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 .
Status of the Claims
Claims 29 – 47 are pending.
Claims 30 – 42 and 45 – 47 are rejected.
Claims 29 and 43 – 44 contain allowable subject matter.
Priority
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 25, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 30 – 42 and 45 – 47 are rejected under 35 U.S.C. 112(b) as 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 30 – 42 and 45 – 47 are directly or indirectly dependent cancelled claims 1 – 2, 10 and 13. There is insufficient antecedent basis for this limitation in the claims. The metes and bounds are not clearly set forth and the claims are considered incomplete. Thus, reference to cancelled claim renders the claims indefinite.
In order to overcome the rejection, Applicant may amend each of the claims 30 – 42 and 45 – 47 to be directly or indirectly dependent on independent claim 29, 43 or 44.
Claims 30, 32, 35 and 39 are rejected under 35 U.S.C. 112(b) as 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance,
Claim 30 recites the broad recitation “… Group 10 transition metal catalyst is a nickel catalyst, a palladium catalyst, or a platinum catalyst”, and the claim also recites “… preferably a palladium catalyst” (emphasis added) which is the narrower statement of the range/limitation.
Claim 32 recites the broad recitation “… solvent which comprises an alcohol or a mixture of alcohols”, and the claim also recites “… preferably tert-amyl alcohol and/or isopropanol” (emphasis added) which is the narrower statement of the range/limitation.
Claim 35 recites the broad recitation “… Group 8 transition metal catalyst is an iron catalyst, a ruthenium catalyst, or an osmium catalyst”, and the claim also recites “… preferably a ruthenium catalyst, more preferably Ru-SNS” (emphasis added) which is the narrower statement of the range/limitation.
Claim 39 recites the broad recitation “… Group 8 transition metal catalyst is an iron catalyst, a ruthenium catalyst, or an osmium catalyst”, and the claim also recites “… preferably a ruthenium catalyst, more preferably Ru-SNS” (emphasis added) which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claim 29 is directed to a process for the preparation of a compound of formula (VI),
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The closest prior art is Ibrahim et al. WO 2016/179412 A1, as disclosed in IDS dated October 25, 2023. Ibrahim et al. teach the compound of formula I. See, e.g., paragraphs [0005]. The compound of formula I is presented below:
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Ibrahim et al. also teach the process for synthesizing said compound (see, e.g., paragraphs [0011]-[0013]):
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However, Ibrahim does not explicitly teach or provide sufficient guidance for the process of using the compounds of instant formula (V) and formula (IX) for the preparation of said final compound. Therefore, the claims contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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