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 .
Claims 3, 6-9, 21-24, 26-28, 30, 32 and 33 are cancelled. Therefore, claims 1, 2, 4, 5, 10-20, 25, 29, 31. 34 and 35 are pending in this application.
Information Disclosure Statement
Applicant’s Information Disclosure Statements, filed on 10/27/2023 and 11/15/2023 have been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
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.
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.
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.", (see MPEP § 2173).
Claims 4, 11, 12, 14, 16, 19, and 20, are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant 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) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
Claim 4, recites the broad recitation,”… C3_10 branched-chain alkyl group,” and the claim also recites, “… preferably a substituted or unsubstituted C14 straight-chain or C3-4 branched- chain alkyl group.,” [emphasis added] which is the narrower statement of the range/limitation.
Claim 11, in more than one instance, recites the broad recitation,”… C3_20 branched-chain alkyl group,” and the claim also recites, “… preferably H or a substituted or unsubstituted C1_10 straight-chain or C3_10 branched-chain alkyl group, more preferably H or a substituted.,” [emphasis added] which is the narrower statement of the range/limitation.
Claim 12, recites the broad recitation,”… R1 and R2 in the compound of Formula II form a ring,” and the claim also recites, “… preferably R' and R2 form a ring which is -Bpin,” which is the narrower statement of the range/limitation.
Claim 14, in more than one instance, recites the broad recitation,”… C6_20 aryl group,” and the claim also recites, “… preferably a substituted or unsubstituted C6-C18 aryl group, more preferably a substituted or unsubstituted C6-C10 aryl group,” which is the narrower statement of the range/limitation.
Claim 16, in more than one instance, recites the broad recitation,”… C4_20 heteroaryl group,” and the claim also recites, “… preferably a substituted or unsubstituted C4-C18 heteroaryl group, more preferably a substituted or unsubstituted C4-C10 heteroaryl group,” which is the narrower statement of the range/limitation.
Claim 19, recites the broad recitation,”… catalyst is a complex of a platinum group metal,” and the claim also recites, “… preferably the catalyst is a metal complex comprising palladium,” which is the narrower statement of the range/limitation.
Claim 20, in more than one instance, recites the broad recitation,”… catalyst is a complex of a platinum group metal,” and the claim also recites, “… preferably palladium,”. The claim also recites ”… more ligands coordinated to the platinum group metal,” and the claim also recites, “… preferably said catalyst is [Pd(RuPhos)(crotyl)Cl] or [Pd(dippf)Cl2.,”. which is the narrower statement of the range/limitation. Appropriate correction is required.
Claim Objections
Claims 15, 17 and 18 are objected to for depending on a rejected base claim.
Allowable Subject Matter
Claims 1, 2, 5, 10, 13, 25, 29, 31, 34 and 35 are allowed. The subject matter of the remaining claims would be allowable once the 112 rejections and objections outlined above have been overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The present invention is drawn to a cross-coupling process for forming C-C bond between two compounds comprising reacting a compound of Formula I,
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with a compound of Formula II,
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in the presence of catalyst, water, a first base and a Lewis acid to give a product of Formula III,
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. The process of preparing the products of the instant claims are novel and non-obvious over the prior art. The closest prior art is OHSUMI MASATO ET AL "Substrate switchable Suzuki-Miyaura coupling for benzyl ester vs. benzyl halide", RSC ADVANCES, vol. 8, no. 61, 12 October 2018 (2018-10-12), pages 35056-35061. The instant process requires the presence of a mandatory use of Lewis Acid in the process. However, OHSUMI MASATO ET AL fail to disclose or suggest the modifications necessary to arrive at Applicant's claimed process.
Therefore, claims 1, 2, 5, 10, 13, 25, 29, 31, 34 and 35 are allowable.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMAL A SAEED whose telephone number is (571) 272-0705. The examiner can normally be reached on 8:00-4:30 MAX-FLEX.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626