DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined
under the first inventor to file provisions of the AIA .
2. 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 (i.e., changing from AIA to pre-AIA ) 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.
Election/Restrictions
3. Applicant’s election of Group I (claims 1-5 and 13-16), in the reply filed on April 2, 2026, is acknowledged. Because applicant did not distinctly and specifically point out
the supposed errors in the restriction requirement, the election has been treated as an
election without traverse (MPEP § 818.01(a)).
4. A search for the elected species:
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retrieved prior art (see SEARCH 6 of the attached search notes). Thus, the Markush
search will not be unnecessarily extended in this action.
5. Claims 6-12 are withdrawn from further consideration pursuant to 37 CFR
1.142(b) as being drawn to a nonelected invention of Group II, there being no allowable
generic or linking claim. Election was made without traverse in the reply filed on April 2, 2026.
Current Status of 18/483,844
6. Office Action is responsive to the amended claims of April 2, 2026.
7. Claims 1-5, 13-16 have been examined on the merits. Claims 1-5, 13-16 are original.
Priority
8. This application is a DIV of 18/070,827 11/29/2022 PAT 12,304,893, which is a DIV of 17/721,781 04/15/2022 PAT 11,542,241, which is a CON of PCT/US20/57726 10/28/2020, which claims benefit of 62/929,138 11/01/2019
9. The effective filing date is November 1, 2019.
Information Disclosure Statement
10. The information disclosure statements (IDS) submitted on October 10, 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Objection to Specification
11. The application is objected to since the title of the invention “AN EFFICIENT NEW PROCESS FOR SYNTHESIS OF 2-AMINO-5-CHLORO-N-3-DIMETHYLBENZAMIDE”.
MPEP 606. The words listed below are not considered as part of the title of an invention, these words should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. The term "new" will not be deleted when it is a part of a proper name, such as "New York". Similarly, the term "design" will not be deleted when it is a part of a term, such as "Design-aiding apparatus...".
A
An
The
Improved
Improvement(s) in/for/of
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Novel
Related to
Design
Design for/of (a)
Ornamental design
Ornamental
The following title is suggested: “EFFICIENT NEW PROCESS FOR SYNTHESIS OF 2-AMINO-5-CHLORO-N-3-DIMETHYLBENZAMIDE”.
Claim Rejections - 35 USC § 102
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.
13. Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JIANG (CN103058993 B, pub. 04/06/2014).
A machine translation of JIANG is provided and is cited below for text; the
original document is cited for figures/structures (Note: There is an error in translation of SO2Cl2. It should be sulfuryl chloride, not the thionyl chloride in the translation, which is the name for SOCl2).
Regarding claim 13 of chlorination of Formula III to Formula IV, the reaction of the elected species in claim14 is anticipated by JIANG (see the inserted picture below).
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JIANG teaches chlorination of compound 3 (the same compound as the second compound in claim 14) with sulfuryl chloride under reflux (internal temperature 118 oC) in acetic acid to affording compound 4 (para [0043], p 9 – para [0046], p.10), which is the elected product species and the same as the first compound in claim 14. Furthermore, the internal temperature of about 118 oC of the reaction disclosed by JIANG satisfies not only the temperature range of about 20 oC to 140 oC of the limitation in claim 15, but also the limit of about 120 oC to 130 oC (Taking account of 10% of the “about” range in instant application and the internal reaction temperature for JIANG’s teaching) in claim 16. Thus, JIANG anticipates claims 13-16.
Claim Rejections - 35 USC § 103
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, 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 factual inquiries 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.
14. 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.
15. Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JIANG (CN103058993 B, pub. 04/06/2014) in view of HAYASHI (Hayashi “Pot economy and one-pot synthesis” Chem. Sci., 2016, 7, 866–880).
Determining the scope and contents of the prior art
JIANG’s teaching on chlorination of compound 3 to compound 4 set forth above (¶ 13). In addition, JIANG teaches conversion of compound 2 to compound 3 in concentrated sulfuric acid with heating (paras [0039]-[0041]. p 9).
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Ascertaining the differences between the prior art and the claims at issue
JIANG teaches a conversion of compound 2 to compound 4 (which are the elected species of instant claim 1) in two steps through an intermediate compound 3.
The instant claim 1 recites the conversion compound 2 to compound 4 in one single step (one-pot process).
Resolving the level of ordinary skill in the pertinent art
The level of ordinary skill in the art is represented by an artisan who has
sufficient background in the development of methods and optimalization of reaction processes and possesses the technical knowledge necessary to make adjustments to reaction conditions to optimize/enhance the process. Said artisan has also reviewed the problems in the art regarding process optimalization and understands the solutions that are widely-known in the art.
Considering objective evidence present in the application indicating obviousness or nonobviousness
The instant claims 1-5 are prima facie obvious over JIANG in view of HAYASHI.
An artisan would be motivated to combine Jiang’s a two-step process (conversions of 2 to 3 and 3 to 4) into one single-pot process (2 to 4) since a one-pot procedure circumvents several purification procedures and can thus minimize chemical waste, save time, and simplify practical aspects at the same time as taught by HAYASHI (see Introduction, p 866). Moreover, the artisan would have a reasonable expectation of success of such combination as the reaction conditions of JIANG meet all the limitations of claims 1-5.
Double Patenting
16. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
17. Claims 1-5 and 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of US Patent No. US11542241B2 and claims 1 and 9 of U.S. Patent No. 12,304,893 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are in between steps from Formula II to Formula VI of the patent references. Claim 11 of patent ‘241 sets up the first part of the reaction from Formula II, then it drops in to claim 1, starting at formula III to reach to instant claims 1-5 after reaction of III with a halogenation reagent (step i).c)). The halogenation of Formula III in claim 1 yields Formula IV thereby anticipating instant claims 13-16. Likewise, Claim 9 of the patent reference ‘893 sets up the first part of the reaction from Formula II, then it drops in to claim 1, starting at formula III to reach to instant claims 1-5 after reaction of III with a halogenation reagent (step i).c)). The halogenation of Formula III in claim 1 yields Formula IV thereby anticipating instant claims 13-16.
Thus, claims 1 and 11 of patent ‘241 and claims 1 and 9 of patent ‘893 read on instant claims 1-5. Claim 1 of ‘241 and claim 1 of ‘893 read on instant claims 13-16.
Conclusion
18. No claims are allowable as presently written.
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/B.T./
Examiner, Art Unit 1625
/Andrew D Kosar/ Supervisory Patent Examiner, Art Unit 1625
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