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 .
DETAILED ACTION
Claims 1-10 of M. Uno et al., US 18/460,114 (Sep. 1, 2023) are pending. Claims 1-5 and 7-10 to the non-elected inventions of Group (I)-(III), (V), and (VI) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claim 6 is under examination on the merits.
Election/Restrictions
Restriction
Applicant elected of Group (IV) (claim 6), with traverse in the Reply to Restriction Requirement filed on February 27, 2026. Claims 1-5 and 7-10 to the non-elected inventions of Group (I)-(III), (V), and (VI) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction is made Final.
Applicant’s Traversal
Applicant argues that the Office has not shown the requirements of MPEP § 806.05(f) with respect to distinctness between inventions (I) and (IV). Applicant cites MPEP § 806.05(f), which states as follows:
A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown:
(A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or
(B) that the product as claimed can be made by another materially different process. MPEP § 805.05(f).
In response, the Restriction stated that inventions (I) and (IV) are related as process of making and product made. As stated in the restriction, in the instant case the product as claimed can be made by another and materially different process. Here for example, the materially different process of M. Kublicki et al., 58 Tetrahedron Letters, 2162-2165 (2017), as shown at page 2164, Table 2 or Table 3, could be used to make the claim 1, Formula (A1) compounds.
Applicant argues that the Office has not shown the requirements of MPEP § 806.05(j) with respect to distinctness between inventions (II) through (IV):
(A) the inventions as claimed do not overlap in scope, i.e., are mutually exclusive (i.e., a claim to the final product does not read on the intermediate, and vice versa);
(B) the inventions as claimed are not obvious variants; and
(C) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
MPEP § 806.05(j).
In response, the Restriction stated that inventions (II)-(VI) are directed to related processes. Here, the processes of Groups (II)-(IV) are mutually exclusive (do not encompass overlapping subject matter) because they involve different reactants/reagents and/or products and therefore do not read upon one another; there is no evidence of record, nor has Applicant argued that any Group is an obvious variant of another; and since the Groups involve different reactants/reagents and/or products, they clearly have a materially different design, mode of operation, function, or effect. For example, while claim 2 process product Formula (B1) may be an intermediate for claim 1 Formula (A1) the intermediate and final products are mutually exclusive inventions (not overlapping in scope) that are not obvious variants, and the intermediate product (B1) is clearly useful to make something other than the final product (A2) as claimed.
Applicant further argues that a search of all the claims would not impose a serious burden on the Office and in fact.
In response, as stated in the Restriction, there is a search burden between inventions (I)-(VI) because these Groups are directed to different to methods of making different compounds. As such, searching requires generating different search queries using CAS/CAPLUS software for the compounds and CASREACT software for the methods of preparation. Further electronic/hand searching is required respecting such different reactants within other databases, such as electron patent databases, textbooks/libraries, Google and Google Scholar.
Claim Objections
Incomplete Claim
Claim 6 (dependent upon claim 1) is objected to for referencing the subject matter of withdrawn claim 1 (i.e., claim 1, compounds (A1) or (A2) and their variable definitions), where claim 1 is withdrawn.
Claim 6 . . . A method for producing the compound according to claim 1 . . . G1, G2, X1, and M, are the same as in the formula (A1) or (A2) . . .
Claims should be complete in themselves and not reference embodiments in the specification or preceding claims that are not incorporated by dependency or are withdrawn. See MPEP § 2173.05(s). Appropriate correction is required, for example, by amending claim 6 to recite the elements of claim 1 that are to be incorporated into claim 6.
Note also that if the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete. MPEP § 608.01(n)(V). Thus, if claim 6 were to issue as a patent in the absence of claim 1 rejoinder, it would be rejectable.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1) Rejection over T. Fang et al., 8 Organic Chemistry Frontiers, 1991-1996 (published Feb. 26, 2021) (“Fang”)
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by T. Fang et al., 8 Organic Chemistry Frontiers, 1991-1996 (published Feb. 26, 2021) (“Fang”).
Fang purports to teach “the first synthesis of sp2-α-haloboronates via an in situ α-sp3-boron radical intermediate”, and proved high synthetic application value through subsequent transformations. Fang at Abstract. In Scheme 2, Fang teaches a number of reactions of fluoroalkylhalide (1) + borate ester (2) [Symbol font/0xAE] α-halo borate ester (3) that anticipate claim 6. Fang at page 1993, Scheme 2. Fang’s Scheme 2 reaction is reproduced below:
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Fang at page 1993, Scheme 2.
For example, Fang teaches synthesis of the α-haloboronate (3b) follows:
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Fang at page S8.
Fangs vinyl borate pinacol ester (2a) meets the claim 6 CH2=CH-(CH2)n-M, Formula (H1) where (per withdrawn claim 1) “M is BR1R2, R1 and R2 are each independently OR11 . . . two R11's may be linked to form a ring structure”.
Fang’s perfluoroiodobutane (1a) meets claim 6’s Formula (E1) G1-(CH2)m4-X1, where “G1 is a fluoroalkyl group” and m4 is zero.
Fang clearly teaches the claim 6 step of “reacting a compound represented by the following formula (E1) . . . with a compound represented by the following formula (H1)”.
Also, Fang’s product borate ester (3b) meets the limitations of base withdrawn claim 1 formula (A1). Fang therefore meets the claim 6 preamble recitation of “[a] method for producing the compound according to claim 1”. Note also, Fang’s product borate (3b) is the same as compound 1-3 disclosed in the specification prepared by reacting the same starting materials. Specification at page 29, line 1.
As such, Fang meets each and every limitation of claim 6, which is anticipated under § 102(a)(1).
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692