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
Claims 1, 6-8, 10, 12, 14, 16, 21 and 23-27 are pending in the application. Claims 1, 6, 7, 16, 21, 26 and 27
are rejected. Claims 8, 10, 12, 14 and 23-25 are withdrawn from further consideration.
Response to Amendment / Argument
Objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Election/Restrictions
The instant claims are being examined according to MPEP 803.02 where the search has been extended to include the species cited below under 35 USC 102.
Claim Objections
The third to last and second structures in claim 7 are identical. One instance should be deleted.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 6, 7 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bessiere et al. J. Chem. Research (S), 1997, 304-305.
The prior art teaches the following compounds on page 304:
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376
590
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Compound 21 is embraced by instant formula (I) where R1 is the eighth option recited in claim 1 and R2 is C2 alkyl. The compound is embraced by instant claims 1, 6, 7 (third compound), and 27.
Claim(s) 1, 6, 7, 16, 21 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 66113-10-8, which entered STN on November 16th, 1984.
CAS Registry No. 66113-10-8 is drawn to ethyl [4-(1-methylethenyl)-1-cyclohexen-1-yl]methyl carbonate, which has the following structure:
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146
306
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The compound is embraced by instant formula (I) where R1 is the eighth option recited in claim 1 and R2 is C2 alkyl. The compound is embraced by instant claims 1, 6, 7 (third compound), and 27.
Regarding instant claim 16, which is drawn to a composition comprising the compound and a carrier, the CAS Registry entry includes predicted properties including mass and molar solubilities at varying pH values. MPEP 2131.02 states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)
In this situation, a person having ordinary skill in the art in viewing the properties of the Registry entry would at once envisage a composition with the compound and water. Furthermore, the prior art is deemed to anticipate instant claim 21 since an aqueous composition could be sprayed.
Claim(s) 1, 16, 21, 26 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trivedi et al. Org. Lett. 2009, 11, 5650-5652.
Trivedi et al. teach the following reaction on page 5651:
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743
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The prior art teaches the following products in Table 2:
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216
691
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The corresponding reactants are embraced by instant formula (I) where R1 is the third to last, first or second options recited in claim 1 (and claim 26) and R2 is C3 alkenyl (embraced by instant claim 27). Regarding instant claim 16, at least the reaction mixture is embraced by claim 16 where the solvent can be considered a carrier. Similarly, a liquid reaction composition could be sprayed according to instant claim 21.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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