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 .
Status of the Claims
A preliminary amendment to the claims has not been filed. Thus claims 1-13 filed on 05/30/2024 are currently pending and are under examination.
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 1-13 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.
Regarding claim 1, the terms “derivative” in the preamble and “related substituent” in the definition of iPr render the claim vague and indefinite because the terms do not limit the claims to the recited species and thus are unclear as to how much variation of the recited species are tolerated by the use of terms “derivative” and “related substituent”. The rejection is obviated by removing the aforementioned terms.
Claims 2-13 are also rendered indefinite for their dependency on claim 1.
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 –
Claims 1 and 5-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Padmanaban I (Padmanaban, S. et al. “Nickel-Catalyzed NO Group Transfer Coupled with NOx Conversion” J. Am. Chem. Soc. 2022, 144, 2827−2828, published Feb. 14, 2022; cited in IDS 05/30/2024) as evidenced by Padmanaban II (Supporting information of Padmanaban, S. et al. “Nickel-Catalyzed NO Group Transfer Coupled with NOx Conversion” J. Am. Chem. Soc. 2022, 144, 2827−2828, pages S1-S91; published Feb. 14, 2022)
Regarding claims 1, 5-9, 11 and 13, Padmanaban teaches a method for preparing oxime compounds (Fig. 3, reproduced below) that anticipate the claims:
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684
479
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140
472
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wherein 5 is the catalyst as follows (from Scheme 1):
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135
103
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Regarding claim 10, the supporting information, Padmanaban II, teaches on page S6 a representative experimental procedure where 1.60 mmol of NaNO2 and 0.53 mmol of (1-bromoethyl)benzene (specie of the first compound) have been used, thus the molar ratio of the first compound to NaNO2 is about 1:3.
Regarding claim 12, Table S1, entries 14-16 of the supporting information, Padmanaban II, teaches every limitation of the claim.
Allowable Subject Matter
The subject matter of claims 2-4 is free of prior art. The closest prior art reference has been set forth above, in which X1 of catalyst 5 is Cl and provides in Scheme 1 a method for preparing the catalyst. However, Padmanaban I fails to teach that X1 is Br as instantly claimed. Furthermore, there is no suggestion in Padmanaban I for a skilled artisan to modify the teachings of the reference to reasonably obtain the catalyst as claimed in which X1 is Br. There is no guidance in Scheme 1 of the reference to modify the synthetic approach to arrive at a catalyst where X1 is Br.
In view of the foregoing, Padmanaban I neither anticipates nor reasonably makes obvious claims 2-4.
Conclusion
Claims 1-13 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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