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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/04/2025 has been entered.
Status of the Claims
The amendment filed on 08/04//2025 has been entered. Claims 16 and 28 have been amended and claims 29-30 have been canceled. Thus, claims 16-26, 28 and 31-32 are currently pending and under examination.
Withdrawn Rejections
Claim 28 has been amended to comply with the written description and thus the 112(a) rejection of the claim has been amended.
Furthermore, claim 16 has been amended by reciting
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Even though Haszeldine teaches a method for producing 1,1-difluoro-2-iodoethane by the reaction of 1,1-difluoroethylene with hydrogen iodide in the absence of a catalyst and in liquid phase, the reference fails to teach or suggest the now recited species of the solvent S1. As such, the 103 rejection of the record has been withdrawn.
Claim Objections
Claim 28 is newly 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.
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 16-26 and 31-32 are newly 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.
Claim 16 recites that the process step a) produces “a stream A comprising said iodofluoroalkane compound and unreacted hydrogen iodide” and step b) “separating said stream A into a first stream B1 comprising said iodofluoroalkane compound and a stream B2 comprising unreacted hydrogen iodide”. The claim is amended to further recite that step a) can be conducted in liquid phase and in the presence of species of solvent S1. However, the presence of solvent S1 renders the claim vague and indefinite as it is not clear how a reaction between fluoroolefin and HI in the presence of solvent S1 can only form two streams with just two components, i.e. stream B1 with iodofluoroalkane and stream B2 with unreacted HI but that there is no recitation how the solvent S1 is removed. The specification does not provide a detailed guidance on how this solvent S1 is removed other than separating stream B1 with iodofluoroalkane and stream B2 with unreacted HI. As such, a skilled artisan would not be reasonably apprised of the scope of the invention.
Claims 17-26 and 31-32 are also rendered indefinite for their dependency on claim 16 as they can further limit the liquid phase option of reaction of step a).
Allowable Subject Matter
The subject matter of claims 16-26, 28 and 31-32 is free of prior art. The closest prior art reference is Haszeldine (Haszeldine, R. N. et al. “Addition of Free Radicals to Unsaturated Systems. Part XI. Free-radical and Electrophilic Attack; on Fluoro-olefins” J. Chem. Soc. Jan. 1, 1956, 11 pages doi 10.1039/JR9560000061 cited in IDS 08/17/2022).
The teachings of Haszeldine has been set forth in the Office Action 05/13/2025, however as set discussed above, the reference fails to teach or suggest the species of solvent S1 as instantly amended claim 16. Accordingly, the claimed process for producing an iodofluoroalkane compound is deemed novel and unobvious.
Conclusion
Claims 16-26 and 31-32 are rejected and no claims are allowed.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692