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 .
Status of the Application
Claims 1-17 are pending.
Election/Restrictions
Applicant's election with traverse of Group II, claims 3-8, directed to a process of making fluoroalkyl silane and the species:
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in the reply filed on 10/24/2025 is acknowledged. The election was made with traverse.
The traversal is on the ground(s) that the invention of Group I is fundamentally different from compound of reference CN `108. This is not found persuasive as the compound of Group I is obvious over the cited prior art. Further, please see the rejection as set forth below for the elected Group II, which is also obvious. Therefore, there is no special technical feature connecting different Groups and species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-2 and 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
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 request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 3-8 are under current examination.
Claim Objections
Claim 3 is objected to because of reaction scheme in the claim.
Appropriate correction is required.
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.
Claims 3-5 are rejected under 35 U.S.C. 112(b), 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.
Claims 3-5 are indefinite as:
Claim 3 recites “R1 is C1-10 alkyl, aryl, the aryl is---, the electron withdrawing substituted benzene ring--naphthyl”. This is because such recitation (aryl, the aryl is---, the electron withdrawing substituted benzene ring--) reflects use of narrower and broader limitations within the same claim. Thus, scope of claim is unclear.
Claim 3 is also indefinite as the claim recites alternatives in an improper Markush format and as an open group “electron donating group includes C1-10 alkyl---halogen”. Thus, metes and bounds of claim is unclear. Applicant is suggested to use format such as, “selected from a group consisting of”.
Claim 3 is indefinite as the claim recites PR23, with no description of what R2 represents.
Claim 4 is indefinite as the claim recites alternatives in an improper Markush format and as an open group “electron donating group includes --”. Thus, metes and bounds of claim is unclear. Applicant is suggested to use format such as, “selected from a group consisting of”.
Claim 5 recites “R2 is C1-10 alkyl, --aryl, and the aryl is---, the electron withdrawing substituted benzene ring--naphthyl”. This is because such recitation (aryl, the aryl is---, the electron withdrawing substituted benzene ring--naphthyl) reflects use of narrower and broader limitations within the same claim. Thus, scope of claim is unclear.
Claim 5 is also indefinite as the claim recites alternatives in an improper Markush format and as an open group “electron donating group includes C1-10 alkyl---halogen”. Thus, metes and bounds of claim is unclear. Applicant is suggested to use format such as, “selected from a group consisting of”.
Appropriate correction required.
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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 3-8 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida (US2014/0012027 A1).
Determining the scope and contents of the prior art
Yoshida teaches a method of making F-containing substituted compound:
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comprising reacting silyl compound
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with perfluoroalkyl group containing halide,
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(encompass elected species of product or reactant, when R8= Cl substituted alkyl group; R9 and R10=substituted or unsubstituted alkyl; m=0; l=3; X3=Cl, Br, I or Tf) in presence of alkali, specifically of lithium and examples, such as alkyl lithium, alkenyl lithium etc., and a solvent, such as THF, diethyl ether etc., at a temperature of, such as -78C with molar ratio of organofluorine compound (equivalent to RfX of the instant claims): halosilane as 1:1 to 1:20, such as 1:2; and organofluorine compound (equivalent to RfX of the instant claims): alkali as 1:1 or 1:0.5 (thus, reads on molar ratios of the instant claim 7) (Entire application, especially abstract, 0016-0021,0041-0043, 0058-0288 and claims).
Ascertaining the differences between the prior art and the claims at issue
Yoshida teaches a method of making F-containing substituted compound (encompass product) using silyl halide (encompass reactant) and perfluoroalkyl group containing halide (encompass reactant) in presence of alkali (organolithium compound) (encompass lithium compound of the instant claims) and solvent, but fails to teach the process with example of elected species using specific reactants; and specific species of organolithium compound of claim 5.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of example of the process with elected species using specific reactants - Yoshida teaches a method of making F-containing substituted compound (encompass product) using silyl halide (encompass reactant) and perfluoroalkyl group containing halide (encompass reactant) in presence of alkali (organolithium compound) (encompass lithium compound of the instant claims) and solvent. Thus, based on the guidance provided by the cited prior art on general synthesis of compounds (encompassing compounds of the instant claims) of the instant claims with same chemistry and functional groups, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that the method of the cited prior art may be useful in making compounds encompassed by the product genus taught by the cited prior art.
Further, Case law has established that it is prima facie obvious to simply employ a different starting material in a generally old reaction. In re Farkas and Sorm 152 USPQ 109 (1966).
With regards to the difference of specific species of organolithium compound of claim 5 - Yoshida teaches a method of making F-containing substituted compound (encompass product) using silyl halide (encompass reactant) and perfluoroalkyl group containing halide (encompass reactant) in presence of alkali (organolithium compound) (encompass lithium compound of the instant claims) and solvent. Thus, based on the guidance provided by the cited prior art on use of alkali and organolithium compound, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any commercially available basic organolithium compound may be useful in the process.
Further, Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'I Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Yoshida teaches a method of making F-containing substituted compound (encompass product) using silyl halide (encompass reactant) and perfluoroalkyl group containing halide (encompass reactant) in presence of alkali (organolithium compound) (encompass lithium compound of the instant claims) and solvent.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the method of the cited prior art may be useful in making compounds encompassed by the product genus taught by the cited prior art and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Citation of Relevant Prior art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Following is the relevance of the prior art made of record:
US 20020022734: The prior art teaches method of making compound of the instant claims using base and solvent.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623