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 Remarks/After Non-Final rejection, filed June 16, 2026. As filed, claims 1, 4-18 are pending; of which, claim 1 is currently amended. Claims 4-7, 10-18 are withdrawn from consideration. Claims 1, 8-9 are examined herein.
Response to Remarks
Applicants’ amendments have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1.The rejection of claims 1-3, 8 and 9 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 Chem. 2019, 5161–5164 is withdrawn per amendment to claims to specify cyanide instead of hydrogen cyanide as reagent.
2.The objection to claim 3 is moot in view of cancellation of said claim.
The following are modified or new grounds of rejections necessitated by Applicants’ amendment, filed on 6/16/2026. The limitations in the amended claims have been changed and the breadth and scope of those claims have been changed.
3. Regarding Applicants argument pertaining to the elected species and claims 4-7 (Remarks page 6-7), as noted before, claim 1, 8-9 read on the elected species, DMPA/Se; claims 4-7 which require promoter additive, are drawn to a distinct catalyst compostion. Following election, the Markush-type claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. If the elected species is found to be allowable, then the search and examination will be expanded by the Examiner to consider additional species and subgenera within the generic formula until: (1) An art rejection can be made, or (2) The genus claim is found to lack unity of invention, or (3) The claims have been searched in their entirety. If the Markush-type claim is not allowable, as in instant case, the provisional election will be given effect and examination will be limited to the Markush-type claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration. The instantly elected species was searched and examined. It was determined that the elected species was not free of the prior art.
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.
Claims 1, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over
Qi et al, Eur. J. Org. Chem. 2019, 5161–5164 (cited in PTO-892 mailed 4/02/2026).
The publication by Qi teaches on Table 1 page 5161 a carbonylative synthesis mediated by catalyst selenium and DMAP 4-dimethylaminopyridine 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 as recited in claim 1.
Regarding the range of DMAP/Se of 0.5 to 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 outside of the claimed range.
Regarding instant clams 8 and 9, 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 difference between the instantly claimed process and the process of the prior art by Qi, is that the Se/DMAP catalyst requires a ratio of 0/5 to 3 (DMAP: Se), while prior art teaches a ratio of DMAP: Se of 4 to which is outside claims ratio.
MPEP §716.02 states :” Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, the prior art teaches the same catalyst composition as claimed in a ratio of DMAP/Se of 4. It is noted that selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). See MPEP 2144.05. The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990).
Absent clear, convincing, side-by-side data demonstrating unobviousness vis-a-vis the prior art commensurate with the scope of protection sought and showing that the claimed catalyst and the catalyst disclosed by prior art are distinct, the claims are considered prima facie obvious.
Conclusion
In view of the rejections of the pending claims set forth above, no claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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).
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.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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