Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgement of Election
2. Applicant’s election without traverse of Group II, claims 1-8 and 13-16, in the reply filed on 09 July 2026 is acknowledged. Accordingly, clams 9-12 and 17 have been withdrawn from further consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112
3. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 1-8 and 13-16 are 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.
Firstly, with respect to claim 1, the step a) reacting step to obtain at least one suitably substituted derivative is vague and imprecise with respect to the nature of the reaction and what constitutes a suitably substituted derivative to such an extent that the metes and bounds of the claims cannot be determined. The step lacks the necessary specificity.
Secondly, with respect to claim 1, the step d) deprotecting step is vague and imprecise as to intent/operation, since no protecting operation has been set forth in the previous steps.
Thirdly, with respect to claim 8, the language, “the optionally present catalyst and catalyst support material”, lacks antecedence.
Prior Art Rejection
5. 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.
6. Claims 1-8 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Thiyagarajan et al. (Renewable Rigid diamines:Efficient, Stereospecific Synthesis of High Purity Isohexide Dianines.
Thiyagarajan et al. disclose the production of isohexide diamines from isohexide diols (isosorbide), wherein isohexide diols are first reacted with p-toluenesulfonyl chloride to yield a derivative, corresponding to applicants’ step a); then the derivative is aminated by reaction with benzyl amine, corresponding to applicants’ step b), then the resulting product mixture was subjected to removal of excess benzyl amine under reduced pressure, precipitation of benzylammonium tosylate salts, and short path distillation, these process operation corresponding to applicants’ step c), then the bisbenzyl amines were subjected to deprotection using a palladium catalyst. See Scheme 1 and disclosure within columns 1 and 2 of page 1824 under the heading, “Results and Discussion”. Though the reference fails to disclose applicants’ claimed step e) purification operation, the position is taken that it would have been obvious to subject the resulting isochexide diamine product mixture to purification to remove impurities resulting from the deprotection operation, such as catalyst residues and the disclosed ethanol. In view of the nature of the impurities, the position is taken that it would have further been obvious to use such conventional separation operations as the claimed extraction and distillation methods of claim 8, especially in view of the disclosure pertaining to the employed separation operations employed after amination, referenced above.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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