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 .
DETAILED ACTION
Claims 1, 2, 3, 3, 4, 5, 6, 7, 8, 9, and 10 are pending.
Note: The instant claim set contains two claims labeled as 3. Claims must be numbered consecutively, see MPEP 608.01(j). As such the 2nd claim 3 is interpreted as claim 11, i.e.,
“11. The compound of claim 2 wherein at least one of Y and Z are Cl.”
Thus, claims 1-11 are examined on the merits herein.
Priority
This application claims the following priority:
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The instant Application is a CIP. The instant claims are afforded an effective filing date of 03/03/2024 due to the addition of Rx in the compound of claim 1, and the -C(O)OH group in the Rx position in the compounds of claims 8 and 10.
Claim Objections
Claim 1 is objected to because of the following informalities:
-In claim 1, in the definitions of “m” and “n,” the term “inclusive” should be deleted.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN File Registry 2002677-97-4 (published 09/30/2016, PTO-892).
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meets the limitations of the compound of claim 1 when:
Z and Y are Cl
Rx is H
n is 1
m is 1
RF is CF3.
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. See MPEP 2131.02.
Registry number 2002677-97-4 is available as prior art as of 09/30/2016, the date it was indexed into the CAPlus database. Since this date represents the date that the compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
Per MPEP 2128, an electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, or social media post), is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981). . . Electronic publications on the internet or on an online database are considered to be publicly available as of the date the item was publicly posted.”
As such, the instantly claimed compound is anticipated.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al. (Determinants of Cyanuric Acid and Melamine Assembly in Water, published 2011, PTO-892).
Ma teaches:
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(pg. 8844, Figure 4, “B,” wherein R4 is defined on pg. 8845, Table 1), which meets the limitations of the compound of claim 1 when:
Z and Y are -NH2
Rx is -C(O)OH
n is 1
m is 2
RF is the group circled in red.
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. See MPEP 2131.02.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,192,883 (PTO-892).
Although the claims at issue are not identical, they are not patentably distinct from each other.
‘883 claims:
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Claims 1-4 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,006,309 (IDS of 07/12/2024).
Although the claims at issue are not identical, they are not patentably distinct from each other.
‘309 claims:
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. Since Rs is a material that, prior to functionalization, includes a pendant amino, amido, imino, or hydroxyl group, Rs includes OH (hydroxyl) and NH2 (amino) groups.
Free of the Prior Art & Allowable Subject Matter
Claims 2-4 and 11 are free of the prior art.
Claims 5-7 are objected to as being dependent upon 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.
Claim 9 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 10. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claims 8 and 10 are allowed.
The closest prior art is STN Fil Registry 2002677-97-4, which teaches
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, and Ma which teaches (Determinants of Cyanuric Acid and Melamine Assembly in Water, published 2011, PTO-892):
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, as detailed in the above prior art rejections.
The reference does not teach RF as a hydantoin group, which is a distinct feature of the compounds of instant, dependent claims 2-7, 9, and 11, and independent claims 8 and 10.
Therefore, the prior art neither anticipates nor reasonably makes obvious the claimed compound.
Substantial Duplicates
Applicant is advised that should claim 7 be found allowable, claims 9 and 10 will be objected to under 37 CFR 1.75 as being substantial duplicates thereof.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Conclusion
Claims 1-4 and 11 are rejected.
Claims 5-7 and 9 are objected to.
Claims 8 and 10 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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, James (Jim) Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN WELLS/Examiner, Art Unit 1622
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