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 .
REQUIREMENT FOR UNITY OF INVENTION
2. As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in
a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-2, drawn to a compound of Formula (I).
Group II, claim(s) 3-20, drawn to a polymer and gel derived from the compound of Formula (I).
Group III, claim(s) 22, 26, 28-29, 32-33, drawn to a process for producing a gel by ring-opening polymerization of the compound of Formula (I).
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
There is a lack unity of invention because even though the inventions of these groups require the technical feature of the compound of Formula (I), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of
Gouliaev et al (US 2004/0043987).
3. Thus, Gouliaev et al discloses a compound of Formula A below ([0017]):
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Formula A
wherein the broken line is a single bond ([0019])
X comprises CH2 ([0021]);
R2 comprises aryl ([0023]);
R3 comprises hydrogen or alkyl ([0027]);
Y comprises -N(R4)-, where R4 comprises hydrogen ([0022], [0034]);
R5, R6, R8 comprise hydrogen, halogen or alkyl ([0037], [0041], [0061]) and
R7 comprises a variety of substituents ([0051]-[0059]) corresponding to “the rest of the compound” as claimed in claim 1.
4. Further, based on the teachings of Gouliaev et al, it would have been obvious to a one of ordinary skill in the art to choose and use the compound of Formula A above having all of the substituents as cited in paragraph 3 above, since it would be obvious to choose material based on its suitability, thereby arriving at the compound of Formula (I) of instant invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
5. During a telephone conversation with Tracy L. Bornman on May 11, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-2. Affirmation of this election must be made by applicant in replying to this Office action. Claims 3-20, 22, 26, 28-29, 32-33 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
6. Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102/103
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.
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.
7. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gouliaev et al (US 2004/0043987).
8. Thus, Gouliaev et al discloses a compound of Formula A below ([0017]):
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Formula A
wherein the broken line is a single bond ([0019]);
X comprises CH2 ([0021]);
R2 comprises aryl ([0023]);
R3 comprises hydrogen or alkyl ([0027]);
Y comprises -N(R4)-, where R4 comprises hydrogen (([0022], [0034]);
R5, R6, R8 comprise hydrogen, halogen or alkyl ([0037], [0041], [0061]) and
R7 comprises a variety of substituents ([0051]-[0059]) corresponding to “the rest of the compound” as claimed in claim 1.
9. In the alternative, though Gouliaev et al does not explicitly and with sufficient specificity such as by a single example shows the compound A having all of the substituents as cited in paragraph 8 above, based on the teachings of Gouliaev et al, it would have been obvious to a one of ordinary skill in the art to choose and use the compound of Formula A above having all of the substituents as cited in paragraph 3 above, since it would be obvious to choose material based on its suitability, thereby arriving at the compound of Formula (I) of instant invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
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.
10. Claims 1-2 are rejected under 35 U.S.C. 103 as unpatentable over Reddy et al, Indian Journal of Chemistry, vol. 41B, November 2002, pp. 2405-2409 in view of Arrington et al (US 2007/0060601) and Keck et al (US 3,454,574).
11. Reddy et al discloses the compound of Formula 6 below produced by the following scheme (see p. 2406):
1) the compound of formula 2 is reacted with ClCl3CO-CO-OCCl3 and dioxane to form the compound of formula 1 below:
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2) In the second stage, the compound of formula 1 is reacted with methylamine (RNH2 being CH3NH2, see p. 2405, left column) to form the compound of formula 3 below:
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3) The compound of formula 3 is reacted with R-C(OEt)3, wherein R is H, to form the compound of formula 6 below:
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Wherein R is hydrogen (compound 6a on page 2407).
12. It is noted that the compound of formula 6 of Reddy et al corresponds to the compound 4 of the Scheme 1 disclosed in instant invention, with the exception that the substituent on nitrogen is CH3, and not phenyl.
13. The Scheme 1 of instant invention is presented below (see p. 10 of instant specification):
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14. Thus, Reddy et al recites the use of amines to introduce nitrogen into the heteroring, specifically showing the use methylamine CH3NH2 in the stage 2) to introduce CH3 group bonded to nitrogen into the heteroring.
15. Though Reddy et al specifically shows the use of methylamine CH3NH2 as said amine in the stage 2) to introduce CH3 group bonded to nitrogen into the heteroring, but does not show the use of aniline Ph-NH2 as said amine,
Arrington et al explicitly teaches such reactions taking place using aniline as the amine (see [0308], page 12):
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16. Therefore, given a compound of formula 6 of Reddy et al having a phenyl group, and not methyl, bonded to the nitrogen, is desired, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Reddy et al and Arrington et al, and to choose and use aniline, instead of methylamine, as the amine reactant in the stage 2) of the process/scheme of Reddy et al, since it would be obvious to choose reactant/material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
17. Further, though the compound 6 of Reddy et al comprises both carbonyl C=O bond and N=C bond on the heteroring as shown below:
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but does not show a compound having said bonds as reduced,
Keck et al explicitly teaches that the compounds of Formula A below can be produced by reducing the compounds of Formula B below with a metal hydride such as lithium aluminum hydride (see col. 1, lines 30-40; col. 2, lines 1-15):
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Formula A
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Formula B
wherein X is oxygen.
It is further noted that the final product of Scheme 1 of instant invention (as shown in paragraph 13 above) is produced by the same reduction mechanism using lithium aluminum hydride as the reducing agent.
18. Thus, based on the teachings of Keck et al, given a compound of Formula 6 of Reddy et al in view of Arrington et al having reduced bonds C=N and C=O is desired, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Keck et al and Reddy et al in view of Arrington et al, and to modify, or obvious to try to modify the process/scheme of Reddy et al in view of Arrington et al by including an additional step of reacting the compound of Formula 6 having phenyl bonded to nitrogen, with lithium aluminum hydride as the reducing agent, as taught by Keck et al, since it would be obvious to modify the process using known techniques. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
19. Since the process of Reddy et al in view of Arrington et al and Keck et al is essentially or substantially the same as that disclosed in instant invention for producing the compound (I) of instant claim 1 and specifically the compound of instant claim 2, therefore, the product of the process disclosed by Reddy et al in view of Arrington et al and Keck et al will intrinsically and necessarily have the structure as that shown in instant claims 1 and 2 as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. 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.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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