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 1-14, 43, 57, 67, 69, 72, 75, 78, 84, 89 are pending.
Election/Restrictions
Applicants’ election without traverse of Group I, and the species:
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in the reply filed on 09/22/2026 is acknowledged. The election was made without traverse.
The requirement is therefore made FINAL.
Since the elected species reads on claims 1-3, 6-13 and 89, these claims are under current examination. Claims 4, 5, 14, 43, 57, 67, 69, 72, 75, 78, 84 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicants are reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-3, 6-13 and 89 are under current examination.
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 1-3, 6, 7, 11, 12 are rejected under 35 U.S.C.102 (a)(2) as being anticipated by Choudhary (US 20220380502A1; effective filing date 04/23/2021).
Choudhary discloses genus, subgenus (encompass elected species) and species (encompassed by the instant genus):
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and method of preparing such compounds using same method as in the instant claim 89:
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(entire application). Paragraphs 0017, 0592 example 2, compound 4 reads on claims 1-3, 6, 7, 11, 12 when R1=R2=H; n=0; R4 and R5 are unsubstituted; R6=methyl.
Since the cited prior art reads on all the limitations of the instant claims 1-3, 6, 7, 11, 12, these claims are anticipated.
Claims 1-3, 6, 7, 11, 12 are rejected under 35 U.S.C.102 (a)(2) as being anticipated by Choudhary (US 12735380 B2; effective filing date 12/30/2021).
Choudhary discloses genus, subgenus (encompass elected species) and species (encompassed by the instant genus):
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and method of preparing such compounds using same method as in the instant claim 89:
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(entire application). Syringyl acrylate and syringyl methacrylate of Table 2, read on claims 1-3, 6, 7, 11, 12 when R1=R2=H; n=0; R4 and R5 are unsubstituted; R6=methyl.
Since the cited prior art reads on all the limitations of the instant claims 1-3, 6, 7, 11, 12, these claims are anticipated.
Claim Rejections - 35 USC § 103
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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.
Claims 1-3, 6-13, 89 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Choudhary (US 20220380502A1; effective filing date 04/23/2021).
Determining the scope and contents of the prior art
Choudhary discloses genus, subgenus (encompass elected species) and species (encompassed by the instant genus):
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492
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957
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and method of preparing such compounds using same method as in the instant claim 89:
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(entire application). Paragraphs 0017, 0592 example 2, compound 4 reads on claims 1-3, 6, 7, 11, 12 when R1=R2=H; n=0; R4 and R5 are unsubstituted; R6=methyl.
Ascertaining the differences between the prior art and the claims at issue
Choudhary teaches genus, subgenus (encompass elected species) and species (encompassed by the instant genus). The cited prior art further teaches species similar to the elected species with difference of R4 and R5 as ethyl (elected species) vs methyl (disclosed species of the cited prior art).
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference- Choudhary teaches genus, subgenus (encompass elected species) and species (encompassed by the instant genus). The cited prior art further teaches species similar to the elected species with difference of R4 and R5 as ethyl (elected species) vs methyl (disclosed species of the cited prior art). Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that compound similar to the cited prior art may be made according to the procedure disclosed by the cited prior art.
Since examples of species or subgenus taught by the cited prior art are structurally similar to that claimed, it would have been obvious to a person of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”
Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In reWilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Thus, the cited prior art meets limitation of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ compound.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Choudhary teaches genus, subgenus (encompass elected species) and species (encompassed by the instant genus).
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Since examples of species or subgenus taught by the cited prior art are structurally similar to that claimed, it would have been obvious to a person of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and making the instantly claimed compound with a reasonable expectation of success.
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 1-3, 6-13, 89 in the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12735380 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 are drawn to a compound and claims 1-20 of U.S. Patent No. 12735380 B2 are drawn to a composition comprising same compound (thus, discloses compound) as in the instant claims.
The difference of composition comprising compound Vs compound, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of claims 1-20 of U.S. Patent No. 12735380 B2. For the foregoing reasons, the instantly claimed compound is made obvious.
Furthermore, there is no apparent reason why applicant was 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.
Claims 1-3, 6-13, 89 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 23-29 of co-pending US application 17728865. 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 are drawn to a compound and claims 23-29 of co-pending US application 17728865 are drawn to a composition comprising same compound (thus, discloses compound) as in the instant claims.
The difference of composition comprising compound Vs compound, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application. For the foregoing reasons, the instantly claimed process is made obvious.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented yet.
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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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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