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 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.
Claims 1-4, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 19 and 20 recite the limitation "the substituted axial hydroxy-trans-cyclooctene" in lines 1-2 of the claim. There is insufficient antecedent basis for this limitation in the claims. Both claims ultimately depend from claim 17 which is drawn to a method for producing the alpha-substituted trans-cyclooct-4-enone of found in claim 9 of the present invention. There is no mention of an axial hydroxy-trans-cyclooctene in claims 9 or 17 of the invention.
Independent claims 1 and 17 recite parenthetical the limitation (400 MHz, CDCl3). It is not clear if the proton NMR must be conducted at the indicated MHz and solvent, or whether that is exemplary. Claims 2-4 and 18-20 depend from claims 1 and 17, respectively, and so are likewise indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The instant claims are drawn to a compound of formula (2a) as recited in claim 5, wherein R is selected from groups like allyl, cyano, acetohydrazide, hydroxyethyl, aminoethyl, etc.; however, claim 5 states that R is only selected from hydrogen, alkyl, aryl, and heteroaryl. Therefore, some of the substituents for R in claims 6 and 8 are broader than the definition of R in claim 5, from which the instant claims depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Crandall et al. (J. Org. Chem., 1974).
Crandall et al. disclose a trans-cyclooct-4-enone compound that is isolated at 95% purity, is produced by irradiating cis-cyclooct-4-enone, and is characterized by 1H NMR including peaks from 1.8 to 3.0, 5.1 to 5.9 (page 248, 2nd col.; page 249, experimental section). This disclosure anticipates the instant claims.
Claim(s) 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scinto et al. (J. Amer. Chem. Soc., 2019).
Scinto et al. disclose an axial hydroxy-trans-cyclooctene (1), wherein R of instant formula (2a) is hydrogen (page 10933). This disclosure anticipates the instant claims.
Claim(s) 9, 17, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolf et al. (Macromolecules, 2020).
Wolf et al. disclose an alpha-substituted trans-cyclooct-4-enone of formula (13) that formed by reaction of a trans-cyclooct-4-enone with a base (potassium tert-butoxide) and an electrophile (iodomethane). This disclosure anticipates the instant claims since the reference teaches an alpha-substituted trans-cyclooct-4-enone, wherein R’ in the instant claims is alkyl (methyl), and the electrophile used in the process is an alkyl halide (iodomethane).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 10 and 11 are drawn to trans-cyclooctene oxime conjugates not taught or suggested by prior art.
Claims 12-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach or suggest producing an axial hydroxy-trans-cyclooctene by contacting trans-4-cyclooct-4-enone with a Grignard reagent, an organolithium, or an organozinc compound, as recited by the instant claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
Prosecution Insights