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 .
Claim Status
Claims 1 and 3-8 are pending. Claims 5-6 are withdrawn. Claims 1, 3-4 and 7-8 are rejected.
Response to Arguments
Applicant's arguments filed June 29th, 2026, have been fully considered but they are not persuasive. Applicant traverses the rejection of claims 1, 3-4 and 7-8 under 35 USC 102 arguing that the cited compound at least does not include a portion corresponding to Nu in Applicant’s claim 1. The argument states that the -CO2Et group of the prior art compound does not correspond to Applicant’s Nu group as an ester cannot function as a nucleophile under the conditions of prior art compound 18. Furthermore, Applicant asserts that carbonyl is not an alkyl group corresponding to the Nu group of the instant claims. To Applicant’s first point, the instant claims do not require that the Nu group serve as a nucleophile under the conditions of the compound furthermore the instant specification provides no explicit definition for nucleophile that suggests what context that the substituent must be able to perform as a nucleophile. In fact, the specification merely suggests “those of ordinary skill in the art may select any nucleophilic group for NU…according to the desired use of the organodifluorine synthon” in paragraph [0028]. This language suggests that even a carbonyl could be a nucleophile in one of the few instances where it does not perform as an electrophile. With regards to the assertion that the carbonyl carbon is not an alkyl group, the specification defines alkyl as an optionally substituted hydrocarbon radical having from 1 to about 20 carbon atoms. The carbonyl carbon is a single carbon, i.e, a 1 carbon alkyl substituted by an oxo group and an alkoxy group. MPEP 2111.01 IV A states:
An applicant is entitled to be their own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s) in the specification at the relevant time. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994)
Within the scope of Nuc, Applicant defines an alkyl group and further defines, without limitation, that alkyl groups can be substituted.
Election/Restrictions
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears free of the art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markus-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the non-elected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claims 1, 3-4 and 7-8 where the compound is the following:
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this species of which are anticipated and not allowable under 35 USC § 102.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and the claims to the nonelected invention are held withdrawn from further consideration. Examination has been limited to claims embracing the elected species which are claims 1, 3-4 and 7-8. Claims 1, 3-4 and 7-8 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has not been found allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 5-6 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.
Claim Rejections - 35 USC § 102
(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.
Claim(s) 1, 3-4, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoyama et al. J. Chem. Soc., Perkin Trans. 1, 1995, 1905-1912.
The prior art discloses compound 18, Ethyl (2R*,3R*)2-(tert-butyldimethylsiloxy)-4,4-difluoro-3-(p-methoxypheny1)pentanoate, on page 1907:
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The compound reads on claims 1, 3-4 and 7-8, and is embraced by instant formula (I) where R is aryl, Nu is alkyl, and E is alkyl.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/A.A.C./Examiner, Art Unit 1626 /MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
