawn. However, a new 103 rejection is in order as shown below.
In applicant’s response filed 2/10/26, they argue for the inclusion of claims 11, 31 and 57 for examination. Since the examiner has included a new 103 rejection in this office action which includes applicant’s elected species, the examiner has included claims 11, 31 and 57 for examination.
As a result, claims 1, 4, 8, 11, 20, 31, 56-57 and 59 are being examined in this Office Action. Claims 35, 37, 39, 42, 51, 55, 58 and 60-61 remain withdrawn.
Claim Rejections – 35 USC 103
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4, 8, 11, 20, 31, 56-57 and 59 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wells (J. Biol. Chem., 207(2), 575-583, April 1954), in view of Sharifian et al. (US 4917781, pub date April 17, 1990).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Wells teaches choline-like quaternary ammonium compounds and divides the compounds into five series, including Series V, 2-amino-2-methylpropanediol-1,3. Wells further teaches the trimethyl and triethyl derivatives of Series V prepared from 2-amino-2-methyl-1,3-propanediol. Table I of Wells teaches the Series V quaternary ammonium chloride structure, wherein the compound includes the 2-amino-2-methylpropanediol-1,3 skeleton and a chloride counterion. In particular, Table I teaches the Series V compound wherein R1, R2, and R3 are each methyl. See the figure below. (Wells, p. 576- 578, Table I).
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Wells therefore teaches the ammonium/cation portion of applicant’s elected species DMAMPD-AH, as shown below:
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This compound reads on applicant’s compound of formula II when:
R5 = OH
R6 = H
R7 = H
Z = OR7
R7 = H
R4 = CH3
f = 0
h = 0
X- = Cl-
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Wells is deficient in the sense that it does not teach applicant’s particular hydroxide counterion. Instead, Wells teaches chloride as the counterion.
However, Sharifian et al. teaches a process for preparing quaternary ammonium hydroxides from corresponding quaternary ammonium salts. Sharifian et al. teaches that the quaternary ammonium salts may be characterized by the formula A+X-, wherein A+ is a quaternary ammonium cation and X- is an anion such as a halide, including chloride, bromide, and iodide. Sharifian et al. further teaches quaternary ammonium salts having R groups that may be alkyl or hydroxyalkyl groups and gives examples including tetramethylammonium chloride, tetraethylammonium chloride, hydroxyethyl dimethyl benzyl ammonium chloride, and trimethylhydroxyethylammonium chloride. Sharifian et al. teaches that such quaternary ammonium salts are converted to quaternary ammonium hydroxides. (Sharifian et al., Abstract; col. 1, lines 26-43; col. 2, lines 25-45; col. 3, lines 8 to col. 4, line 18)
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Therefore, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to modify the quaternary ammonium chloride compound of Wells by replacing chloride with hydroxide, as taught by Sharifian et al., to obtain the corresponding quaternary ammonium hydroxide. One of ordinary skill in the art would have been motivated to make the modification because Sharifian et al. teaches that quaternary ammonium hydroxides are known useful compounds and teaches preparing such hydroxides from corresponding quaternary ammonium salts, including halide salts and hydroxyalkyl-substituted quaternary ammonium salts (Sharifian et al., col. 1, lines 10-25; col. 1, lines 26-43; col. 3, line 19 to col. 4, line 18).
The modification would have involved the predictable conversion of a known quaternary ammonium chloride salt to the corresponding quaternary ammonium hydroxide salt while retaining the same quaternary ammonium cation taught by Wells. Therefore, it would have been prima facie obvious to one of ordinary skill in the art to provide the claimed quaternary ammonium compound wherein the counterion is hydroxide, including the elected species DMAMPD-AH, by applying the teachings of Sharifian et al. to the quaternary ammonium chloride compound taught by Wells.
Response to Arguments
Applicant’s arguments have been considered and the examiner’s response is below:
Applicant’s arguments are directed to the 102 rejection in the office action filed 11/10/25. Since the examiner has made a 103 rejection based on further consideration and search, applicant’s arguments are moot.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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