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 .
Request for continued examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/18/2026 has been entered.
DETAILED ACTION
As filed, claims 17-21, 24, 28, 32 are pending; of which, claim 17 is currently amended. Claims 1-16, 22, 23, 25-27, 29-31, 33 are canceled.Claims 20, 21, 28, 32 are withdrawn from further consideration.A complete response to this Office Action should include cancellation of non-elected subject matter or other appropriate action.
Claims 17-19, 24 are examined herein.
Rejections Withdrawn
Applicant’s amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1. The rejection of claims 17-19, 24 under 35 U.S.C. § 112 second paragraph is withdrawn in view of claim amendments and per argument submitted by Applicants. Applicant's arguments (Remarks page 8) were carefully considered and were found persuasive.
2. The NSDP rejection of claims 17-19, 24 over claims 23, 24, 45 of copending Application No. 18248020 is maintained. A terminal disclaimer has not been submitted to overcome this rejection.
Claim Rejections - 35 USC § 102
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.
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
1. Claims 17, 18 and 24 are rejected under 35 U.S.C. 102 (a)(1) and 102(a)(2) as being anticipated by Atherton et al. Journal of the Chemical Society (1945) 660-3 (cited in PTO-892 attached herewith).
The ‘article by Atherton teaches on experimental page 662-663 , the dialkyl phosphamide of di-benzyl phosphamide compounds of structure shown below which corresponds to the instantly claimed compounds of formula II wherein variable Y is O, X is NH2 (instant claim 18) and A is C1-10 hydrocarbyl (C2 alkyl, C3 alkyl or benzyl) and G is an C1-10 hydrocarbyl ( C2 alkyl, C3 alkyl or -benzyl).
Shown below are the anticipatory compounds disclosed by the ‘516 patent as displayed in Registry file:
RN 1068-21-9 CAPLUS
CN Phosphoramidic acid, diethyl ester (CA INDEX NAME)
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RN 3905-76-8 CAPLUS
CN Phosphoramidic acid, bis(phenylmethyl) ester (CA INDEX NAME)
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164
371
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RN 6415-20-9 CAPLUS
CN Phosphoramidic acid, bis(1-methylethyl) ester (CA INDEX NAME)
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114
228
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Regarding instant claim 24, the prior art teaches composition of the compounds in solvent (preparative examples on page 663).
Since the compounds disclosed in the prior art has the same structure as the instantly claimed compound, each and every required element of the claim is taught and the claim is anticipated.
2.Claims 17, 18 are rejected under 35 U.S.C. 102 (a)(1) and 102(a)(2) as being anticipated by CAS Registry STN Substance Record for 1361416-64-9 Entered STN: 21 Mar 2012 (cited in PTO-892 attached herewith).
CAS Registry RN 1361416-64-9 discloses the compound of structure shown below which corresponds to the instantly claimed compounds of formula II wherein variable Y is O, X is NH2 (instant claim 18) and A is C1-10 hydrocarbyl (C2-alkyl) and G is an C4 alkenyl group.
Shown below is the anticipatory compound as displayed in Registry file:
RN 1361416-64-9 CAPLUS
CN Phosphoramidic acid, 3-buten-1-yl ethyl ester (CA INDEX NAME)
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Therefore, the prior art teaches the limitations of instant claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17-19, 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23, 24, 45 of copending Application No. 18248020. Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a substantial amount of overlapping subject matter. The elected species is recited in claim 45 of the ‘020 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
AN 1981:46741 CAPLUS Full-text
DN 94:46741
OREF 94:7613a,7616a
TI Investigation on products of reaction of O,O-dialkyl phosphoramidates with
sulfonyl diisocyanate. Part II
AU Arnold, Zdzislaw
CS Physiol.-Biochem. Inst., Mil. Sch. Med., Lodz, 90647, Pol.
SO Polish Journal of Chemistry (1980), 54(4), 703-7
CODEN: PJCHDQ; ISSN: 0137-5083
DT Journal
LA English
OS CASREACT 94:46741
AB The addn. of (RO)2P(O)NH2 (R = Et, Pr, Me2CH, Bu, Me2CHCH2) with OCNSO2NCO
gave (RO)2P(O)NHCONHSO2NHCONHP(O)(OR)2 (same R).
IT 870-52-0 1068-21-9 6415-20-9
17123-09-0 56477-39-5
RL: RCT (Reactant); RACT (Reactant or reagent)
(addn. reaction of, with sulfonyl diisocyanate)
RN 870-52-0 CAPLUS
CN Phosphoramidic acid, dibutyl ester (CA INDEX NAME)
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114
358
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RN 1068-21-9 CAPLUS
CN Phosphoramidic acid, diethyl ester (CA INDEX NAME)
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114
228
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RN 6415-20-9 CAPLUS
CN Phosphoramidic acid, bis(1-methylethyl) ester (CA INDEX NAME)
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114
228
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RN 17123-09-0 CAPLUS
CN Phosphoramidic acid, dipropyl ester (CA INDEX NAME)
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114
293
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RN 56477-39-5 CAPLUS
CN Phosphoramidic acid, bis(2-methylpropyl) ester (CA INDEX NAME)
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145
293
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2. AN 1980:76858 CAPLUS Full-text
DN 92:76858
OREF 92:12679a,12682a
TI I. Studies of 2,2'-bipyridyl-N,N'-dioxides. II. A potential approach to
polynucleotide synthesis. III. Novel eight-membered ring C,N,S-compounds
AU Wenkert, David
CS Harvard Univ., Cambridge, MA, USA
SO (1979) 228 pp. Avail.: Univ. Microfilms Int., Order No. 7922244
From: Diss. Abstr. Int. B 1979, 40(4), 1728
DT Dissertation
LA English
OS CASREACT 92:76858
AB Unavailable
IT 1361416-57-0P 1361416-64-9P 1361416-71-8P
RL: RCT (Reactant); SPN (Synthetic preparation); PREP (Preparation); RACT
(Reactant or reagent)
(prepn. of a phosphonating reagent for oligonucleotide synthesis)
RN 1361416-57-0 CAPLUS
CN Propanoic acid, 3-[(aminoethoxyphosphinyl)oxy]-, phenylmethyl ester (CA
INDEX NAME)
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153
424
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RN 1361416-64-9 CAPLUS
CN Phosphoramidic acid, 3-buten-1-yl ethyl ester (CA INDEX NAME)
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110
293
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RN 1361416-71-8 CAPLUS
CN Phosphoramidic acid, ethyl 3-hydroxypropyl ester (CA INDEX NAME)
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110
310
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IT 195141-03-8P 1361416-56-9P
RL: SPN (Synthetic preparation); PREP (Preparation)
(prepn. of a phosphonating reagent for oligonucleotide synthesis)
RN 195141-03-8 CAPLUS
CN Phosphoramidic acid, ethyl 3-(phenylmethoxy)propyl ester (CA INDEX NAME)
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148
424
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RN 1361416-56-9 CAPLUS
CN Propanoic acid, 3-[(aminoethoxyphosphinyl)oxy]- (CA INDEX NAME)
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115
310
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AN 1979:507655 CAPLUS Full-text
DN 91:107655
OREF 91:17367a,17370a
TI N-Phosphorylated formamidines
IN Guenther, Eberhard; Kochmann, Werner; Luthardt, Horst; Naumann, Kurt;
Roethling, Tilo
PA VEB Chemiekombinat Bitterfeld, Ger. Dem. Rep.
SO Ger. (East), 7 pp.
CODEN: GEXXA8
DT Patent
LA German
FAN.CNT 1
PI
PATENT NO. KIND DATE APPLICATION NO. DATE
--------------- ---- -------- --------------------- --------
DD 134872 A1 19790328 DD 1978-204026 19780308
PRAI DD 1978-204026 A1 19780308
PSPI
PATENT NO. KIND STATUS STATUS DATE
--------------- ---- ------------- -----------
DD 134872 A1 Dead 20201107
AB Reaction of (RX)(RO)P(Y)NH2 (X, Y = O or S, R = C1-12 alkyl) with DMF
(promoted by SOCl2 or COCl2) gave 70-90% (RX)(RO)P(Y)NiCHNMe2 (X = O, Y =
S, R = Et, X = Y = O, R = Et, Pr, Me2CH, Bu, Me2CHCH2, EtCHMeCH2,
BuCHMeCH2, n-C10H21).
IT 870-52-0 1068-21-9 6415-20-9
RL: RCT (Reactant); RACT (Reactant or reagent)
(reaction of, with DMF)
RN 870-52-0 CAPLUS
CN Phosphoramidic acid, dibutyl ester (CA INDEX NAME)
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114
358
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RN 1068-21-9 CAPLUS
CN Phosphoramidic acid, diethyl ester (CA INDEX NAME)
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114
228
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RN 6415-20-9 CAPLUS
CN Phosphoramidic acid, bis(1-methylethyl) ester (CA INDEX NAME)
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114
228
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--------------- ---- -------- --------------------- --------
US 3761545 A 19730925 US 1971-165581 19710723
PRAI US 1971-165581 A 19710723
PSPI
PATENT NO. KIND STATUS STATUS DATE
--------------- ---- ------------- -----------
US 3761545 A Dead 20201106
AB (BuCHEtCH2O)2P(O)NH2 was prepd. by refluxing a mixt. of
(BuCHEtCH2O)2P(O)OH and urea in MePh. A mixt. of mono- and diisooctyl
phosphates reacted similarly and the reaction was claimed for alkyl
pyrophosphates.
IT 13024-82-3P
RL: SPN (Synthetic preparation); PREP (Preparation)
(prepn. of)
RN 13024-82-3 CAPLUS
CN Phosphoramidic acid, bis(2-ethylhexyl) ester (CA INDEX NAME)
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488
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Conclusion
Claims 17-19, 24 are rejected. Claims 20, 21, 22-23, 25, 28-29, 32-33 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EAST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Havlin can be reached at 571-272-9066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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