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 .
Election/Restrictions
2. Applicant's election with traverse of Group II in the reply filed on December 29, 2025 is acknowledged. The traversal is on the ground(s) that lack of unity exists only if a common technical feature lacks novelty or is obvious. Applicants state that unity of invention is evidenced by the International Search Report in that all claims were searched. Applicants further argue that the examiner has not provided proper reasons as to why the groups lack unity of invention. Applicants further argue that the office failed to indicate that the inventions are differently classified and that search and examination would require burden. These arguments have been considered, however, they are not found to be persuasive.
Unity of invention is not evidenced by the International Search Report since that report shows that the common technical feature (ie product structure) is known in the art. Applicants arguments for classification and search/examination burden do not apply because these considerations are not relevant to the propriety of restriction in a national stage entry application.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be allowable. Therefore, the search and examination was extended. Prior art was found that makes obvious a nonelected species. The Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 14 and 15 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on December 29, 2025.
Status of Claims
5. Claims 1-15 are pending. Claims 1-13 are elected of which claim 1 is independent. Claims 14 and 15 are withdrawn.
Priority
6. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
7. The information disclosure statement (IDS) submitted on July 27, 2023 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith.
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.
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.
8. Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitra et al. as applied to claims 1-13 above, and further in view of WO 2011161216 and WO 2019201291 (equivalent to US 2021010891).
Determining the scope and contents of the prior art
Mitra et al. teaches coupling reactions of acetamide and 4-bromofluorobenzene (present claim 9 wherein R is alkyl, and present claims 10 and 11 wherein base is phosphate, and present claim 12 wherein solvent is DMF, and present claim 13 wherein temperature is > 90C)
PNG
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90
362
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Greyscale
in the presence of organometallic catalysts comprising various ligands:
PNG
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808
402
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Greyscale
.
Ascertaining the differences between the prior art and the claims at issue
Mitra et al. does not teach the at least one organometallic complex comprising at least one mono or polydentate phosphine ligand.
Resolving the level of ordinary skill in the pertinent art and considering objective evidence present in the application indicating obviousness
MPEP 2143 B provides basic requirements of prima facie case of obviousness including examples of rationale of the simple substitution of one known element for another to obtain predictable results. To reject a claim based on this rationale the following is considered below and applied to the present claims:
A finding that the prior art method differs from claimed method by the substitution of some component with another component
Mitra et al. does not teach the at least one organometallic complex comprising at least one mono or polydentate phosphine ligand. The prior art differs from the claims by substitution of a copper catalyst to organometallic complex comprising at least mono or polydentate phosphine ligand.
A finding that the substituted components and their functions were known in the art
The reference of WO 2011161216 teaches the reaction of 1-chloro-2,6-dibromo-4-fluorobenzene (49.8 mmol), pivalamide (49.8 mmol), Pd(dba)2 (2.490 mmol), 5-bis(diphenylphosphino)-9,9-dimethylxanthene (3.49 mmol) in dioxane at 70 degrees celsius. The Pd(dba)2 and bis(diphenylphosphino)-9,9-dimethylxanthene correspond to the precursor comprising one transition metal which is palladium (present claims 1-5). The reaction thus teaches to molar ratio of transition metal to ligand in the range of 1:1 and molar ratio of compound of formula II as claimed to amide of 1:1 (present claims 7, 8). The reference of WO 2019201291 teaches palladium catalyst [1,1’-bis(diphenylphosphino)ferrocene]palladium dichloride for palladium catalyzed cross coupling (present claim 6).
a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable
One of ordinary skill has the knowledge that the coupling reaction of Mitra et al. can be catalyzed by known elements which are other catalysts. The prior art describes organometallic complexes comprising mono or polydentate phosphine ligands as in the claims in a palladium catalyzed C-N coupling.
For the reasons provided above, the present claims are found to be prima facie obvious over the prior art.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621