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 .
Status of the Claims
The amendment filed on 06/10/2026 has been entered. Claim 22 has been amended. Thus claims 1-8 and 22-28 are currently pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8 in the reply filed on 06/10/2026 is acknowledged. The traversal is on the ground(s) that in view of the amendment of claim 22 which incorporates the features of claim 1. This is not found persuasive because as stated in the previous Office Action, there is a serious examination burden as the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). Invention II of claims 22-28 is drawn to a method for producing compound of formula (5a) which includes a different process in addition to the scope of Invention I, claims 1-8.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The working data for the production of the production of compound of formula (4a), Examples 1-16, do not appear to be using the compound of formula (2a) as instantly claimed.
For purpose of discussion, Example 1 is reproduced herein
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103
568
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242
567
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In the above, potassium fluoride and perfluorohexanoyl fluoride form a compound specie of formula (1), as described on pages 15-16:
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198
565
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269
559
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Furthermore, the example uses iodine monochloride as the halogenating agent of the instant claim. However, nowhere in the above example or in the other examples that produce compounds for formula (4a) use any compounds that fall under the claimed compound of formula (2a).
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 –
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Litt (Litt, M. et al. Patent number US3,453,333A).
Regarding claim 1, Litt teaches in Table 1 a method for producing compound species that fall under the claimed formula (4a), the method comprising of reacting organic salt intermediates (species of the claimed formula (1)) in the presence of I2, Cl2 or Br2 as halogenating agent with olefins (species of the claimed formula (2a)).
Regarding claim 2, the halogenating agents in Litt are species of the claimed formula (3a).
Regarding claim 3, the corresponding Y+ of the organic salt intermediates in Litt are K+ or Cs+.
Regarding claims 4-5, the corresponding R1 in Litt are C3 alkyl groups.
Regarding claim 7, the corresponding R2a and R3a in some of the compounds of Litt are each independently H or C2 alkyl.
Regarding claim 8, the reactions in Litt are performed in the absence of a catalyst.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 6 is rejected under 35 U.S.C. 103 as being unpatentable over Litt (Litt, M. et al. Patent number US3,453,333A) in view Smolecule (“1-Chloro-1-fluoroethene” Deposit and available date Dec. 18, 2020).
The teachings of Litt have been set forth above.
Regarding claim 6, Litt fails to teach or suggest that the corresponding R4a is F or fluoroalkyl group. The deficiency is however cured by Smolecule.
Smolecule teaches 1-chloro-1-fluoroethene as an olefin that is commercially available before the effective filing date of the instant invention, in which the corresponding X1a is Cl, R4a is F and R2a and R3a are each H. Thus, replacing the olefin of Litt with that of Smolecule, and conducting the reaction of Litt, a skilled artisan would have a reasonable expectation of success in yielding a compound species of formula (4a), wherein R4a is F.
In accordance to MPEP 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) simple substitution of one known element for another to obtain predictable results applies.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the instant invention to perform a method for producing a compound of formula (4a), the method comprising step 1a of allowing a compound represented by formula (1) to react, in the presence of a halogenating agent, with a compound represented by formula (2a), wherein R4a is F or a fluoroalkyl group in view of the combination of Litt and Smolecule.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Evans (Evans, F. W. et al. “Formation of Fluorinated Ethers in a Modified Halohydrin Reaction” J. Org. Chem. (1968), 33(5), 1839-44) teaches in Tables III and VI a method for producing compound species of the claimed formula (4a).
Conclusion
Claims 1-8 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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