CTNF 18/017,716 CTNF 86704 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15-aia AIA Claim(s) 11, 13, 15, and 16(s) is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Meng et al. (US 2011/0095273) (hereafter “Meng”) . Regarding claims 11, 13, 15, and 16, Meng teaches an electroluminescent device comprising an deuterated compound, such as PNG media_image1.png 222 259 media_image1.png Greyscale (paragraph [0155]-[0170]). Meng teaches that the compound is made from the following compound, PNG media_image2.png 113 124 media_image2.png Greyscale , which meets applicant’s formula 10 where Z8 is a leaving group, Br, and Z1-Z7 are D (paragraph [0145]). Regarding the method of making the compound, the claim is a product by process claim and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113 1.) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stipanovic et al. (Journal of Labelled Compounds and Radiopharmaceuticals-Vol. XXIV, No. 6 pages 741-743) (hereafter “Stipanovic”) in view of Giles et al. (Tetrahedron Letters 2015, 56, 747-749) (hereafter “Giles”) . Regarding claims 1-10, Stipanovic teaches the method of deuterating an aromatic compound by using the acid exchange method (page 741 summary). Stipanovic teaches that the to perform the acid exchange method, the aromatic compound is in a solution with heavy water, trifluoroacetic acid (catalyst), and tetrahydrofuran (THF) as the solvent and the solution is heated to 75 C (page 741 summary). Stipanovic does not teach where the solution contain an anhydride which is a compound that could be hydrolyzed by the heavy water and where the temperature of the reaction is between 80 C and 150 C. Giles teaches a method of deuterating aromatic compound using a deuterated trifluoroacetic acid exchange method (page 747 second and third paragraphs). Giles teaches that deuterated trifluoroacetic acid can be prepared quantitatively from trifluoroacetic anhydride and heavy water in essentially anhydrous fashion (page 747 third paragraph). Giles teaches that the acid catalyzed method can be done at a temperature between 80 C and 150 C, such as 110 C (page 748 Scheme 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Stipanovic to replace trifluoroacetic acid with trifluoracetic anhydride as taught by Giles. The motivation would have been to do in the reaction in essentially an anhydrous fashion. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to increase the reaction temperature in the method of Stipanovic to a temperature between 80 C and 150 C, such as 110 C as taught by Giles. Since Giles teaches acid catalyzed exchange reactions can occur at 110 C it would have been obvious to try to increase the reaction temperature to find the best reaction temperature to perform the reaction . Double Patenting 08-33 AIA 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. 08-35 Claim s 1-6 and 8-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-4 and 6-11 of copending Application No. 17/779,920 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are copending Application No. 17/779,920 are a species of the claimed invention and anticipated the claims of the instant application. Claim 1 of copending Application No. 17/779,920 corresponds to claims 1 and 4 of the instant application. Claim 2 of copending Application No. 17/779,920 corresponds to claim 2 of the instant application. Claim 3 of copending Application No. 17/779,920 corresponds to claim 3 of the instant application. Claim 5 of copending Application No. 17/779,920 corresponds to claim 6 of the instant application. Claim 6 of copending Application No. 17/779,920 corresponds to claim 6 of the instant application. Claim 8 of copending Application No. 17/779,920 corresponds to claim 8 of the instant application. Claim 9 of copending Application No. 17/779,920 corresponds to claim 9 of the instant application. Claim 10 of copending Application No. 17/779,920 corresponds to claim 11 of the instant application . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park et al. (US 2018/0226585) teaches deuterated compounds that meet the applicant’s claimed invention. Nakano et al. US 2020/0111962) teaches deuterated compounds that meet the applicant’s claimed invention. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW K BOHATY whose telephone number is (571)270-1148. The examiner can normally be reached Monday-Friday 7am-4pm. 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, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANDREW K BOHATY/Primary Examiner, Art Unit 1759 Application/Control Number: 18/017,716 Page 2 Art Unit: 1759 Application/Control Number: 18/017,716 Page 3 Art Unit: 1759 Application/Control Number: 18/017,716 Page 4 Art Unit: 1759 Application/Control Number: 18/017,716 Page 5 Art Unit: 1759 Application/Control Number: 18/017,716 Page 6 Art Unit: 1759 Application/Control Number: 18/017,716 Page 7 Art Unit: 1759 Application/Control Number: 18/017,716 Page 8 Art Unit: 1759 Application/Control Number: 18/017,716 Page 9 Art Unit: 1759
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