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 .
CONTINUING DATA
This application is a DIV of 18/108,480 02/10/2023 PAT 12012431
18/108,480 is a DIV of 17/198,829 03/11/2021 PAT 11613553
17/198,829 has PRO 62/988,661 03/12/2020
This office action is in response to Applicant’s amendment submitted May 22, 2026. Claims 80-81, 83, 85-86, 93, and 95 are pending.
Claim Interpretation
The claims recite adding reagents to a ninth reactor. The claims do not recite any limitations drawn to steps carried out in previous reactors, so the claims are interpreted to require adding reagents to a reactor in general regardless of its number.
The limitations of previous claim 89 were incorporated into claim 80. The following new rejection is the same as the one previously made for claim 89, but now includes claims 80-81, 83, 85-86, 93, and 95.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 80-81, 83, 85-86, 93, and 95 is/are rejected under 35 U.S.C. 103 as being unpatentable over Axt (WO2016069825 A1, cited on IDS).
Axt teaches the following reaction in paragraphs [0249]-[250]:
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Axt teaches addition of 3.4 equivalents of 1M BCl3 in dichloromethane to a compound of claimed formula (I), followed by addition of methanol (an additive) and potassium bicarbonate to afford a compound of claimed formula (VII). Formula (I) was cooled to -20°C before addition of BCl3, and the reaction temperature was maintained between -20°C and -15°C.
Axt does not teach that methanol is added to the Lewis acid before combining with formula (I). Methanol is added after the Lewis acid is combined with the starting compound.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to add methanol to the Lewis acid before addition of formula (I) instead of after. MPEP 2144.04 states that legal precedent as a source of supporting rationale for obviousness includes changes in the sequence of adding ingredients. Selection of any order of mixing ingredients is prima facie obvious.
Response to Arguments
Applicant argues that the claimed process produces unexpected results in the form of improved purity and yield. Table 1 is reproduced here.
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Applicant’s arguments are not persuasive to overcome the rejection because the evidence of unexpected results is not commensurate in scope with the claimed invention. Claim 80 is drawn to the use of any Lewis acid and any additive. The results in Table 1 are specific to the combination of BCl3 and B(OMe)3. MPEP 2145 states that evidence of unexpected results must be reasonably commensurate in scope with the claimed invention, and that the skilled artisan must be able to ascertain a trend in the exemplified data that would allow him to reasonably extend the probative value thereof. In this instance, only one example is given to show unexpected results. Data for other Lewis acids and additives is not given in the specification, so there is no way for the skilled artisan to ascertain a trend. MPEP 2145 also states that there must be a nexus (connection or correspondence) between the submitted evidence and the claimed invention. In this instance, it is unclear whether the improved result is due to combining the Lewis acid and the additive before combining with Formula (I), or due to the Lewis acid, or due to the additive, or some combination of the three.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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/LAYLA D BERRY/Primary Examiner, Art Unit 1693
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