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 1-4 are before 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.
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.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Base claim 1 is rejected as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. Here it is unclear whether what steps are involved in the ‘purifying’ of the compound. For example, the slurry is simply filtered or if there is any crystallization involved here.
The open-ended comprising language renders the scope of the claim 1 unclear. According to MPEP 2173.01 Interpreting the Claims [R-08.2017] If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). “Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts"). . "The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended." Id.
It is unclear what other products or impurities are intended here. This is relevant here because, the intended process is for purification, meaning removing side-products, if any, formed in the reaction to make chlorantraniliprole.
Likewise, one of skill in the art would understand what a
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is. What is the origin of this solvent? Is it deliberately added to arrive at the slurry, to maintain the side-products in solution? Functional language and open-ended comprising language renders the limitations of the claims of the process unclear. When a claim limitation employs functional language, the examiner’s determination of whether the limitation is sufficiently definite will be highly dependent on context. Here, the nature of this specific solvent in the purification, that keeps in solution impurities, renders what the solvent important.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Note that in general, a process should at least recite a positive, active step and any process parameters necessitated by the specification so that the claim will "clearly set out and circumscribe a particular area with a reasonable degree of precision and particularity” In re Moore, 169 USPQ 236, and make it clear what subject matter the claim encompasses, as well as make clear the subject matter from others would be precluded.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami WO 2011062291, Katsuya, US 20110178109 and Armarego, Purification of Laboratory Chemicals, Sixth Edition, Chapter 1, 2009.
Murakami teaches the preparation of N-acyl anthranilic acid derivative, including chlorantraniliprole
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(see, page 6, Table 1, compound 1
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by reaction of 2-[3-bromo-1-(3-chloro-2-pyridinyl)-l H-pyrazol-5-yl]-6-cyano-8- methyl-4H-3, l-benzoxazin-4-one (compound of formula III) with methylamine (see, page 44, lines 1-16) involving an aqueous workup and washing of the precipitated crystals with water The compound is considered to be substantially free from impurities as the preparation of said compounds include filtration and/or washing steps.
The bond forming step is same as in instant page 2 Formula III to Formula IV.
Katsuya, page 10, Column A. Compound 2a, that is chlorantraniliprole; same preparation of cyantraniliprole which involves an aqueous workup and washing of the precipitated crystals with water. These products are considered to be substantially free from impurities as the preparation of said compounds include filtration and/or washing steps.
The above processes involve the addition of water and subsequent stirring for a specified time prior to a filtration step, followed by drying. The cited references do not explicitly teach inter alia a process for purifying the product that includes a step involving feeding a reaction product mixture of compound of Formula A into a reactor as claimed in step a), nor a step involving separating and collecting solids step d), prior to the preparation of a slurry, as claim in step b) claim of claim 19 and relevant dependent claims.
As such claim 1 is drawn to alternative method for preparing and purifying cyantraniliprole, involving methods routinely used of processing product formed by the same bond forming process that proceeds through the benzoxazine-4-one intermediate (formula III compound) involving reaction of the latter intermediate with amines and an aqueous workup.
An aqueous slurry is then made from the collected solid. In cited arts, an aqueous slurry is produced without prior filtration. In effect, in both the prior art and in the present claims, water is used to suspend the product, allowing the product to be recovered by filtration. The steps are considered to be merely routine steps that do not provide an unexpected effect or advantage.
It is commonly understood obtaining pure products is beneficial because wrong chemical components (that is impurities) can make it less suitable for its intended use.
Optimization of purification methods with regards to solvent selection, characteristics of impurity (recited here) are routine and basic, elementary to laboratory technicians. This is not an assertion, see for example, Armarego which teaches at page 1,
“Purity is a matter of degree. Other than contaminants such as dust, paper fibres, wax, cork, etc., that may have been inadvertently introduced into the sample during manufacture, all commercially available chemical substances are in some measure impure. Any amounts of unreacted starting material, intermediates, by-products, isomers and related compounds may be present depending on the synthetic or isolation procedures used for preparing the substances”. Armarego teaching provides many examples that overlap with the instantly recited steps that, how to remove the said undesirables to make pure products.
It would have been obvious to one of ordinary skill in the art to modify an otherwise known process to obtain known commercially important cyantraniliprole using analogous methods and alternate order of conditions in lieu of another as the results would not have been unexpected.
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992).
Accordingly, the claims do not recite an unobvious distinction over the prior art. Further, a reference is relevant not only for what it expressly teaches, but also for what it would have conveyed to one of ordinary skill in the art. See In re Opprecht, 12 USPQ2d 1235, 1236 (Fed. Cir. 1989); In re Bode, 193 USPQ 12 (CCPA 1976). In light of the foregoing discussion, the Examiner finds that the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, in view of the cited references and the knowledge generally available in the art. Accordingly, the claims are rejected under 35 U.S.C. § 103.
Suggestion:
Including details such as the solvent ethyl acetate and process parameters such as temperature that provides of % purity as found in Example 10 could help with favorable office action, for example as in claims of US12331028.
The art made of record and not relied upon is considered pertinent to applicant's disclosure. US 12643874; US 20240067624.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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