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 the Application
Claims 1-4, 6-36 are pending and under current examination.
Amendment necessitated new claim rejection as set forth below.
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.
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.
Claims 1-4, 6-33 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 pre-AIA the applicant regards as the invention.
Claims 1-4, 6-33 are indefinite as:
Claim 1 recites “low temperature”, wherein “low” is a relative term and renders the claim indefinite. This is because said term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 3 recites “low temperature”, wherein “low” is a relative term and renders the claim indefinite. This is because said term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 33 recites “low temperature”, wherein “low” is a relative term and renders the claim indefinite. This is because said term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Appropriate correction required.
Since the dependent claims 2-4 and 6-33 doesn’t cure the above deficiencies, these claims are also indefinite.
Citation of Relevant Prior art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Following is the relevance of the prior art made of record:
US 20120189546 A1: The prior art teaches a method of preparing compound 2 from compound 3; compound 3 from compound 4; and compound 4 from compound 5 as in the instant claims with a difference that the cited prior art method of purification of compound 2 is different (involves triple distillation) from the instant claims and does not involve formation of salt by treatment with base followed by treatment with acid. Further, the cited prior art does not teach trifluoroalkylation of compound 2 to form compound 1.
Bugera (JOC; 2019, 84; 16105-16115): teaches a method of making (1) from compound 2 as in the instant claims with a difference that process of Bugera uses water instead of organic solvent of the instant claims.
Kautzky (JACS; 2018, 140, 6522-6526)-teaches a method of making compound similar to 1 (different with respect to ring size, halogen substitution and optical activity) from starting compound similar to 2 (different with respect to ring size, halogen substitution and optical activity) using trifluoromethylating agent in organic solvent as in the instant claims.
Allowable Subject Matter
Claims 34-36 presents allowable subject matter over the cited prior art.
Objection
Claims 34-36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicants’ remarks and amendments, filed on 09/09/2026, have been fully considered but not found persuasive.
Applicants argue that the “claim language employing terms of degree---- enough certainty to one of ordinary scale in the art when read in the context of the invention”.
This is not found persuasive as in the instant claims the terms of degree does not have enough certainty to one of ordinary scale in the art when read in the context of the invention.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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