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 .
Priority
The instant application is a 35 USC 371 National Stage filing of international application No. PCT/EP2022/065787, filed June 10, 2022, which claims foreign priority under 35 USC 119(a)-(d) from European application EP21180529.6, filed June 21, 2021.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 27, 2023 and December 28, 2023 were in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS documents were considered and signed copies of the 1449 forms are attached.
Election/Restrictions
Applicant’s election of the invention of Group I, claims 7-11, drawn to a method of hydrogenating an ester of general formula (III) in the reply filed on March 30, 2026 is acknowledged. Since Applicant’s reply did not present any specific traversal, the election is treated as an election without traverse. Further, Applicant’s election of sclareolide as the starting material and catalyst K1 in the same reply is also acknowledged. Claims 7-11 within the elected group reads on the elected species.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated above, the examiner searched the compound based on the elected species above, wherein: prior art was discovered over the elected species of compound. Therefore, the scope of the search and consideration was not extended further beyond the scope of the elected species, although additional art discovered incidental to the search for the elected species is presented herein for the purpose of promoting compact prosecution.
Status of Claims
Currently, claims 7-12 are pending in the instant application. Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention there being no allowable generic or linking claim.
Claims 7-11 read on the elected invention/species and are therefore under consideration herein.
Claim Objections
Claim 8 is objected to for a typographical error. In the depicted chemical formula, there is a variable “n,” but the claim text only defines “N.” The “N” should be replaced with a lowercase “n” for consistency with the chemical formula.
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.
Claim(s) 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zubar et al. (NPL citation 4 on 12/28/2023 IDS).
The prior art teaches the hydrogenation of the elected ester (+)-Sclareolide to (-) -ambradiol, catalyzed by a manganese complex. The process scheme is as follows (see Graphical Abstract, Scheme 1, Table 1):
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188
531
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. Notably, the pressure of 50 bar of molecule hydrogen converts to 5 MPa and therefore reads on the instantly claimed requirement. Further, Mn-6 has the structure
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156
224
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, which reads on the formula in instant claims 7-8 where n = 0, X is Br and L is
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166
299
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where R1 and R2 are phenyl and the remaining of R3 – R11 are H, where m and n are each 1. The mole% of Mn corresponds to a ratio between the ester and Mn complex of 1,000:1, thus anticipating instant claim 9. The prior art process teaches all the required limitations of the instantly claimed process such that the instant claims are anticipated.
Claim(s) 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (NPL citation 2 on 12/28/2023 IDS).
The prior art teaches the hydrogenation of many different organic esters to their corresponding alcohol in the presence of molecular hydrogen and catalyzed by a manganese complex. The process scheme is as follows (see Table 1):
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577
408
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. Notably, the pressure of 50 atm of molecule hydrogen converts to 5.06 MPa and therefore reads on the instantly claimed requirement. Further, the catalysts in the table above have the structure
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91
260
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, which reads on the formula in instant claims 7-8 where n = 0, X is Br and L is
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166
299
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where R1 and R2 are phenyl and the remaining of R3 – R11 are H, methyl or methoxy, where m and n are each 1. Additional anticipatory esters to be hydrogenated by the prior art process are shown in Table 2 and Table 3. The mole% of Mn corresponds to a ratio between the ester and Mn complex of 1,000:1, thus anticipating instant claim 9. Further, each reaction is carried out in the presence of a base as required by instant claim 10. The prior art process teaches all the required limitations of the instantly claimed process such that the instant claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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