DETAILED ACTION
Claims 1-24, submitted 06 December 2023, are pending in the application. Claims 1-8 are under examination in the instant Office Action. Claims 9-24 are currently withdrawn.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8, and the elected species,
PNG
media_image1.png
132
161
media_image1.png
Greyscale
, in the reply filed on 03 April 2026 is acknowledged.
Claims 9-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03 April 2026.
The Examiner did not find prior art on the elected species, therefore, the elected
species is free of the art. As such, the scope of the search was expanded to include the
broader genus.
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 (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.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reetz et al. ("Binol‐Derived Monodentate Phosphites and Phosphoramidites with Phosphorus Stereogenic Centers: Novel Ligands for Transition‐Metal Catalysis." Angewandte Chemie 117.3 (2005): 416-419.).
Reetz teaches compounds, shown below, which read on the limitations of the claimed genus, Formula (II).
Scheme 4 taught by Reetz
PNG
media_image2.png
208
402
media_image2.png
Greyscale
(pg. 414, Bottom of Left Col.)
When the R moiety taught by Reetz is as described in 14d (SiMe3) or 14e (Si(Ph)3), the compounds therein described read on claims 1-7 by teaching the Applicant’s compounds when R1 and R2 together form an aryl, which reads compounds of the sub-genus (IIb) of claim 2. Additionally, Reetz teaches the limitations of claims 3-6 when R3, R4 and R5 are either all methyl or all phenyl. Finally, Reetz teaches the limitation of claim 7 when R6 and R7 are both methyl.
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.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gavrilov et al. ("Palladium-catalyzed enantioselective allylation in the presence of phosphoramidites derived from (S a)-3-SiMe3-BINOL,(R, S)-semi-TADDOL, and (R, R)-TADDOL." Russian Chemical Bulletin 64.7 (2015): 1595-1601.).
Gavrilov teaches compounds, shown below, which read on the limitations of the claimed genus, Formula (II).
Scheme 2 taught by Gavrilov
PNG
media_image3.png
167
242
media_image3.png
Greyscale
(pg. 1596, Top of page)
Gavrilov teaches a compound of the invention when the compound is a compound of Applicant’s sub-genus compound (IIb), shown below. Additionally, the compound reads on claims 3-4 and 6 when R3-R5 are methyl and on claim 7 when R6 and R7 are both ethyl.
Sub-genus compound (IIb) taught by Applicant
PNG
media_image4.png
185
242
media_image4.png
Greyscale
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the claimed compounds of instant claim 8 are deemed novel and unobvious over the prior art.
The closest prior art is Reetz et al., described above. However, the compounds taught by Reetz are not identical to that of the Applicants and the prior art does not teach nor reasonably suggest wherein the R6 and R7 moieties are
PNG
media_image5.png
117
67
media_image5.png
Greyscale
,
PNG
media_image6.png
116
61
media_image6.png
Greyscale
,
PNG
media_image7.png
113
72
media_image7.png
Greyscale
,
PNG
media_image8.png
87
74
media_image8.png
Greyscale
, or
PNG
media_image9.png
85
75
media_image9.png
Greyscale
which are substantially different moieties and are non-obvious variants to that taught in the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN CHRISTOPHER SANCHEZ whose telephone number is (703)756-5336. The examiner can normally be reached Monday -Friday (0730-1700).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JUSTIN CHRISTOPHER SANCHEZ
Examiner
Art Unit 1622
/J.C.S./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
Prosecution Insights