CTNF 18/551,080 CTNF 99583 DETAILED ACTION STATUS OF THE APPLICATION Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 18 September 2023, in the matter of Application No. 18/551,080. Said documents have been entered on the record. The Examiner further acknowledges the following: 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 1-4 are pending. No claims have been amended. No claims have been cancelled. Thus, claims 1-4 represent all claims currently under consideration. Priority Acknowledgment is made of Applicants’ claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present application filed 18 September 2023 and in the parent Application No. PCT/EP2022/057619, filed on 23 March 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. GB 2104415.1, filed on 29 March 2021. Domestic Priority data as claimed by applicant: This application is a 371 of PCT/EP2022/05761 (03/23/2022) Foreign Applications: UNITED KINGDOM 2104415.1 (03/29/2021) Information Disclosure Statement (IDS) The information disclosure statement (IDS) submitted on 18 September 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the Examiner. Claim Objections Claim 3 is objected to because of the following informalities: In line 1, “A method producing a compound of formula (Ia)” should read “A method for producing a compound of formula (Ia),” 07-29-01 AIA Claim 4 is objected to because of the following informalities: In line 1, “A method producing a compound of formula (I)” should read “A method for producing a compound of formula (I),” Appropriate correction is required. Double Patenting 08-33 AIA 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 file d 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. Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/550,336. Although the claims at issue are not identical, they are not patentably distinct from each other. Regarding instant claim 1, claim 8 of copending Application No. 18/550,336 recites a method comprising reacting a compound of formula (V): PNG media_image1.png 108 138 media_image1.png Greyscale This compound formula is identical to formula (I) of instant claim 1. Thus, claim 8 of copending Application No. 18/550,336 teaches every limitation of instant claim 1. Regarding instant claim 2, claim 1 of copending Application No. 18/550,336 recites a method comprising reacting a compound of formula (II): PNG media_image2.png 107 145 media_image2.png Greyscale This compound formula is identical to formula (Ia) of instant claim 2. Thus, claim 1 of copending Application No. 18/550,336 teaches every limitation of instant claim 2. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Allowable Subject Matter Claims 1-4 would be allowable if rewritten or amended to overcome the rejections of claims 1-2 on the ground of provisional non-statutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/550,336 and the objections to claims 3-4 set forth in this Office Action. The Examiner further notes that filing a terminal disclaimer would ameliorate the double patenting rejections. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach or suggest the claimed compound of formula (I) of claim 1, nor does it teach or suggest a method for producing a compound of formula (Ia) as recited in independent claim 3, or a method for producing a compound of formula (I) as recited in independent claim 4, respectively. The closest prior art is Betz, et al. (“A New α-Selective Synthetic Equivalent for the Crotyl Anion in Addition to Imines”; Tetrahedron Lett. 1995 , 36 , 4043-4046; IDS of 09-18-2023; NPL Cite No. 4; hereinafter “Betz”). Betz teaches the preparation of the following imines from cyclopentanone or acetone and 1-methoxy-2-propylamine, respectively (Betz; page 4044; Table 2, compounds b and c ): PNG media_image3.png 200 400 media_image3.png Greyscale Betz fails to explicitly teach a compound of formula (I) of instant claim 1. Although Betz teaches a method for producing imines from aldehydes or ketones and racemic 1-methoxy-2-propylamine (Betz; page 4044, Table 1; page 4046, Note 5), and this method comprises the use of the compound of formula (IIa) of independent claim 3 and the compound of formula (II) of independent claim 4, respectively, the skilled artisan would not have been sufficiently motivated to obtain the compound of formula (Ia) of instant claims 2-3 or the compound of formula (I) of instant claims 1 and 4 based on the teachings of Betz, which would require the condensation of 1-methoxy-2-propylamine with 3-hexanone. There is no teaching in Betz that would motivate the skilled artisan to select 3-hexanone as a starting material to react with 1-methoxy-2-propylamine to form the imine as recited in claims 1-4 with a reasonable expectation of success. Therefore, the claims are free from the prior art for the reasons of record and the reasons set forth above . Conclusion 07-96 The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Derek Rhoades whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm EST. 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, Scarlett Goon can be reached on 571-270-5241. 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. /D.R./Examiner, Art Unit 1692 /AMY C BONAPARTE/Primary Examiner, Art Unit 1692 Application/Control Number: 18/551,080 Page 2 Art Unit: 1692 Application/Control Number: 18/551,080 Page 3 Art Unit: 1692 Application/Control Number: 18/551,080 Page 4 Art Unit: 1692 Application/Control Number: 18/551,080 Page 5 Art Unit: 1692 Application/Control Number: 18/551,080 Page 6 Art Unit: 1692 Application/Control Number: 18/551,080 Page 7 Art Unit: 1692 Application/Control Number: 18/551,080 Page 8 Art Unit: 1692
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