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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/16/26 has been entered.
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) 7 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gupta, M.; Kumar, P.; Bahadur, V.; Kumar, K.; Parmar, V. S.; Singh, B. K. Eur. J. Org. Chem. 2018, 896-900 [IDS 7/16/26].
Regarding claims 7 and 10-11: Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) discloses aroylation of N-methylquinolone [Scheme 1, X = N-CH3], wherein N-methylquinolone 6 is reacted with benzaldehyde 7 to afford 8b [Table 4]. Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) discloses 4‐methylbenzaldehyde, 4‐bromobenzaldehyde and 2‐fluorobenzaldehyde as aldehydes 4 [Table 3].
While Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) does not specifically disclose reacting N-methylquinolone 6 with 4‐methylbenzaldehyde, 4‐bromobenzaldehyde and/or 2‐fluorobenzaldehyde as aldehyde 7, if one of ordinary skill in the art is able to “at once envisage” the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be “at once envisaged.” One may look to the preferred embodiments to determine which compounds can be anticipated. In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962) [see MPEP 2131.02].
Note Scheme 1:
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[Scheme 1];
8b:
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[Table 4];
Reaction of 6 with 4‐methylbenzaldehyde:
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[Scheme 1; Tables 3-4];
Reaction of 6 with 4‐bromobenzaldehyde:
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[Scheme 1; Tables 3-4];
Reaction 6 with 2‐fluorobenzaldehyde:
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[Scheme 1; Tables 3-4].
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gupta, M.; Kumar, P.; Bahadur, V.; Kumar, K.; Parmar, V. S.; Singh, B. K. Eur. J. Org. Chem. 2018, 896-900 as applied to claim 7 above.
Regarding claim 9: Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) discloses the basic claimed photoinitiator [as set forth above with respect to claim 7]; wherein Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) discloses R as H or OMe [Scheme 1].
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [see MPEP 2144.09].
Allowable Subject Matter
Claims 1-6 and 18 are allowable.
Claim 12 is 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 following is a statement of reasons for the indication of allowable subject matter: Tomisawa et al. (Chem. Pharm. Bull. 1974, 22, 2091) discloses the synthesis of 3-benzoyl-1‐methyl-2(1H)‐quinolone (VII). There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of VII. Tomisawa et al. (Chem. Pharm. Bull. 1974, 22, 2091) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl corresponding to instant claim 7.
Kaya et al. (WO 2004/103974) discloses the compounds are used in medicinal compositions and selectively acts on cannabinoid receptors [abstract]. There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of 2-C-5. Kaya et al. (WO 2004/103974) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl corresponding to instant claim 7.
Maiti et al. (Synlett 2011, 14, 2001) discloses the synthesis of 6m. There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of 6m. Maiti et al. (Synlett 2011, 14, 2001) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl corresponding to instant claim 7.
While Gupta, M.; Kumar, P.; Bahadur, V.; Kumar, K.; Parmar, V. S.; Singh, B. K. Eur. J. Org. Chem. 2018, 896-900 discloses aroylation of N-methylquinolone [Scheme 1, X = N-CH3; R1 = aryl], wherein R can be OMe [Scheme 1, R = OMe], Gupta et al. (Eur. J. Org. Chem. 2018, 896-900) does not disclose aroylation of N-methylquinolone having at least two Rs as OMe (instant claim 12).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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