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
Claims 59-60, 62, 64, 66, 68, 73, 75, 80-81, 83, 85-86, 89, 93, 95, 100-101, 104-105, 107, 109, 114, 117, 120, and 122 are pending.
Claim Interpretation
The claims recite adding input mixtures to an eighth reactor, a ninth reactor, and so on. 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.
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 (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 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) 80-81, 83, 85-86, 93, 95, 114, 117, 120, and 122 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 teaches the following reaction in paragraph [0340]:
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After the first reaction, the isolated solid was added to a reactor and 5% K2CO3 solution was added. The solvent in that reaction is water.
Axt further teaches the following reaction in paragraph [0343]:
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The reaction was carried out at 30°C.
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) 89 is/are rejected under 35 U.S.C. 103 as being unpatentable over Axt (WO2016069825 A1, cited on IDS).
Axt teaches as set forth above, addition of methanol to prepare a compound of claimed formula (VIII).
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.
Claim(s) 59-60, 62, 64, 66, 68, 73, 75, 100-101, 104-105, 107, and 109 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.
The method can be carried out as a batch mode process or a flow process [0138].
Any Lewis acid can be used in the method of making Formula (XI-b) (which corresponds to claimed formula VII), including AlCl3, AlBr3, TiCl4, SnCl4, LiCl, MgCl2 [0156].
The reaction temperature can be -20°C to 0°C [0164].
Axt does not exemplify the above reaction in a flow reactor as required by claim 59 and does not exemplify the reaction using the Lewis acids recited in current claim 100.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to carry out Axt’s reaction of paragraphs in a flow reactor. MPEP 2144.04 stats that legal precedent as a source of supporting rationale includes making continuous. The court held that the claimed continuous operation would have been obvious in light of the batch process of the prior art. In this instance, Axt teaches a batch process and also contemplates continuous reaction, so it would have been obvious to carry out Axt’s process as a continuous process.
Axt exemplifies a lower temperature for the reaction than is recited in the current claims, but it would have been obvious to one of ordinary skill in the art to optimize the temperature using routine experimentation within the broader ranges taught by Axt. MPEP 2144.05 states that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In this instance, the skilled artisan would have optimized the reaction temperature for speed and efficiency of the reaction while minimizing side products. The skilled artisan would have cooled reagents before addition in order to control the low temperature.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to carry out Axt’s reaction using a different Lewis acid or combination of Lewis acids because Axt teaches that any Lewis acid may be used. Simple substitution of one Lewis acid for another would have resulted in the claimed invention, and the results would have been predictable because Axt teaches that any Lewis acid may be used.
Conclusion
No claims are allowed.
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/LAYLA D BERRY/Primary Examiner, Art Unit 1693