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 3, 6, 8 are pending.
Amendment necessitated new claim rejection as set forth below.
Claim Objections
Claim 3 is objected to because of reaction scheme in the claim. See 37CFR 1.58.
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.
Claim 3 is 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.
Claim 3 is indefinite as:
Claim 3 recites “R2 is C1-10 alkyl, --an aryl, wherein the aryl is---, the electron withdrawing substituted benzene ring—naphthyl or ester group”. This is because ester group is not an aryl.
Claim 3 is also indefinite as the claim recites alternatives in an improper Markush format “electron donating group is selected from a C1-10 alkyl---halogen”. Applicant is suggested to use format such as, “selected from a group consisting of”.
Appropriate correction required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claim(s) 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The subject matter of instant claim 3, filed on 06/11/2026 is not properly described in the application as filed. In particular, there was no indication in original specification as filed that “temperature is -30~100 C” (there is a support for -78-100C but not for specific range -30~100C) and therefore raise doubt as to possession of the claimed invention at the time of filing. Applicant is required to cancel the new matter in the reply to this Office Action.
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, 6, 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, -50, -30C etc. 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, figures 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, specifically of lithium and examples, such as alkyl lithium, alkenyl lithium etc., (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 a compound alkali compound
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 alkali, such as organolithium - 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, specifically of lithium and examples, such as alkyl lithium, alkenyl lithium etc., (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.
Response to Arguments
Applicant’s remarks and amendment, filed on 06/11/2026, have been fully considered but not found persuasive.
Applicant argued over objection that there is no basis for the rejection and inclusion of reaction scheme in the claim is not objectionable.
This is not found persuasive and the objection is maintained. This is because reaction scheme in claims fails to conform with current U.S. practice. See 37CFR 1.58.
Applicant argued over rejection under 112b.
The argument is moot in view of new rejection as set forth above.
Applicant argued over rejection under 103 that the cited prior art is overly general and lacks specific guidance. Applicant argued that cited prior art provides no motivation or suggestion. Applicant argued that the cited prior art does not teach specific base or phosphorous compound and it is well known in the art that chlorosilanes are highly susceptible to hydrolysis etc., in presence of a strong base. Applicant argued over unexpected result as the reaction may be carried out at -30C vs the cited prior art -78C.
This is not found persuasive and the instant claims stand rejected. This is because if the cited prior art would have provided the specific example with specific base, the rejection would have been anticipation. The cited prior art provided guidance and suggestion to carry out the reaction with reactants and conditions as in the instant claims. Applicant only argued but provided no evidence that the halo silanes (cited prior art and the instant claims) are susceptible hydrolysis etc., with bases taught by the cited prior art.
An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration; 6) In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argument over unexpected result as the reaction may be carried out at -30C vs the cited prior art -78C, is again not persuasive because (1) range -30C~100C new matter (please see the rejection as set forth above); (2) all reaction examples in the instant specification are carried out at -78C; (3) the cited prior art also teaches reaction temperature of -78C, -50C, -30C. Thus, the result is not unexpected but expected.
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.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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