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
This Office action is based on the 18/676967 application originally filed May 29, 2024.
Amended claims 1-10, filed May 29, 2024, are pending and have been fully considered.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of co-pending Application No. 18/676968 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed toward the formation of a haloalkoxymethyl ether compound with overlapping substituents and overlapping method steps. Applicant is reminded that those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-10 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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are:
Claim 1 teaches the limitation “converting a haloalkyl alkoxymethyl ether compound… into a nucleophilic reagent” without setting forth how to accomplish such a conversion.
Claim 2 teaches the limitation “converting a haloalkyl alkoxymethyl ether compound (1B)… into a nucleophilic reagent” without setting forth how to accomplish such a conversion.
Claim 3 teaches the limitation “converting a haloalkyl alkoxymethyl ether compound (1B)… into a nucleophilic reagent” without setting forth how to accomplish such a conversion.
Claim 7 teaches the limitation “converting a haloalkyl alkoxymethyl ether compound (1B)… into a nucleophilic reagent” without setting forth how to accomplish such a conversion. Claim 7 teaches the limitation “converting the 1-halo-4,6-dimethyloctadecane compound (8)… into a nucleophilic reagent” without setting forth how to accomplish such a conversion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bagneres et al. (US 2008/0045519) discloses in paragraph 0012, fighting against social, sub-social or gregarious insects chosen from the group comprising termites, ants, cockroaches, earwigs and locusts comprising the use of alkanes or alkenes comprising from 20 to 40 carbon atoms. Preferably, the alkanes or alkenes used comprise from 23 to 35 carbon atoms. More preferably, the alkanes and alkenes used comprise from 25 to 27 carbon atoms. Even more preferably, the alkanes and alkenes used are chosen from the group comprising 11-methyltetracosane, 5-methylpentacosane, 11-methylpentacosane, (Z)-9-pentacosene, n-pentacosane, n-hexacosane, 5,17-dimethylpentacosane, and 5-methyltetracosane.
Miyake et al. (US 2022/0106252) discloses in the abstract, a 6-hydroxy-3-hexenyl alkoxymethyl ether compound of the following general formula (1): HOCH2CH2CH═CHCH2CH2OCH2OCH2R′ (1), R1 representing a hydrogen atom, an n-alkyl group having 1 to 9 carbon atoms, or a phenyl group; and also relates to a process for preparing a 3,13-octadecadien-1-ol compound of the following formula (6): CH3(CH2)3CH═CH(CH2)8CH═CHCH2CH2OH (6) from the 6-hydroxy-3-hexenyl alkoxymethyl ether compound (1).
Miyake et al. (US 2022/0106253) discloses in the abstract, a haloalkenyl alkoxymethyl ether compound of the following general formula (1): R1CH2OCH2OCH2CH2CH═CH(CH2)aX1 (1) wherein R1 represents a hydrogen atom, an n-alkyl group having 1 to 9 carbon atoms, or a phenyl group, X1 represents a halogen atom, and “a” represents an integer of 3 to 14. The present invention also relates to processes for preparing a terminal conjugated alkadien-1-yl acetate compound of the following general formula (5): CH2═CHCH═CH(CH2)aOAc (5) wherein “a” is as defined above, and Ac represents an acetyl group, and a terminal conjugated alkadien-1-ol compound of the following general formula (6): CH2═CHCH═CH(CH2)aOH (6) wherein “a” is as defined above, from the haloalkenyl alkoxymethyl ether compound (1).
Milani et al. (US 2005/0048093) discloses in the abstract, compositions for the modulation of acarid infestation of a colony of bees, said comprising alkenes selected from the group consisting of cis-6-heptadecene, cis-7-heptadecene, cis-8-heptadecene, cis-9-heptadecene, cis-6-pentadecene, cis 7-pentadecene, cis-8-pentadecene and cia-9-pentadecene, in particular comprising cis-8-heptadecene. The invention further relates to use of cis-8-heptadecene as an acaricide, and to methods of modulating mite infestation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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