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
This Office action is responsive to Applicant's Response to Election/Restriction, filed December 01, 2025. As filed, claims 1-20 are pending in the instant application.
Priority
This application filed 02/22/2023 is a National Stage entry of PCT/US21/46857, International Filing Date: 08/20/2021 PCT/US21/46857 Claims Priority from Provisional Application 63069318, filed 08/24/2020.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Newly added claims 16-20 are encompassed in the invention of Group I.
Applicant's election without traverse of Group I, claims 1-9 and 16-20, drawn to compounds of formula I in the reply filed on Dec. 01, 2025 is acknowledged.
In response to a further requirement for the election of a single disclosed species, Applicants further elected, the compound CH(SO3H)2-CH(SO3H)2 ( ethane-
1, 1,2,2-tetrasulfonic acid) of Example 1 shown on [0106] of the specification of the present application (also reproduced below) wherein in formula I three R groups are SQ3H and each remaining R is hydrogen.
The Applicants indicated that claims 1-9, 17-20 read the elected species.
Applicants' elected species was searched and examined. It was determined that the elected species was free of the prior art. For this reason, the search and examination of instant claim 1 was expanded to consider additional species and subgenera within the generic formula of instantly claimed compounds.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-9, 16-20 will be examined on the merits herein.
Claim Objections
1.Claim 1 is objected for reciting improper Markush language: the recitation in claims for definition of variables of Markush formula “selected from” should be changed to “selected from the group consisting of”. See MPEP 803.02. “A Markush-type claim recites alternatives in a format such as "selected from the group consisting of A, B and C."
2.Claim 4 is objected to because of the following informalities: claim 4 should be amended to recited to specify that variable R of formula CR2(SO3H)-CR2-SO3H are the same as defined in claim 3 to avoid potential indefiniteness issues.
3. Claim 7 is objected to because of the following informalities: claim 7 should be amended to recited to specify that variable R’ and n of formula CnH(2n+1)-CR'(SO3H)-CR'2-SO3H are the same as defined in claim 6 to avoid potential indefiniteness issues.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(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.
1.Claims 1- 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McElvain et al. Journal of the American Chemical Society 67.9 (1945): 1578-1581 (cited by Applicants in IDS).
Regarding instant claim 1 the article by McElvain teaches the compound of formula I in which n is 2 namely ethane-1,2-disulfonic acid
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which reads on the limitation of claim 1 the alkane multi-sulfonic acid having a total number of two carbon atoms, wherein the alkane multi-sulfonic acid does not comprise a halogen ( page 1578; experimental on page 1580).
Regarding claim 2, ethane-1,2-disulfonic acid disclosed by the prior art has a - CH2CH2 - a linear alkyl group.
Regarding claims 3 the ethane-1,2-disulfonic acid corresponds to claimed formula CR3-CR2-SO3H, wherein one terminal group R is SO3H; each remaining R groups are each hydrogen.
Regarding claims 4 and 5 the ethane-1,2-disulfonic acid corresponds to
claimed formula CR2(SO3H)-CR2-SO3H wherein all R are hydrogens, ethylene (-CH2CH2 -) moiety is a linear alkane.
Regarding claim 6 and 8, the ethane-1,2-disulfonic acid corresponds to claimed
formula CnH(2n+1)-CR'2-CR'2-SO3H, wherein n is 0; one R' is SO3H; and each remaining R' is independently hydrogen; ethylene (-CH2CH2 -) moiety is a linear alkane.
Regarding claim 7, the ethane-1,2-disulfonic acid corresponds to claimed
formula CnH(2n+1 )-CR'(SO3H)-CR'2-SO3H in which all four R' fragments are hydrogens and n is 0.
Regarding claim 9, the ethane-1,2-disulfonic acid corresponds to claimed
CH2(SO3H)CH2(SO3H).
Therefore, the prior art meets the limitations of instant claims.
2.Claims 1- 9, 17- 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roll et al. Journal of the American Pharmaceutical Association (1912-1977) (1957), 46, 578-80 (cited in PTO892 attached herewith).
Regarding instant claim 1 the article by Roll teaches the following alkane multi-sulfonic acid compounds and corresponding sodium salts on Table 1 page 579:
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The compounds disclosed by Roll, namely sodium salts of 1,1,-ethanedisulfonic acid, 1,2,-ethanedisulfonic acid , 1,2-propanenedisulfonic acid , 1,3-propanenedisulfonic acid ,1,1,2-ethanetrisulfonic acid, 1,2,3 propanetrisulfonic acid read on the limitation of claim 1 the alkane multi-sulfonic acid or salt thereof having a total number of two carbon atoms, wherein the alkane multi-sulfonic acid does not comprise a halogen.
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Regarding claim 2, the compound 1,2,3-propanetrisulfonic acid disclosed by the prior art has a - CH2CH2-CH2 - a linear alkyl group.
Regarding claims 3 and 18, the 1,1,2-ethanetrisulfonic acid compound corresponds to claimed formula CR3-CR2-SO3H, wherein two terminal R groups are each SO3H; each remaining R groups are each hydrogen; which reads on limitation of claim 18 wherein at least two R groups are SO3H.
Regarding claims 4 and 5, the 1,1,2-ethanetrisulfonic acid corresponds to
claimed formula CR2(SO3H)-CR2-SO3H and salt thereof wherein one R is SO3H and the remaining R groups are each hydrogen; ethylene (-CH2CH2 -) moiety is a linear alkane.
Regarding claim 6 and 8 and 19, the 1,1,2-ethanetrisulfonic acid corresponds to claimed formula CnH(2n+1)-CR'2-CR'2-SO3H or salt thereof, wherein n is 0; two R' groups are SO3H; and each remaining R' are hydrogen; ethylene (-CH2CH2 -) moiety is a linear alkane; which reads on limitation of claim 19 wherein at least two R’ groups are SO3H.
Regarding claim 7, the 1,1,2-ethanetrisulfonic acid corresponds to the claimed
formula CnH(2n+1 )-CR'(SO3H)-CR'2-SO3H or salt thereof in which one R’ is SO3H, three R' fragments are hydrogens and n is 0.
Regarding claim 9, the 1,1,2-ethanetrisulfonic acid corresponds to the claimed
species of formula CH2(SO3H)-CH(SO3H)2.
Regarding claim 17, the 1,1,2-ethanetrisulfonic acid reads on the limitation the alkane multi-sulfonic acid of claim 1 or the salt thereof, comprising at least three sulfonic acid groups.
Regarding instant claim 20, the article by Roll teaches the compound 1,1,2-ethanetrisulfonic acid of structure shown below, which corresponds to claimed species of formula CH2(SO3H)-CH(SO3H)2.
Therefore, the prior art meets the limitations of instant claims.
3.Claims 1- 8, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zuffanti et al. Journal of the American Chemical Society (1941), 63, 2999-3000 (cited in PTO892 attached herewith).
Regarding instant claim 1 the article by Zuffany teaches on Table 1 page 3000 the alkane sulfonic compounds:
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also shown below as displayed in the Registry data base:
CN 1,4-Butanedisulfonic acid (CA INDEX NAME)
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RN 54503-01-4 CAPLUS
CN 1,6-Hexanedisulfonic acid (CA INDEX NAME)
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368
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RN 101020-77-3 CAPLUS
CN 1,5-Pentanedisulfonic acid (CA INDEX NAME)
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Regarding instant claims 1, 2, 16, the compounds of prior art read on the limitation of claim 1 the alkane multi-sulfonic acid having a total number of two carbon atoms, wherein the alkane multi-sulfonic acid does not comprise a halogen (instant claim 1) and wherein the alkyl group is a linear alkyl group (instant claim 2); which reads on limitation of claim 16 wherein the total number of carbons is from 4 to 9.
Regarding claims 3 the ethane-1,2-disulfonic acid corresponds to claimed formula CR3-CR2-SO3H, wherein one terminal group R is SO3H; each remaining R groups are each hydrogen.
Regarding claims 4 and 5, the compounds of the prior art correspond to
Claimed formula CR2(SO3H)-CR2-SO3H wherein all R are hydrogens, ethylene (-CH2CH2 -) moiety is a linear alkane.
Regarding claim 6 and 8, the compounds of the prior art correspond to claimed
formula CnH(2n+1)-CR'2-CR'2-SO3H, wherein n is 0; one R' is SO3H; and each remaining R' is independently hydrogen; ethylene (-CH2CH2 -) moiety is a linear alkane.
Regarding claim 7, the compounds of the prior art correspond to claimed
formula CnH(2n+1 )-CR'(SO3H)-CR'2-SO3H in which all four R' fragments are hydrogens and n is 0.
Therefore, the prior art meets the limitations of instant claims.
Conclusion
Claims 1-9, 16-20 are rejected. Claims 10-15 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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