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 .
Priority
CONTINUING DATA
This application is a 371 of PCT/IB2021/055954 07/02/2021
FOREIGN APPLICATIONS
EP 20185255.5 07/10/2020
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on January 10, 2023 has been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
Response to Restriction
Applicants’ election, with traverse, the invention of Group I, claims 1-6, 10, 11, 18 and 19, drawn to a process of preparing product of Formula I, and the specific compound, pyrosulfone, in response filed December 30, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The non-elected Groups II and III were cancelled by the amendment filed on December 30, 2025. Therefore, the restriction requirement is considered proper and is maintained.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a petition under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 7-9 and 12-17 are cancelled. Therefore, claims 1-6, 10, 11, 18 and 19 are currently pending in this Application.
Claim Objections
Claims 1-6, 10, 11, 18 and 19 are objected to over the following informal issues, appropriate correction is required.
Claim 1, step “a” recites “.. a starting material selected from the following”. Since there is only one compound, i.e. compound of Formula IV, for the purpose of clarity, it is suggested that Applicants amend step (a) as follows: bromination of a compound of Formula IV …
Claims 2-6, 10, 11, 18 and 19 depend directly or indirectly from claim 1, and each claim uses the article “A” at the beginning of each claim. In the interest of clarity, it is suggested to amend the beginning of each claim as follows:
“The process according …”
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.
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.", (see MPEP § 2173).
Claims 1-6, 10, 11, 18 and 19 are 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 pre-AIA the applicant regards as the invention.
In claim 1, the structure of Formula I,
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, is depicted as follows:
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. However, the structure of the
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as shown in the specification is
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Therefore, the claims are indefinite because the metes and bounds of the claim cannot be ascertained because the specification and the claim depict different structures of the same product. Appropriate correction is required.
Claim Interpretation
In the interest of compact prosecution, the examiner interprets claim 1 to recite the structure of
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, consistent with the specification and other pending claims.
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.
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.
(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.
Claims 1, 3-6, 10, 11, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pat. Pub. No. 20070249844 to Nakatani et al. The Examiner notes that for the purposes of this art rejection, he has relied on the structure depicted in the specification for
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Claim 1, is directed to a process of preparing
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t comprising several steps: a bromination of a compound of Formula IV,
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, to obtain a product of Formula III,
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; thionation of compound of Formula III to obtain a product of Formula II,
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; and reacting the product of Formula II with 2-isoxazoline moiety to make the final product.
Claims 2-5 further define the reaction conditions and specific reagents used in the reaction.
Claims 6, 10, 11, 18 and 19 add an oxidation step to covert the product of Formula I, to prepare Pyroxasulfone,
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Nakatani et al teach a process of preparing products of Formula I, from a compound of Formula IV by bromination leading to a product of Formula III ( see examples 8 and 9) thionation leading to the compound of Formula II ( see example 10). Some of the reactions are done at room temperature and in the presence of ethanol or DMF. Nakatani et al also teaches substitution step ( see reference examples 1-2 and 3). Nakatani et al also teaches the oxidation of product of Formula I to prepare Pyroxasulfone (see reference example 3). Therefore, claims 1, 3-6, 10, 11, 18 and 19 are anticipated by U.S. Pat. Pub. No. 20070249844 to Nakatani et al
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, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1-6, 10, 11, 18 and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over U.S. Pat. Pub. No. 20070249844 to Nakatani et al.
Claim 1, is directed to a process of preparing
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t comprising several steps: a bromination of a compound of Formula IV,
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, to obtain a product of Formula III,
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; thionation of compound of Formula III to obtain a product of Formula II,
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; and reacting the product of Formula II with 2-isoxazoline moiety to make the final product.
Claims 2-5 further define the reaction conditions and specific reagents used in the reaction.
Claims 6, 10, 11, 18 and 19 add an oxidation step to covert the product of Formula I, to prepare Pyroxasulfone,
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Determination of the scope and contents of the prior art
Nakatani et al. teach a process of preparing products of Formula I, from a compound of Formula IV by bromination leading to a product of Formula III ( see examples 8 and 9) thionation leading to the compound of Formula II ( see example 10). Some of the reactions are done at room temperature and in the presence of ethanol or DMF. Nakatani et al also teaches substitution step ( see reference examples 1-2 and 3). Nakatani et al also teaches the oxidation of product of Formula I to prepare Pyroxasulfone (see reference example 3). Nakatani et al does not teach the specific thionation agents as recited in claim 2. However, Nakatani et al teach the choice of the thionation agent allows an easier removal of the byproduct during the deprotection step.
Resolving the Level of Ordinary Skill in the Pertinent Art
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) the education level of active workers in the field.” Envtl. Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.3d 1376, 1381-82 (Fed. Cir. 1983)). The above factors are not exhaustive, but are a guide. Id.
In this case, the education level of the inventor and the education level of active workers in the field of organic chemistry, as well as the high degree of sophistication required to solve problems encountered in the art, a person of ordinary skill in the art would likely have at least a college degree in the field of organic chemistry, with industry experience, i.e., a masters or doctorate level of skill and knowledge in the laboratory. Thus, the level of skill in the art is relatively high.
Finding of prima facie obviousness
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. See MPEP 2143. Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" — choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Here one or more of rationales (C) and (G) apply.
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of Nakatani et al. to explore using other thionation agents as the instantly claimed invention. Since Nakatani et al. shows the use of thionation agents in the reaction. One skilled in the art would have been motivated to consider using other thionation agents to improve the removal of the byproducts during the deprotection step of the reaction.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991). See MPEP 2145, Section II. "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Accordingly, claims 1-6, 10, 11, 18 and 19 are rendered obvious in view of the references above. Applicant may wish to consider providing evidence of unexpected results to overcome the obviousness rejection.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMAL A SAEED whose telephone number is (571) 272-0705.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626