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 Claims
Claims 1 – 12 are pending.
Claims 1 – 12 are rejected.
Specification
The disclosure is objected to because of the following informalities: Table 2 for Experimental series 2 and Table 3 of Experimental series 3 use identical example numbers to referrer to different experimental conditions and results. It is suggested that the numbering in Table 3 be amended so that the numbering of Table 2 and Table 3 not overlap.
The disclosure is objected to because of the following informalities: page 1 of the original specification recites WO2017/131607; and states that it discloses an allene ketone can be isomerized to an unsaturated ketone with hydrogen. However, WO2017/131607 is to an oxygen mask, and there is no mention of allene ketone.
Appropriate correction is required.
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.
Claims 1 - 12 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 twice recites the broad recitation C1-10 alkyl group, and the claim also recites “particularly a methyl or and ethyl group” which is the narrower statement of the range/limitation.
In the present instance, claim 1 recites the broad recitation C1-10 alkylene group, and the claim also recites “particularly an ethylene or propylene” which is the narrower statement of the range/limitation.
In the present instance, claim 5 recites the broad recitation, R30=R31=R32=R33=R34, and the claim also recites “preferably R30=R31=R32=R33=R34=H”, which is the narrower statement of the range/limitation.
In the present instance, claim 8 recites the broad recitation formula (Illa) or (IlIb) is ranging from 1:15 to 1:1, and the claim also recites
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which is the narrower statement of the range/limitation.
In the present instance, claim 9 recites the broad recitation ammonium catalyst is ranging from 0.01 – 1 mol-%, and the claim also recites “preferably ranging from 0.02 - 0.6 mol-%, more preferably ranging from 0.05 - 0.6 mol-%,” which is the narrower statement of the range/limitation.
In the present instance, claim 11 recites the broad recitation a base or an acid, and the claim also recites “preferably a base” which is the narrower statement of the range/limitation.
In the present instance, claim 12 twice recites the broad recitation C1-10 alkyl group, and the claim also recites “particularly a methyl or and ethyl group” which is the narrower statement of the range/limitation.
In the present instance, claim 12 recites the broad recitation C1-10 alkylene group, and the claim also recites “particularly an ethylene or propylene” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2 – 11 are rejected for being dependent upon a rejected base claim.
Claim Rejections - 35 USC § 112
Claim 8 is 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.
Claim 8 recites:
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. Also, claim 8 recites:
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.
However, the disclosure set out ranges for formula (IIIb) (pp. 9, ln 11-13) that are identical to the second recitation ranges for formula (IIIa). For this reason it is not clear from the claim whether the second recitation of ranges actually apply to formula (IIIa). As such, the claim is indefinite and lacks clarity.
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.
Claim(s)1 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Green Chem., 2009, vol. 11,no. 6, pp. 843 – 847) in view of Hoffmann-LaRoche & Co. (GB865478) (LaRoche) and further in view of Shi et al. (US 6,380,437), Shi et al. (US 2002/0169342) (Shi 2) and Yang et al. (CN102320962(A)).
The rejected claims cover, inter alia, a process for the manufacture of an allene ketone of formula (I) by the reaction of a compound of formula (II) with a compound of formula (IIIa) or formula (IIIb) in the presence of an ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203].
Dependent claim 2 – 7 further limit the R groups. Dependent claims 8 and 9 further limit the amount of react in the process. Dependent claim 11 further limits the compound of formula (I).
However, Wang discloses a simple ammonium ionic liquids are efficient catalysts in promoting Saucy-Marbet reactions of unsaturated alcohols with unsaturated ethers to afford the corresponding unsaturated ketones. (abstract). Table 1 of Wang discloses the results of the Saucy-Marbet reactions catalyzed by simple ammonium ionic liquid under solvent free conditions. Scheme 1 discloses the reaction of dehydrolinalool with 2-ethoxypropene in a Saucy-Marbet reaction catalyzed by ammonium ionic liquids.
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Table 1 Entry 2 discloses the conversion of 88% and selectivity of 97% when {Et3NH]SSO4 were used. (pp. 844). Additionally, it was disclosed that optimal concentration of the ionic liquid to use as a catalyst is about 0.5%. (pp. 844, rt. col. para.3). Table 2, entries 2, 5 and 6, discloses that temperature influences the reaction. (pp. 844, rt. col. para. 3 to pp. 845).
The difference between the instantly claimed invention and Wang is as follows: the reaction of the compound of formula (II) and formula (IIIb); and ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203].
However, the reaction of the compound of formula (II) and formula (IIIb), the Examiner turns to the teaching of LaRoche. The prior art of LaRoche discloses a process for the manufacture of unsaturated ketones having a plurality of double bonds. The process according to LaRoche comprises reacting a 1,1-disubsittuted-propargl alcohol with a ketal or an enol ether. (pp. 1, left col. ln 14 – 45). The process can be depicted as follows:
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. (pp. 2). In LaRoche, R 1 represents a hydrogen atom or an alkenyl or alkyl radical containing form one to six carbon atoms; and R2 and R3 each represent an alky radical containing form one to six carbon atoms. (pp. 1, rt. col. ln 20 – 25).
Because each of the references teach a process for preparing unsaturated ketones of the allene type, it would have been obvious to one skilled in the art before the effective filing date of the instantly claimed invention to substitute a ketal of LaRoche for compound 2 of Wang in the process for producing the allene ketone product of the Saucy-Marbet reaction depicted in Wang.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
With regard to the use of an ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203]; the Examiner turns to the teachings of Shi, Shi 2 and Yang. The prior art of Shi discloses a Saucy-Marbet process or the preparation of unsaturated 4,5-allene ketones by reaction of tertiary propargyl alcohols with alkenyl alkyl ethers or ketals in the presence of aliphatic sulfonic acids or sulfonic acid salts. (abstract & col.1, ln 49 to col. 2 ln 55). The reaction of Shi takes place in the presence of pyridinium salts; such as, pyridinium p-toluenesulfonate. (col. 3, ln 27 – 29). Shi 2 discloses a Saucy-Marbet process or the preparation of beta, gamma, delta-allenic and/or alpha, beta, gamma, delta-conjugated di-unsaturated ketones by the reaction of propargyl alcohols with enol ethers in the presence of an acid catalyst at elevated temperature. (pp. 1, [0002]). The reaction of Shi 2 takes place in the presence of pyridinium salts; such as, pyridinium p-toluenesulfonate. (pp. 3, [0063). The catalyst of Shi and Shi 2 are not described as ionic liquid catalyst. However, for this reason the Examiner turns to the teaching of Yang. The process of Yang discloses a process for producing methyl propionate by the reaction of propanoic acid and methanol. The catalyst chosen for the reaction were chosen because they avoid the problems caused by the use of a strongly acidic catalyst such as sulfuric acid. In Yang the catalyst of choice included ionic liquid pyridinium hydrogen sulfate and pyridinium p-tolenesulfonate. (abstract).
Because Shi and Shi 2 each describe a reaction similar to the reaction of Wang with regard to producing allene ketones, wherein pyridinium salts are used as catalyst in both; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to substitute ionic liquid catalyst of Wang with the pyridinium salt catalyst of Shi or Shi 2. Additionally, base on the teaching of Yang an ionic liquid pyridinium hydrogen sulfate catalyst may be substituted for the catalyst of Shi or Shi 2. As such, one of ordinary skill in the art could reasonably presume that the ionic liquid pyridinium hydrogen sulfate catalyst could be substituted for the catalyst of Wang. Motivation for this substitution can be found in the teaching of Yang. The prior art of Yang is desiring to solve the problem caused by the use strongly acidic catalyst in their esterification reaction. The catalyst of ionic liquid pyridinium hydrogen sulfate and pyridinium p-tolenesulfonate solves the problems equipment corrosion caused by strong acidity catalyst.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
Claim Rejections - 35 USC § 103
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over of Hoffmann-LaRoche & Co. (GB865478) (LaRoche).
The rejected claim covers, inter alia, a process for the manufacture of a diene ketone of formula (IV) comprised of the steps: preparing a compound of the formula (1) according to claim 1; followed by b) isomerization of compound of the formula (1) in the presence of a base or an acid, preferable a base, to yield the diene ketone of the formula (IV).
Applicant is reminded that step a of claim 11 claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
However, LaRoche discloses the following reaction:
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, wherein R 1 represents a hydrogen atom or an alkenyl or alkyl radical containing form one to six carbon atoms; and R2 and R3 each represent an alky radical containing form one to six carbon atoms. (pp. 1, rt. col. ln 20 – 25). The reaction can take place in the presence of acidic or basic agents
The difference between LaRoche and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, LaRoche teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Claim Rejections - 35 USC § 103
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over of Bonrath et al. (US 8,802,898).
The rejected claim covers, inter alia, a process for the manufacture of a diene ketone of formula (IV) comprised of the steps: preparing a compound of the formula (1) according to claim 1; followed by b) isomerization of compound of the formula (1) in the presence of a base or an acid, preferable a base, to yield the diene ketone of the formula (IV).
Applicant is reminded that step a of claim 11 claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
However, Bonrath discloses the following reaction:
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The difference between Bonrath and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Bonrath teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Claim Rejections - 35 USC § 103
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over of Marbet (US 3,456,015).
The rejected claim covers, inter alia, a process for the manufacture of a diene ketone of formula (IV) comprised of the steps: preparing a compound of the formula (1) according to claim 1; followed by b) isomerization of compound of the formula (1) in the presence of a base or an acid, preferable a base, to yield the diene ketone of the formula (IV).
Applicant is reminded that step a of claim 11 claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
However, allene ketones can be allene ketones obtained may be rearranged by means of strong acidic or strong alkaline agents to the corresponding compounds having conjugated ethylene bonds. (col. 4, ln 23 – 59).
The difference between Marbet and the claimed invention is that it does not teach the invention with particularity so as to amount to anticipation (See M.P.E.P. §2131: "[t]he identical invention must be shown in as complete detail as is contained in the ...claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).).
However, based on the above, Marbet teaches the elements of the claimed invention with sufficient guidance, particularity, and with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill (the prior art reference teaches or suggests all the claim limitations with a reasonable expectation of success. (see M.P.E.P. § 2143).
Claim Rejections - 35 USC § 103
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (Green Chem., 2009, vol. 11,no. 6, pp. 843 – 847) in view of Hoffmann-LaRoche & Co. (GB865478) (LaRoche) and further in view of Shi et al. (US 6,380,437), Shi et al. (US 2002/0169342) (Shi 2) and Yang et al. (CN102320962(A)).
The rejected claims cover, inter alia, a reaction mixture comprising a compound of formula (II) with a compound of formula (IIIa) or formula (IIIb) and an ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203].
However, Wang discloses a Saucy-Marbet reaction mixture that includes a simple ammonium ionic liquids, unsaturated alcohols and unsaturated ethers. (abstract). Scheme 1 discloses the reaction mixture of dehydrolinalool with 2-ethoxypropene with ammonium ionic liquid catalyst.
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Table 1 Entry 2 discloses ionic liquid in the reaction mixture that produces the conversion of 88% and selectivity of 97% when {Et3NH]SSO4 were used. (pp. 844). Additionally, it was disclosed that optimal concentration of the ionic liquid to use as a catalyst in the reaction mixture is about 0.5%. (pp. 844, rt. col. para.3).
The difference between the instantly claimed invention and Wang is as follows: the reaction mixture contains the compound of formula (II) and formula (IIIb); and the reaction mixture contains the ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203].
However, regarding the reaction mixture that includes the compound of formula (II) and formula (IIIb), the Examiner turns to the teaching of LaRoche. The prior art of LaRoche discloses a process for the manufacture of unsaturated ketones having a plurality of double bonds. The process according to LaRoche discloses a reaction mixture comprising a 1,1-disubsittuted-propargl alcohol with a ketal or an enol ether. (pp. 1, left col. ln 14 – 45). The process can be depicted as follows:
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. (pp. 2). In LaRoche, R 1 represents a hydrogen atom or an alkenyl or alkyl radical containing form one to six carbon atoms; and R2 and R3 each represent an alky radical containing form one to six carbon atoms. (pp. 1, rt. col. ln 20 – 25).
Because each of the references teach a process for preparing unsaturated ketones of the allene type in a reaction mixture comprised of 1,1-disubsittuted-propargl alcohol with a ketal and a catalyst, it would have been obvious to one skilled in the art before the effective filing date of the instantly claimed invention to substitute a ketal of LaRoche for compound 2 of Wang in the reaction mixture of Wang in the process for producing the allene ketone product by the Saucy-Marbet reaction depicted in Wang.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
With regard to the reaction mixture being comprised of an ammonium catalyst of formula
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, wherein X = HSO4]- or [HS203]; the Examiner turns to the teachings of Shi, Shi 2 and Yang. The prior art of Shi discloses a Saucy-Marbet reaction mixture for the process for the preparation of unsaturated 4,5-allene ketones by reaction of tertiary propargyl alcohols with alkenyl alkyl ethers or ketals in the presence of aliphatic sulfonic acids or sulfonic acid salts. (abstract & col.1, ln 49 to col. 2 ln 55). The reaction of Shi takes place in the presence of pyridinium salts; such as, pyridinium p-toluenesulfonate, in the reaction mixture. (col. 3, ln 27 – 29 & l 59 - 67). Shi 2 discloses a Saucy-Marbet process for the preparation of beta, gamma, delta-allenic and/or alpha, beta, gamma, delta-conjugated di-unsaturated ketones by the reaction mixture of propargyl alcohols with enol ethers in the presence of an acid catalyst at elevated temperature. (pp. 1, [0002]). The reaction of Shi 2 takes place in the presence of pyridinium salts; such as, pyridinium p-toluenesulfonate, in the reaction mixture. (pp. 3, [0063] & Example 1). The catalyst of Shi and Shi 2 are not described as ionic liquid catalyst. However, for this reason the Examiner turns to the teaching of Yang. The process of Yang discloses a reaction mixture for a process for producing methyl propionate by the reaction of propanoic acid and methanol. The catalyst chosen for the reaction were chosen because they avoid the problems caused by the use of a strongly acidic catalyst, such as sulfuric acid. In Yang the catalyst of choice included ionic liquid pyridinium hydrogen sulfate and pyridinium p-tolenesulfonate. (abstract).
Because Shi and Shi 2 each describe a reaction mixture used for a reaction similar to the reaction of Wang with regard to producing allene ketones, wherein pyridinium salts are used as catalyst in both; it would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to substitute ionic liquid catalyst of Wang with the pyridinium salt catalyst of Shi or Shi 2 in the reaction mixture. Additionally, based on the teaching of Yang an ionic liquid pyridinium hydrogen sulfate catalyst may be substituted for the catalyst of Shi or Shi 2. As such, one of ordinary skill in the art could reasonably presume that an ionic liquid pyridinium hydrogen sulfate catalyst could be substituted for the catalyst of Wang. Motivation for this substitution can be found in the teaching of Yang. The prior art of Yang is desiring to solve the problem caused by the use strongly acidic catalyst in their esterification reaction. The catalyst of ionic liquid pyridinium hydrogen sulfate and pyridinium p-tolenesulfonate solves the problem of equipment corrosion caused by strong acidity catalyst.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 6 - 15 of copending Application No. 18/264,360 (‘360) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 – 10 of the instantly claimed invention cover, inter alia, the following:
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; wherein the R’s are as claimed, and X is [HSO4} or [HS2O3].
Claim 11 of the instantly claimed invention covers, inter alia:
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Claim 12 of the instantly claimed invention covers, inter alia:
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; wherein the R’s are as claimed, and X is [HSO4} or [HS2O3].
Clams 1, 2 and 6 – 13 of ‘360 cover, inter alia, the following:
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; wherein the R’s are as claimed, and X is [HSO4} or [HS2O3].
Claim 14 of ‘360 covers, inter alai:
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Claim 15 of ‘360 covers, inter alia:
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; wherein the R’s are as claimed, and X is [HSO4} or [HS2O3].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2008/092655 (Bonrath, W. ) discloses the process for the preparation of dienones by the isomerization of allene ketones. CN 109534977 (Xie, Shuo) discloses a process for the preparation of α, γ-unsaturated dienone by the isomerization of an allene ketone.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692