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 .
This is a Final Office Action.
Application and Claims Status
In the claim amendments as filed on July 6, 2026, applicants have amended claims 1 and 8; cancelled claims 2-7, and 9-10; and added no new claims. Therefore, claims 1 and 8 are currently pending and claims 1 and 8 are examined herein.
Specification Objections
The objection to the specification (disclosure) is withdrawn based on Applicant’s amendments to correct various chemical formulae.
Claim Objections
The objection to claim 7 is withdrawn based on Applicant’s amendments to correct various chemical formulae.
Claim Rejections - 35 USC § 112(b)
The rejection of claim 8 under AIA 35 U.S.C. 112(b) is withdrawn based on Applicant’s amendment. Specifically, Applicant deleted the offending claim language, which included the phrase “preferably”, and included a broad range or limitation together with a narrow range of limitation.
Claim Rejections - 35 USC § 112(a)
The rejection of claims 7-8 under AIA 35 U.S.C. 112(a) is withdrawn based on Applicant’s amendment. Specifically, Applicant now recites only catalyst and ligand system (e.g. [Ir(COD)Cl]2 and BINAP) for which they provide an enabling disclosure.
Claim Rejections - 35 USC § 103
The rejection of claims 1-6 under AIA 35 U.S.C. 103 is withdrawn based on Applicant’s amendments. Specifically, Applicant cancelled claims 2-6 and incorporated the point of novelty of their invention into independent claim 1.
Examiner notes, though, Applicant did not actually provide any argument against claims 1-6 (of claim set filed 3/5/2026). To the extent at all that the Applicant acknowledges the rejection of claims 1-6, Applicant writes (Remarks filed July 6, 2026, page 7), “None of Arnold, Jiaquan, or Sorgi discloses or teaches how to select a catalytic system for the reduction reaction to obtain the target L nicotine.” While this may be true, claims 1-6 were not drawn to the catalytic system for the reduction reaction so the statement is irrelevant. Furthermore, Examiner adds that MPEP 2145(IV) states that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The rejection of claims 7-8 under AIA 35 U.S.C. 103 is withdrawn based on Applicant’s amendments. Specifically, Applicant cancelled claim 7 and incorporated the point of novelty of their invention into independent claim 1.
Applicant’s argument (Remarks filed July 6, 2026, page7-8) that “substrate and target compound in Zhang’s method are structurally different from those of the claimed invention. Specifically, Zhang employs 2 phenyl 1 pyrroline, whereas the present invention uses myosmine” is found persuasive because, as Applicant writes, “in asymmetric synthesis, the catalytic system is tailored to the specific substrate structure.”
New Objections/Rejections
(Necessitated by Amendment)
Claim Objections
Claim 1 is objected to because of the following informalities:
The word “wherein” should precede the definition for R, so as to recite “wherein in the compound of formula I, R is C1-C8 alkyl…”.
In the description of S1, the word “of” should be removed from the phrase, “wherein the first base is one or more selected from of potassium hydroxide…” (emphasis added).
For consistency with the entirety of the claim, in S2, the commas after “methylmagnesium bromide”, “methyl tert-butyl ether”, and “20:1-2” should be replaced with a semi-colon.
In the description of S2, the dashes showing the ranges of mass ratios should be replaced with the word “to” and the value of “2” in “20:1-2” should recite “2:1” so as to be consistent with the rest of the ratios. Altogether, S2 should be amended to recite “…the second solvent and the compound of formula II are in a mass ratio of 20:1 to 2:1; and the second base and the compound of formula II are in a mass ratio of 1:1 to 1:20…”. Appropriate correction is required.
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 8 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 8 is rejected for its dependence on a cancelled base claim. In the instant case, the rejected claim depends on cancelled claim 7. See MPEP 608.01(n)(V), which states, “If the base claim has been canceled, a claim which is directly or indirectly dependent thereon should be rejected as incomplete”.
Conclusion
Claim 8 is rejected.
Claim 1 is objected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.A.B./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
