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, 6-33 are pending and under current examination.
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 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
Prosecution Insights