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 Claims
Claims 1-19 are pending in the instant application.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed May 1st, 2024 was considered by the Examiner.
Elections/Restrictions
Search and examination was expanded to include the entire scope of claim 1. Accordingly, the election of species requirement is withdrawn.
The elected species, potassium as the metal and tris[2-(2-methoxyethoxy)ethyl]amine (TDA) as the phase transfer catalyst, are directed to allowable. Pursuant to the procedures set forth in MPEP § 821.01(B), the Markush grouping directed to the remaining species of metal and phase transfer catalyst previously withdrawn from consideration as a result of an election requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all species previously withdrawn from consideration under 37 CFR 1.142 have been expanded to, the election requirement as set forth as set forth in the Office action mailed on May 4th, 2026 is hereby withdrawn. In view of the withdrawal of the election requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a 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 Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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.
Claim Objections
Claim 1 is objected to because of the following informalities:
The claim recites “first mixture of metal salts” in steps a and b of the claim and also “metal salt mixture” in steps d and e. It is recommended that Applicant amend the claim to replace the “metal salt mixture in steps d and e with “second mixture of metal salts”. Further, it is recommended that Applicant replace “heterocycle compounds” with “heterocyclic compound” in step e of the claim.
Claim 11 is objected to because of the following informalities:
The claim recites “first mixture of potassium salts” in steps a and b of the claim and also “potassium salt mixture” in steps d and e. It is recommended that Applicant amend the claim to replace the “potassium salt mixture in steps d and e with “second mixture of potassium salts”. Further, it is recommended that Applicant replace “heterocycle compounds” with “heterocyclic compound” in step e of the claim.
Claim Rejections - 35 USC § 112(b)
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.
Claim 7 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation "said mixture of metal salts" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 1, the claim from which claim 7 depends, recites two separate recitations of mixture of metal salts. The two recitations being the first mixture of metal salts in line 2 and the second being the metal salt mixture in step d. It is unclear which metal salt mixture claim 7 is referring to.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites that “2-4-dimethylpyridine or 2,4-dimethylpyrimidine is converted into said mixture of potassium salts by treatment with a metal tert-butoxide (tBuOM) where M is potassium.” However, claim 11, the claim from which claim 16 depends, that the method includes “treating 2-4-dimethylpyridine or 2,4-dimethylpyrimidine with potassium tert-butoxide and forming a first mixture of potassium salts”. As such, the limitation of claim 16 is already recited in claim 11, which means that the dependent claim places no limitation on the independent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Closest Prior Art
The closest prior art in terms similarity to the instantly claimed invention is Markovac et al (J. Org. Chem. 1970, 35, 841–843). Markovac teaches the following reaction scheme (page 841, right column 1, paragraph 2):
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Markovac teaches that R can be 5-CH3. However, there are multiple differences between the reaction of the prior art and the reaction as instantly claimed. For instance, the prior art does not include metal salts. Also, the intermediate compounds and final, product compound of the prior art differ from those as instantly claimed. Further, Markovac offers no motivation to make the necessary changes to arrive at the instantly claimed invention.
Another close prior art is Hsu et al (ACS Medicinal Chemistry Letters 2019 10 (5), 761-766). Hsu teaches the following scheme:
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However, there are multiple differences between the prior art reaction and the reaction as instantly claimed. The prior art does not use a phase transfer catalyst and also does not feature the nitroso intermediate of the instantly claimed process. Further, the prior art reaction scheme does not include metal salts. Hsu teaches no motivation to make the necessary changes to arrive at the instantly claimed proves.
As such, the method as instantly claimed is novel and nonobvious.
Allowable Subject Matter
Claims 2-6, 8-10, 12-15 and 17-19 objected to as being dependent upon an objected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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