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
Status of the Claims
Claims 1-10 are pending. Claims 1-10 are rejected.
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/EP2022/054924, filed 02/28/2022, which claims priority under 35 U.S.C. 119(a-d) to EP 21160525.8, filed 03/03/2021. Acknowledgment is made of applicant's claim for foreign priority. It is noted, however, that applicant has not filed an English translation of the certified copy of the EP 21160525.8 application as required by 37 CFR 1.55. Therefore, the effective filing date is 02/28/2022.
Information Disclosure Statement
The information disclosure statements (IDS) dated 02/23/2024 and 11/12/2025 have been considered.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-10 are directed to methods of preparing compounds of general formula (I). However, given the open language of the claims, i.e. “characterized in that”, it is unclear what method steps are claimed. MPEP 2111.03 states: “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)”. Accordingly, the metes and bounds of the claims cannot be sufficiently interpreted by a person having ordinary skill in the art. Thus, claims 1-10 are indefinite.
Applicant may amend the claims to distinctly claim the subject matter which the inventor regards as the invention. It is suggested that the claims should be amended to replace “characterized in that” with “wherein”.
Allowable Subject Matter
Claims 1-10 are free of the prior art.
Osaka et al. represent the closest art in “Synthesis and Properties of New Polyesters Having Tetrahydrofuran Rings in Their Main Chains”, Journal of Polymer Science Part A: Polymer Chemistry Edition, 1993, pp. 1135-1140, Vol. 31, No. 5, as cited in the IDS dated 02/23/2024.
Osaka et al. teach synthesis of intermediate 10, which is embraced by instant formula (I) wherein R1 is methyl, via a similar process as the instant application:
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. See Scheme 1, page 1136. The difference in the presently claimed invention is the use of a metal tert-butoxide reagent to generate the cyclized product of instant formula (IV), which corresponds to prior art compound 9 in the Scheme above. Additionally, the instant invention does not require the use of acid-catalyzed dealkoxycarbonylation and diazomethane as cited in the prior art in order to yield the desired compound. Further, there is no teaching, suggestion, or motivation in the prior art that would lead a person having ordinary skill in the art to modify Okada in such a way as to identify the presently claimed process.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jalisa H. Ferguson whose telephone number is (703)756-1489. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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/J.H.F./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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