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 Claims 5-6 are withdrawn.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 Amendment
Applicant’s amendments have overcome the previously presented rejections. Additionally, amended claim 3 now embraces the elected species therefore the claim has been rejoined and is currently under examination.
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species found not allowable, the Markush-type claim shall be rejected and claims to the non-elected invention held withdrawn from further consideration.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found not allowable, the Markush-type claims have been rejected and the claims to the nonelected invention are held withdrawn from further consideration.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subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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