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 1-13 are canceled. Therefore, claims 14-26 are currently pending in this Application.
Priority
CONTINUING DATA
This application is a 371 of PCT/EP2022/070105 07/18/2022
FOREIGN APPLICATIONS
EPO EP21186503. 07/19/2021
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on January 23, 2024 has been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
Response to Restriction
Applicants’ election, without traverse, the following species:
For formula I,
1-hydroxy-4-methyl-6-(2,4,4- trimethylpentyl)pyridin-2-one (CAS No. 50650-76-5).
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For formula II,
(4-methyl-6-(2,4,4-trimethylpentyl)-2H- pyran-2-one) (CAS No. 50650-75-4),
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in response filed March 05, 2026 is acknowledged. Therefore, the restriction requirement is considered proper and is maintained.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a petition under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
The scope of the invention of the elected subject matter is as follows:
Upon further review and search of the claimed subject matter, the examiner is withdrawing the election of species requirement and full scope of the pending claims were examined on their merits.
Therefore, the election of species requirement mailed on February 11, 2026 is hereby withdraw,
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 14, 15 and 18-26 are rejected, under 35 U.S.C. 102(a)(1) as being anticipated by GB 1416397.
The present invention is drawn to a process of preparing products of Formula I,
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, depicted in claim 14, comprising the steps: reacting products of Formula II,
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with hydroxylamine or hydroxylammonium compound; and crystalizing or precipitating the product of Formula I, from an organic solvent.
GB 1416397 teaches a process where a product of Formula (II) is reacted with hydroxylamine or a salt thereof to produce a product of Formula (I) i.e. the same as step (a) of the current process). In Example 1 of GB 1416397 teach that first step reaction is followed by extraction by crystallization (i.e. the same as step (b) of the current process) see lines 88-102.
In regards to claims 18-26, GB 1416397 teaches the use of base ( see lines 47-48), inert solvent (see lines 65-67), reaction temperature (lines 62-64), alkali metal hydroxide (see line 96) that read on the instant claims.
In regards to claim 20, the prior art is silent about the crystallization step temperature. Since both the prior art and the instant process have the same steps in preparing the same products, it is inherent that both processes use similar temperature for the crystallization step.
Therefore, claims 14, 15 and 18-26 are anticipated by GB 1416397.
Claim Objections
Claims 16 and 17 are objected to depending on a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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, Adam C Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626
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