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 .
Status of the Claims
Claims 1, 3, and 4 are pending.
Claims 1 and 4 are amended.
Priority
This application is a 371 of PCT/JP2020/044036 which claims the benefit of JP 2019-216303 with an effective filing date of 29 November 2019 as reflected in the filing receipt mailed on 12 August 2022.
Response to Amendments
Applicant’s amendments filed 19 December 2025 are acknowledged.
Claim Objections
Applicant’s amendment to claim 4 is sufficient to overcome the objection of claim 4. Claim 4 has been amended to correct the grammar by adding the words “a temperature of”. The rejection is withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendment to claim 1 is sufficient to overcome the rejection of claim
claims 1, 3, and 4 under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claim 1 has been amended to delete the “or offering” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed had possession of the claimed invention. The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s amendment to claim 1 in compliance with the 35 USC 112(a) rejection in the previous office action dated 27 August 2025 is not sufficient to overcome the rejection of claims 1, 3, and 4 under 35 U.S.C. 103 as being unpatentable over Tadashi et al. (JP2008024650, cited by applicants 22 April 2022, see machine translation, hereinafter Tadashi) in view of Reuter et al. (WO2019043060, hereinafter Reuter) and Shinichi et al. (JPS595132, published 12 January 1984, see machine translation, hereinafter Shinichi). The rejection is maintained.
Response to Arguments
Applicant’s 35 U.S.C. § 102(b)(2)(C) Response
Applicant’s statement on page 5 of the remarks filed on 19 December 2025 that “the subject matter disclosed in Sakuma and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same entity” Honshu Chemical Industry Co., Ltd. is sufficient to overcome the rejection of:
Claims 1, 3, and 4 under 35 U.S.C. 103 as being obvious over Sakuma et al. (WO2020226114, filed on 30 April 2020, cited by applicants 22 April 2022, see machine translation, hereinafter Sakuma) in view of Reuter et al. (WO2019043060, hereinafter Reuter).
The verified true translation of JP 2019-216303 filed on 19 December 2025 is acknowledged.
Due to applicant’s clear and conspicuous statement that the claimed invention of the application under examination and the subject matter disclosed in WO2020226114 to Sakuma et al. applied as prior art were owned by the same person or subject to an obligation of assignment to the same person, namely Honshu Chemical Industry Co., Ltd., not later than the effective filing date of the claimed invention the rejection is withdrawn, see MPEP 2154.02(c).
Applicant’s arguments filed 19 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Tadashi, Reuter, and Shinichi do not disclose the limitations as recited in claim 1. These arguments have been considered but are not persuasive for the reasons set forth in the maintained rejections below and the response to arguments below.
In response to applicant’s arguments on pages 5-8 of the remarks filed on 19 December 2025 that “in Intel Corp. v. Pact Xpp Schweiz AG, Appeal No. 22-1037 (Feb. Cir. 2023), the Federal Circuit held that, under the “known-techniques” rationale, a motivation to combine two prior art references exists when the references address the same problem and one of the references provides a known technique that would suitably address that problem” and “there is no reason or rationale in Tadashi to disrupt the above scheme at obtaining a metal salt of the binaphthyl, and to separate the metal salt (the metal salt (2)), and Reuter's reaction schemes do not involve filtering, washing, drying of a dicarboxylic acid or a metal salt of a dicarboxylic acid. Thus, under the “known-techniques” rationale, a motivation to combine Tadashi and Reuter does not exist because the references do not address the same problem and none of the references provides a known technique that would suitably address that problem.”
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
As stated on page 14 of the previous office action dated 27 August 2025 (hereinafter POA), Tadashi teaches separating the dicarboxylic acid metal salt from the solution by evaporation, see Para. [0018], Lns. 246-252.
As stated on pages 14-15 of the POA, Reuter is applied to teach the solid-liquid separation comprises separating the metal salt from the reaction mixture by filtration, followed by washing the filtered metal salt with a solvent. Reuter is not applied to teach filtering, washing, drying of a dicarboxylic acid or a metal salt of a dicarboxylic acid.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).”, see MPEP 2141.01(a).
In this case, Tadashi is in the known prior art field of methods of producing binaphthyl compounds from binaphthyl compounds thereof by hydrolysis acidification, see Abstract; Paras. [0016];[0018].
Reuter is in the known prior art field of methods of producing of binaphthyl compounds from binaphthyl compounds thereof by hydrolysis acidification, see Abstract, Pg. 2, formula (I), Pg. 18, Scheme 1a, Pg. 20, Ln. 24-Pg. 21, Ln. 25, Schemes 1b and 1c, Pgs. 25-26, Example 1, 1.1, and Pgs. 26-27, Example 1, and is applied to teach prior to acidification the binaphthyl is filtered, washed with ice-cold toluene, and dried to further obtain the synthesized binaphthyl, see Pgs. 25-26, Example 1, 1.1.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the separation of the metal salt of Tadashi by applying the known technique of the filtering and washing the metal salt as taught by Reuter with a reasonable predictability of success for the purpose of efficiently and economically preparing a pure compound by utilizing the differing solubilities of compound salts in differing solvents, i.e., phase separation, in order to precipitate and remove undesired compounds, precipitate the desired compound, then filter and wash undesired compounds and impurities from the desired compound, see Reuter, Pg. 17, Lns. 3-9, Pg. 21, Lns. 27-34, and Pgs. 25-26, Example 1, 1.; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Tadashi and Reuter both teach methods of producing of binaphthyl compounds from binaphthyl compounds thereof by hydrolysis acidification, a person of ordinary skill in the art has good reason to modify Tadashi by relying upon Reuter before the effective filing date of the claimed invention for knowledge generally available within the binaphthyl hydrolysis acidification art regarding the separation of metal salts, see MPEP 2143 B & G and 2141, for the benefit of efficiently and economically preparing a pure compound by utilizing the differing solubilities of compound salts in differing solvents, i.e., phase separation, in order to precipitate and remove undesired compounds, precipitate the desired compound, then filter and wash undesired compounds and impurities from the desired compound, see Reuter, Pg. 17, Lns. 3-9, Pg. 21, Lns. 27-34, and Pgs. 25-26, Example 1, 1.; and, MPEP 2141 and 2143 I. B-D.
For the reasons detailed above, applicant’s above arguments are not persuasive.
In response to applicant’s arguments on page 8 of the remarks filed on 19 December 2025 that “Shinichi provides no motivation to increase the purity to 99.9%, and the claimed features yield more than predictable results”.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).”, see MPEP 2141.01(a).
In this case, Tadashi is in the known prior art field of methods of producing binaphthyl compounds from binaphthyl compounds thereof by hydrolysis acidification of a residue followed by crystallization, see Abstract; Paras. [0016]-[0018].
Shinichi is in the known prior art field of the crystallization of organic compounds with high purity directly from a synthesis solution residue oil phase, see Abstract and Pg. 3, Lns. 5-10, and is applied to teach the same.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the crystallization of Tadashi by applying the known technique of the crystalizing directly from a synthesis solution residue oil phase as taught by Shinichi with a reasonable predictability of success for the purpose of efficiently and economically preparing a pure compound by utilizing as few steps and solvents as possible “by cooling and crystallizing the oil layer of the reaction solution as it is”, see Shinichi, Pg. 3; and MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Tadashi and Shinichi both teach crystallization of organic residue, a person of ordinary skill in the art has good reason to modify Tadashi by relying upon Shinichi before the effective filing date of the claimed invention for knowledge generally available within the residue crystallization art, see MPEP 2143 B & G and 2141, for the benefit of efficiently and economically preparing a pure compound by utilizing as few steps and solvents as possible “by cooling and crystallizing the oil layer of the reaction solution as it is”, see Shinichi, Pg. 3; and MPEP 2143 I. B-D; and, MPEP 2141 and 2143 I. B-D.
For the reasons indicated above, applicant’s above arguments are not persuasive.
Maintained Rejections Based on the reply filed on 19 December 2025
Claim Rejections - 35 USC § 103
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, 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, 3, and 4 stand rejected under 35 U.S.C. 103 as being unpatentable over Tadashi et al. (JP2008024650, cited by applicants 22 April 2022, see machine translation, hereinafter Tadashi) in view of Reuter et al. (WO2019043060, hereinafter Reuter) and Shinichi et al. (JPS595132, published 12 January 1984, see machine translation, hereinafter Shinichi).
MPEP 2129 II. states “[w]here the specification identifies work done by another as “prior art,” the subject matter so identified is treated as admitted prior art. In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975)”, see the current specification, Pgs. 2-4, for an example of the structural scheme of Tadashi, see below, labeled as PTL 4 in the current specification, to produce 2,2'-bis(carboxymethoxy)-1,1'-binaphthyl,
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Tadashi teaches the claims 1, 3, and 4 limitations of a method for producing 2,2'-bis(carboxymethoxy)-1,1'-binaphthyl, Target A, represented by formula (3), having a chemical structure represented by the product compound structure above in Chem. 2, where the compound is synthesized by reacting in a solvent mixture 1,1'-binaphthalene-2,2'-diol, first structure above in Chem. 2, with a halogenated acetate ester represented by formula (4), see second structure above in Chem. 2, ethyl bromoacetate, where X is Br and R is ethyl, see Para. [0016], to yield 2,2'-bis(ethylcarbonylmethoxy)-1,1'-binaphthyl, where R is ethyl, formula (1), see third structure above in Chem. 2 and Para [0016], which is reacted with aqueous sodium hydroxide solution, to produce a sodium metal salt of 2,2'-bis(ethylcarbonylmethoxy)-1,1'-binaphthyl, formula (2), where M is sodium, see Paras. [0009];[0016];[0018], the sodium metal salt of 2,2'-bis(ethylcarbonylmethoxy)-1,1'-binaphthyl is separated from the solution by evaporating ethanol, acidified with hydrochloric acid, filtered, and dried to obtain a white solid dicarboxylic acid having a chemical structure represented by the product compound structure above in Chem. 2 and a purity as measured by high-performance liquid chromatography, see Paras. [0002];[0018], Lns. 246-252, meeting:
The Target A, the step of providing, the step of forming, the solid-liquid separation step, the decomposition step, part of the recovering step, and the purity as measured by high-performance liquid chromatography in instant application claim 1; and,
The limitations in instant application claim 3.
Tadashi does not teach:
The claim 1 limitations of wherein the solid-liquid separation comprises separating the metal salt from the reaction mixture by filtration, followed by washing the filtered metal salt with a solvent; and,
The limitations of claim 4.
Reuter relates to the synthesis of binaphthyl compounds from binaphthyl compounds thereof by hydrolysis acidification, see Abstract, Pg. 2, formula (I), Pg. 18, Scheme 1a, Pg. 20, Ln. 24-Pg. 21, Ln. 25, Schemes 1b and 1c, Pgs. 25-26, Example 1, 1.1, and Pgs. 26-27, Example 1.4, where 6,6'-dibromo-1,1'-bi-2-naphthol (compound III) is prepared, precipitated, filtered, washed with ice-cold toluene, and dried, the mother liquor product of the binaphthyl is also filtered, washed with ice-cold toluene, and dried to further obtain the synthesized binaphthyl, see Pgs. 25-26, Example 1, 1.1, the filtered and washed 6,6'-dibromo-1,1'-bi-2-naphthol (compound III) is then subjected to acidification to prepare 6,6'-diphenyl-1 ,1'-bi-2-naphthol (compound VII, with R = phenyl), where prior to filtration the reaction mixture is cooled down to room temperature, such as from 60 ◦C to room temperature, see Pgs. 26-27, Example 1.4, meeting:
The solid-liquid separation comprises separating and washing in instant application claim 1; and,
The separation step and within the temperature range in instant application claim 4.
Tadashi does not teach:
The claim 1 limitations of Target A at a purity of at least 99.9%, without performing a crystallization step of dissolving obtained crystals of Target A in an organic solvent.
Shinichi relates to the crystallization of organic compounds directly from a synthesis solution oil phase, see Abstract and Pg. 3, Lns. 5-10, where regarding purification and extraction, there is an advantage that a highly pure product of 99% or more can be easily obtained by cooling and crystallizing the oil layer of the reaction solution as it is, see Pg. 3, Lns. 5-10 and Pg. 5, Lns. 10-20, meeting the crystallization without further dissolving in solvent and within the purity range in instant application claim 1.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified
the metal salt evaporative separation of Tadashi to also include the one or more filtration and washing steps of a binaphthyl compound as taught by Reuter and to modify the crystallization of Tadashi to solve the crystallization problem by advantageously crystalizing the formed compound directly from the oil phase of the reaction solution as taught by Shinichi with a reasonable predictability of success for the purpose of economically preparing a pure compound by utilizing the differing solubilities of compound salts in differing solvents, i.e., phase separation, in order to precipitate and remove undesired compounds, precipitate the desired compound, then filter and wash undesired compounds and impurities from the desired compound, see Reuter, Pg. 17, Lns. 3-9, Pg. 21, Lns. 27-34, and Pgs. 25-26, Example 1, 1.1 and Shinichi, Pg. 1 and Pg. 3, Lns. 5-10.
By applying “routine optimization” and “predictable results” to select the optimal filtering, washing, and crystallization techniques to obtain a pure compound, one of ordinary skill in the art would have been motivated to make these modifications because Reuter and Shinichi provide a finite number of identified, predictable solutions, and a person of ordinary skill in the art has good reason to prepare and isolate a specific compound by pursuing the known options within their technical grasp for the benefit of economically preparing a pure compound by utilizing the differing solubilities of compound salts in differing solvents, i.e., phase separation, in order to precipitate and remove undesired compounds, precipitate the desired compound, then filter and wash undesired compounds and impurities from the desired compound, see Reuter, Pg. 17, Lns. 3-9, Pg. 21, Lns. 27-34, and Pgs. 25-26, Example 1, 1.1 and Shinichi, Pg. 1 and Pg. 3, Lns. 5-10 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as % purity or cooling temperature, “or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as crystallization techniques, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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