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
STATUS OF THE CLAIMS: Claims 1-22 are pending in this application.
Election/Restrictions
Applicant’s election of species in the reply filed on November 13, 2025 is acknowledged. This election was for search purposes only, and thus, all claims were examined.
Claim Rejections - 35 USC § 112, 2nd paragraph
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 5-22 (including claims dependent thereon) is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps in claim 5. See MPEP § 2172.01.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102 as being anticipated by Sun et al. (CN106674075).
This reference discloses compounds of Applicant’s formula 1 on page 5. (See Abstract and entire document). These compounds read on the instant claim. Since this reference teaches the exact compounds, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-2 are rejected under 35 U.S.C. 102 as being anticipated by Lombardi et al. (Org. Biomol. Chem.’2017).
This reference discloses compounds of Applicant’s formula 1 on pages 8218 (Fig. 1), 8219 (Schemes 2-3 and Table 1), page 8220 (schemes 3-4) and page 8221 (scheme 5). (See Abstract and entire document). These compounds read on the instant claim. Since this reference teaches the exact compounds, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 1-2 are rejected under 35 U.S.C. 102 as being anticipated by CAS Registry Number 771-82-2.
Claims 1-2 are rejected under 35 U.S.C. 102 as being anticipated by CAS Registry Number 100383-27-5.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
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(a) 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.
Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sun et al. (CN106674075).
Applicants claim pyrrolinone compounds of the following formula 1:
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142
148
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wherein all the variables are defined in the claim as the following:
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164
618
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.
Sun discloses a generic group pyrrolinone compounds of formula I, intermediates and Boc.
Applicant claims differ from the reference by reciting specific species and a more limited genus than the reference (i.e., replacing R1, R2 and R3 with various substituents such as alkyls, phenyl, H, and alkoxy and alkylthio).
It would have been obvious to one having ordinary skill in the art at the time of the invention to replace various substituents of formula I or add various substituents to formula I as taught by the reference, because it is generally known to a person skilled in the art that it would easily obtain other pyrrolinone compounds having through the substitution or changing of substituents. Additionally, Boc is a common protecting group used in synthetic chemistry. One of ordinary skill in the art would have been motivated to select the claimed compounds replacing R1, R2 and R3 with various substituents such as alkyls, phenyl, H, and alkoxy and alkylthio since such compounds would have been suggested by the reference as a whole. Further, a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. Thus, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Since Applicant’s claims are prima facie obvious in view of the teachings of Sun, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Wu Ronggui et al. (CN110092739).
Applicants claim pyrrolinone compounds of the following formula 1:
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142
148
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wherein R1 is benzyloxy or phenyl and the other variables are defined in the claim.
Wu Ronggui discloses a generic group pyrrolinone compounds of formula I, intermediates and Boc.
Applicant claims differ from the reference by reciting specific species and a more limited genus.
It would have been obvious to one having ordinary skill in the art at the time of the invention to replace various substituents of formula I or add various substituents to formula I as taught by the reference, because it is generally known to a person skilled in the art that it would easily obtain other pyrrolinone compounds having through the substitution or changing of substituents. Additionally, Boc is a common group used in synthetic chemistry. One of ordinary skill in the art would have been motivated to select the claimed compounds with various substituents since such compounds would have been suggested by the reference as a whole. Further, a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. Thus, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Since Applicant’s claims are prima facie obvious in view of the teachings of Wu Ronggui, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Thennati et al. (WO03057131).
Applicants claim pyrrolinone compounds of the following formula 1:
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142
148
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wherein R1 is benzyloxy or phenyl and the other variables are defined in the claim.
Thennati discloses a generic group pyrrolinone compounds of formula I, intermediates and Boc.
Applicant claims differ from the reference by reciting specific species and a more limited genus than the reference.
It would have been obvious to one having ordinary skill in the art at the time of the invention to replace various substituents of formula I or add various substituents to formula I as taught by the reference, because it is generally known to a person skilled in the art that it would easily obtain other pyrrolinone compounds having through the substitution or changing of substituents. Additionally, Boc is a common group used in synthetic chemistry. One of ordinary skill in the art would have been motivated to select the claimed compounds replacing R1, R2 and R3 with various substituents since such compounds would have been suggested by the reference as a whole. Further, a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. Thus, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Since Applicant’s claims are prima facie obvious in view of the teachings of Thennati, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Claims 5-12, 13-17 and 18-22 are rejected under 35 U.S.C. 103(a) as being unpatentable over Jacobi et al. (J. Org. Chem.’2000).
Applicants claim a method for preparing pyrrolinone compounds comprising:
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121
397
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Wherein all the variables are defined in the claim.
Jacobi discloses for preparing pyrrolinone compounds comprising Applicant’s method and includes the solvents, acid-base substances and reaction conditions. (See pages 8479-84810.
Applicant claims differ from the reference by reciting specific species and a more limited genus than the reference by using different substituents.
It would have been obvious to one having ordinary skill in the art at the time of the invention to replace various substituents of formula I or add various substituents to formula I as taught by the reference, because it is generally known to a person skilled in the art that it would easily obtain other pyrrolinone compounds having through the substitution or changing of substituents. Additionally, Boc is a common group used in synthetic chemistry. One of ordinary skill in the art would have been motivated to select the methods and claimed compounds various substituents since such compounds and methods would have been suggested by the reference as a whole. Thus, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Since Applicant’s claims are prima facie obvious in view of the teachings of Jacobi, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Conclusion
Claims 1-22 are pending. Claims 1-22 are rejected. No claims are allowed.
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/PAUL V WARD/ Primary Examiner, Art Unit 1622