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
This Office action is responsive to Applicant's Response to Election/Restriction, filed Feb. 02, 2026. As filed claims 1-18 are pending.
Priority
This application filed 06/02/2023 is a National Stage entry of PCT/KR2021/008715 , International Filing Date: 07/08/2021 claims foreign priority to 10-2020-0168049, filed 12/04/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/02/2023 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Accordingly, the IDS has been considered by the examiner and a signed copy is enclosed herewith.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-9, drawn to a catalyst system, in the reply filed on 10/1/2018 is acknowledged.
In response to a further requirement for the election of a single disclosed species, Applicants further elected Se/4-(dimethylamino)pyridine (DMAP).
The elected species Se/4-(dimethylamino)pyridine (DMAP); DMAP corresponds to claimed formula I wherein variables are:R1 and R2 are each -CH3.
Claims 1-3 read on the elected species of Se/pyridine catalyst system..
Regarding election of species for Structural Formula 2 of Claim 8: Bis(2-methoxyethyl) carbonate and for Structural Formula 3 of Claim 9: 2-Methoxyethanol(MEG)- it is noted that these are pertaining to the carbonate derivative- intended use of claimed catalyst system.
Claims 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicants’ elected species is not allowable due to the following e rejection.
Claims 10-18 are withdrawn from consideration as drawn to non-elected invention. Claims 4-7 are withdrawn from consideration as drawn to non-elected species.
Claims 1-3, 8-9 are examined herein to the extend they read on the elected species.
Claim Objections
Claim 3 is objected to because of the following informalities: the parenthesis of the limitation “(DMAP/Se)” should be removed to avoid potential indefiniteness issues.
Appropriate correction is required.
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.
(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, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Qi et al, Eur. J. Org. Chem. 2019, 5161–5164 (cited in PTO-892 attached herewith).
The publication by Qi teaches on Table 1 page 5161 a carbonylative synthesis mediated by catalyst selenium and DMAP 4-dimethylaminopyridine - and which corresponds to the claimed catalyst system comprising Se and a pyridine amine compound represented by Structural Formula 1, in which R1, R2 are each methyl - the elected species recited in claim 2.
Regarding instant claim 3, the reference teaches in the experimental section on page 5163 the ratio of 0.5mmol Se to 2 mmol DMAP which corresponds to a ratio of DMAP/Se of 4 which is within the range of 0.5-5 of claim 3.
With respect to the limitations drawn to the “for preparing a carbonate derivative” of claim 1 as it pertains to claimed catalyst system, the limitation of claim 8 “wherein the carbonate derivative is a compound represented by Structural Formula 2” and the limitation of claim 9 “wherein the carbonate derivative is bis(2-methoxyethyl) carbonate” : these limitations are drafted as an “intended use.” MPEP 2111.02(II) provides the following instruction for interpreting the preamble of a claim:
“During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim.”
See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir.1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”) and Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where the claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
In the instant case, the intended use limitations do not carry any patentable weight because the limitations do not further limit the structure of the claimed catalyst composition comprising Se/pyridine compound of formula I. Furthermore, according to Qi et al. the prior art composition Se/pyridine is clearly capable of performing the claimed intended use. Since Qi et al. teaches the limitations of the claimed composition and the elected species Se/DMAP, the instant claims are properly anticipated thereby.
Conclusion
Claims 1-3, 8, 9 are rejected. Claims 4-7, 10-18 are withdrawn from consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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