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 .
DETAIL ACTION
This office action is a response to the following:
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As filed, claims 1-3 and 5-30 are pending; and claim 4 is cancelled.
Election/Restrictions
Applicant’s election without traverse of Group I – Claims 1-3 and 5-10 in the reply filed on 8/18/2026 is acknowledged.
Claims 11-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/18/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/15/2024 and 11/18/2024 has been considered by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 82776-47-4, hereinafter CAS474.
Regarding claims 1-3 and 5, CAS474, for instance, teaches the following compound, which meets all the limitations of these claims.
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Wherein: instant variables R1 and R2 are methyl.
The structure above is generic to the stereoisomer recited in claim 1. While the generic structure does not specify stereochemistry, the instantly claimed stereoisomer is one of two enantiomers that can be encompassed by the prior art structure. MPEP 2131.02(III) states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015). […]
The same section further notes: “If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated.” For this reason, the prior art is deemed to anticipate the instant claims embracing one or both of the two enantiomers. Furthermore, a person having ordinary skill in the art would have been able to synthesize either enantiomer or the racemic mixture according to known methods.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Antiadrenergic substances”, hereinafter Cignarella. See IDS filed 11/15/2024.
Regarding claims 1-3 and 5, Cignarella, for instance, teaches the compound of N,N-bis(1-methyl-2-hydroxyethyl)benzylamine (IX), which has the following structure and meets all the limitations of these claims.
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Wherein: instant variables R1 and R2 are methyl.
The structure above is generic to the stereoisomer recited in claim 1. While the generic structure does not specify stereochemistry, the instantly claimed stereoisomer is one of two enantiomers that can be encompassed by the prior art structure. MPEP 2131.02(III) states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015). […]
The same section further notes: “If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated.” For this reason, the prior art is deemed to anticipate the instant claims embracing one or both of the two enantiomers. Furthermore, a person having ordinary skill in the art would have been able to synthesize either enantiomer or the racemic mixture according to known methods.
Allowable Subject Matter
Claims 6-10 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.
Conclusion
Claims 1-3 and 5 are rejected.
Claims 6-10 are objected.
Claims 11-30 are withdrawn.
Claim 4 is cancelled.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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