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 .
Status of Claims
Claims 1, 3-7, and 21-23 are pending in the instant application.
Claims 2 and 8-20 have been canceled.
Terminal Disclaimer
The terminal disclaimer filed on July 15th, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issued over Application Nos. 17/779,920 18/017,716 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Withdrawn Objections/Rejections
Applicant’s amendment is sufficient to overcome the rejection of Claims 1-8 under 35 U.S.C. 112(b). Applicant’s cancellation of Claims 2 and 8 renders the rejection thereof moot. This rejection is hereby withdrawn.
Applicant’s amendment is sufficient to overcome the rejection of Claims 1-4 and 6-8 under 35 U.S.C. 102(a)(1). Applicant’s cancellation of Claims 2 and 8 renders the rejection thereof moot. This rejection is hereby withdrawn.
Applicant’s filing of a terminal disclaimer is sufficient to overcome the provisional rejection of Claims 1-8 as being unpatentable over copending Application Nos. 17/779,920 18/017,716. Applicant’s cancellation of Claims 2 and 8 renders the rejection thereof moot. This rejection is hereby withdrawn.
The following rejections are necessitated by amendment:
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method for producing a deuterated aromatic compound wherein the aromatic compound is naphthalene, anthracene, 9-phenylanthracene, 9-bromoanthracene, 9-anthraceneboronic acid, 9H-carbazole, 3-bromo-9H-carbazole, 9-chlorodibenzo[b,d]furan-2-ol, dibenzo[b,d]thiophene, 5,11-dihydroindolo[3,2-b]carbazole, or 8-bromo-1-chlorodibenzo[b,d]furan, wherein the organic compound of Chemical Formulae 1 to 4 is methanesulfonic anhydride, trifluoromethanesulfonic anhydride, acetic anhydride, methyl acetate, ethyl acetate, or dimethylacetamide, does not reasonably provide enablement for producing any deuterated aromatic compound via a method comprising any compound reading on Chemical Formulae 1 to 4. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Pursuant to In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), one considers the following factors to determine whether undue experimentation is required: (1) The breadth of the claims, (2) The nature of the invention, (3) The state of the prior art, (4) The level of one of ordinary skill, (5) The level of predictability in the art, (6) The amount of direction provided by the inventor, (7) The existence of working examples and (8) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Nature of the invention:
The invention is drawn to a method for producing a deuterated aromatic compound.
Breadth of the invention:
The scope of the claimed invention is very broad, as it is drawn to a method for producing any deuterated aromatic compound comprising preparing a solution comprising an aromatic compound, heavy water, and any of the myriad compounds that read on Chemical Formulae 1 to 4. A person having ordinary skill in the art can readily envisage a plethora of aromatic compounds suitable for the preparation of a solution meeting the limitations instantly recited.
State of the prior art and predictability in the art:
The invention is directed to a method of preparing a genus of compounds, and therefore is chemical in nature. Per MPEP 2164.03, “The “predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. On the other hand, if one skilled in the art cannot readily anticipate the effect of a change within the subject matter to which that claimed invention pertains, then there is lack of predictability in the art. Accordingly, what is known in the art provides evidence as to the question of predictability. In particular, the court in In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971), stated:
[I]n the field of chemistry generally, there may be times when the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a particular broad statement put forward as enabling support for a claim. This will especially be the case where the statement is, on its face, contrary to generally accepted scientific principles. Most often, additional factors, such as the teachings in pertinent references, will be available to substantiate any doubts that the asserted scope of objective enablement is in fact commensurate with the scope of protection sought and to support any demands based thereon for proof. [Footnote omitted.]
The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every operable species is not required. A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. In re Vickers, 141 F. 2d 522, 526-27, 61 USPQ 122, 127 (CCPA 1944); In re Cook, 439 F.2d 730, 734, 169 USPQ 298, 301 (CCPA 1971). However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. In re Soll, 97 F.2d 623, 624, 38 USPQ 189, 191 (CCPA 1938). In cases involving unpredictable factors, such as most chemical reactions and physiological activity, more may be required. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (contrasting mechanical and electrical elements with chemical reactions and physiological activity). See also In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Vaeck, 947 F.2d 488, 496, 20 USPQ2d 1438, 1445 (Fed. Cir. 1991). This is because in art areas having a high degree of uncertainty (i.e. the unpredictable arts) it is not reasonably predictable from the disclosure of one species, what other species will work.”
Level of ordinary skill in the art:
An ordinary artisan in the area of development of organic chemical compounds, in this case deuterated aromatic compounds, would have experience in synthesizing chemical compounds and developing new methods of synthesis thereof. The synthesis of new compounds, while complex, is routine in the art. The process of developing new methods for chemical synthesis, prior to synthesizing and testing these methods is generally not well-known or routine, given the complexity and uncertainty of developing novel synthetic methods.
The amount of direction provided and working examples:
Beginning at Page 82 of the instant specification, several examples of the instantly claimed method are disclosed. While applicant sufficiently discloses a method for producing a deuterated aromatic compound wherein the aromatic compound is is naphthalene, anthracene, 9-phenylanthracene, 9-bromoanthracene, 9-anthraceneboronic acid, 9H-carbazole, 3-bromo-9H-carbazole, 9-chlorodibenzo[b,d]furan-2-ol, dibenzo[b,d]thiophene, 5,11-dihydroindolo[3,2-b]carbazole, or 8-bromo-1-chlorodibenzo[b,d]furan wherein the prepared solution comprising a compound of Chemical Formulae 1 to 4 that is methanesulfonic anhydride, trifluoromethanesulfonic anhydride, acetic anhydride, methyl acetate, ethyl acetate, or dimethylacetamide, these limited examples are insufficient to enable the method as broadly claimed.
Quantity of experimentation needed to use the invention based on the content of the disclosure:
The quantity of experimentation needed is undue experimentation. A person having ordinary skill in the art would need to identify and/or develop suitable reaction conditions to prepare deuterated aromatic compounds other than those stated above, with no assurance of success.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed would not have taught one skilled in the art how to make and/or use the full scope of the invention without undue experimentation.
The specification fails to provide enough support for the broadly claimed method of producing a deuterated aromatic compound.
Genentech Inc. V. Novo Nordisk A/S (CAFC) 42 USPQW2d 1001 states that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “patent protection is granted in return for enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable”.
Therefore, in view of the Wands factors and In re Fisher (CCPA 1970) discussed above, to practice the claimed invention herein, a person having ordinary skill in the art would have to engage in undue experimentation to produce deuterated aromatic compounds other than those stated above.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graczyk et. al. (“Oxidative Alkenylation of Aromatic Esters by Ruthenium-Catalyzed Twofold C-H Bond Cleavages”, Organic Letters, 2012; hereinafter referred to as Graczyk).
At Page 4112, Scheme 6, Graczyk teaches the following reaction scheme:
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This reaction scheme reads on the method claimed at instant Claim 1. An aromatic compound comprising one aromatic ring, compound 1a, is prepared in solution with heavy water and compound 2a, a compound of Chemical Formula 3, as recited at instant Claim 1. Compound 2a, above, reads on the limitations of a compound of Chemical Formula 3 when R5 is ethenyl and R6 is ethyl. The solution, as noted above, is heated at 100 oC.
While the solution contains additional components, this reaction reads on the instantly claimed method, as the method is drawn to preparing a solution comprising an aromatic compound comprising one or more aromatic rings, heavy water, and an organic compound of one of Chemical Formulae 1 to 4. Per MPEP 2111.03, I., “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)”.
Regarding Claim 21, the aromatic compound includes a substituted benzene ring.
Conclusion
Claims 1, 3-7, and 21-23 are rejected.
No claim is allowed.
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 DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.J.B./Examiner, Art Unit 1624
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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