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 1-18 are pending.
Election/Restrictions
Applicants’ election with traverse of Group I, and the species in the reply filed on 08/18/2026 is acknowledged. The election was made with traverse.
Pursuant to Applicant’s arguments, previously withdrawn claims and species of compound of the formula (I) are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 06/18/2026 is hereby withdrawn.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claims 1-18 are under current examination.
Claim Objections
Claims 1-18 are objected to because Claims 1-18 are fails to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Appropriate correction required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112a, because the specification, while being enabling for compounds in claim 18 and catalyzing reactions involving substrates of claim 8, does not reasonably provide enablement for the other compounds and reactions of any substrates that applicant is claiming. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Pursuant to In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), one considers the following factors to determine whether undue experimentation is required: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure, Some experimentation is not fatal; the issue is whether the amount of experimentation is "undue"; see In re Vaeck, 20 USPQ2d 1438, 1444.
Breadth of claims: Claims are drawn to a compound and a coupling process involving any substrate of any chemical nature:
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The claim is drawn to a myriad of compounds and substrates that vary independently and lead to compounds of a wide variety of structures. These compounds encompass molecules that widely vary in physical and chemical properties such as size, molecular weight, acidity, basicity, and properties that are known in the art to greatly influence physical and chemical properties. The claims cover compounds easily in the thousands given the number of variables; thus, the claims are very broad.
(B) See above.
(C) State of the Prior Art: Chemistry is unpredictable. See In Re Marzocchi and Horton 169 USPQ at 367 paragraph 3: "Most non-chemists would probably be horrified if they were to learn how many attempted syntheses fail, and how inefficient research chemists are. The ratio of successful to unsuccessful chemical experiments in a normal research laboratory is far below unity, and synthetic research chemists, in the same way as most scientists, spend most of their time working out what went wrong, and why.
In fact, most syntheses of structurally complex compounds are the result of several years of hard work by a team of chemists, with almost every step requiring careful optimization. The final synthesis usually looks quite different from that originally planned, because of unexpected difficulties encountered in the initially chosen synthetic sequence. Only the seasoned practitioner who has experienced for himself the many failures and frustrations which the development (sometimes even the repetition) of a synthesis usually implies will be able to appraise such work. Chemists tend not to publish negative results, because these are, as opposed to positive results, never definite (and far too copious)" Dorwald F. A. Side Reactions in Organic Synthesis, 2005, Wiley: VCH, Weinheim pg. IX of Preface.
(D) Skill of those in the art: The level of skill in the art is high.
(E) Level of predictability in the art: It is well established that "the scope of enablement varies inversely with the degree of unpredictability of the factors involved," and physiological activity is generally considered to be an unpredictable factor. See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
(F) Direction or Guidance: Little guidance or direction is provided by applicant in reference to making compounds other than those containing the variable in claim 18 and substrates of claim 8. The presence of various bulky heteroaryl or aryl rings or branched alkyl etc. and chemical groups and functionalities, attached to the compound's core may be chemically incompatible with the method of using compounds embraced in the instant claims. Specification offers no teachings or suggestions as to how to make and use these compounds. Also, note MPEP 2164.08(b) which states that claims that read on "... significant numbers of inoperative embodiments would render claims non-enabled when the specification does not clearly identify the operative embodiments and undue experimentation is involved in determining those that are operative."
(G) Working Examples: The compound core depicted with specific substituents in the instant claim 18 and substrates of claim 8, represent a narrow subgenus for which applicant has provided sufficient guidance to make and use; however, this disclosure is not sufficient to allow extrapolation of the limited examples to enable the scope of the compounds instantly claimed. Applicants have provided two compounds vs thousands of claimed compounds and their use with substrates of claim 8 vs any substrate of any chemical nature.
The specification gives some support on the synthesis of compounds of the instant claim 18, however it is too homogeneous to provide a clear evaluation of which moieties attached to the core out of the many claimed might affect the physical and chemical properties to a large or small degree. Chemical art is unpredictable, and target compounds need to be individually assessed for viability. Extremely broad generalizations as found in the instant claims are in contradiction with the basis of quantitative structure-activity-relationships (QSAR).
Within the specification, "specific operative embodiments or examples of the invention must be set forth. Examples and description should be of sufficient scope to justify the scope of the claims. Markush claims must be provided with support in the disclosure for each member of the Markush group. Where the constitution and formula of a chemical compound is stated only as a probability or speculation, the disclosure is not sufficient to support claims identifying the compound by such composition or formula." See MPEP 608.01(p).
(H) The quantity of experimentation needed: Since there is very limited working examples as described above, the amount of experimentation is expected to be high and burdensome. Applicants fail to provide guidance and supporting information for how to make and/or use the thousands of other compounds which are encompassed by the instant claims; therefore, undue experimentation would be expected.
Due to the level of unpredictability in the art, the very limited guidance provided, and the lack of working examples, the applicant has shown lack of enablement. MPEP 2164.01 (a) states, "A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)." That conclusion is clearly justified here.
Claims 1-18 are rejected under 35 U.S.C. 112a, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
A lack of adequate written description issue arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571,39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a "laundry list" disclosure of every possible moiety does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967).
An applicant may also show that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention, i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics. Applicant has provided characterization data of some of the organic molecules. But representative specifies of the organic molecule do not encompass number of variations in generic formula and do not satisfy the written description requirement.
In particular, the specification as original filed fails to provide sufficient written bases of myriads of compounds that vary independently and lead to compounds of a wide variety of structures. These compounds encompass molecules that widely vary in physical and chemical properties such as size, molecular weight, acidity, basicity, and properties that are known in the art to greatly influence physical and chemical properties. The claims cover compounds easily in the thousands given the number of variables; thus, the claims are very broad. The mere fact that Applicant may have discovered one specific type of an organic molecule/subgenus is not sufficient to claim the entire genus of claim.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]."
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 1-18 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 1-18 are indefinite:
Claim 1, 3, 4, 5, 12 are indefinite as these claims at several instances recite “preferably”. For instance, Claim 1, “Ra is alkyl---preferably, tertbutyl acyl”; “said metal atom --, preferably Li---Cs”, which reflects the use of narrow and broad limitations within the same claim. Claim 12 names specific quaternary ammonium compounds followed by broad limitation of any quaternary salt. Thus, scope of these claims is unclear.
Claim 1, 4, 7 are also indefinite as these claims recite “wherein at least any one of R1----R10 is essentially ---(X)”. This is because the proviso in the claim needs to be clear to if X is any one of R1---R10 and not essentially. Further, claim 7, step b refers “essentially adding”. It is an important step in the process and needs to be clear that compound of formula I is added. Applicant is suggested to delete “essentially”. For compact prosecution, the proviso is not considered.
Claim 11, 13, 18 are also indefinite as these claims recite alternatives in an improper Markush format. Applicant is suggested to use proper format, such as “selected from a group consisting of”.
Since dependent claims don’t cure the above deficiencies, these claims are also indefinite.
Appropriate correction required.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-12 and 14-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Haddad (US 9096626 B2).
Haddad discloses compound of formula:
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(same compounds as in the instant claims, please see rejection under 112b regarding moiety X as R) and its use in Suzuki Miyaura reaction with same reaction conditions, catalysts, C_C conversion, Pd catalyst and PTC (entire patent and examples).
Since the cited prior art reads on all the limitations of the instant claims 1-12 and 14-17, these claims are anticipated.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9096626 B2, since the claims, if allowed, would improperly extend the “right to exclude" already granted in the patent.
Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application and claims 1-9 of U.S. Patent No. 9096626 B2 are drawn to same compound with a difference in wording (please see rejection under 112b regarding moiety X as R).
The difference of wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-9 of U.S. Patent No. 9096626 B2. For the foregoing reasons, the instantly claimed process is made obvious.
Furthermore, there is no apparent reason why applicants were prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See also MPEP § 804.
Allowable subject Matter
Elected species and compounds of claim 18, present allowable subject matter over the prior art on record.
Conclusion
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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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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