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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/09/2025 has been entered.
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) 18, 19, 21, 22, and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valouch et al. (US 2020/0259567). Regarding claim 18, Valouch et al. disclose “a compound of the formula (I)
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(paragraph 168, Formula XVI) wherein n is 1 or 2;x is 0, 1 or 2; each X is C6-C10-aryloxy or C6-C10-aryl, wherein C6-C10-aryloxy is substituted by one substituent R7 and one or more identical or different substituents R7a; and wherein C6-C10-aryl is substituted by one substituent R8 and zero, one or more identical or different substituents R8a-; Rl and R2, independently of each other, are hydrogen, C1-C24-alkyl, C1-C24-haloalkyl, C3- C24-cycloalkyl, C6-C10-aryl or C6-C10-aryl- C6-C10-alkylene, where the rings of cycloalkyl, aryl, and aryl-alkylene in the three last-mentioned radicals are unsubstituted or substituted with one or more substituents Ra, and where C1-C24- alkyl, C1-C24-haloalkyl and the alkylene moiety of C6-C10-aryl-C1-Cio-alkylene may be interrupted by one or more heteroatoms or heteroatomic groups selected from the group consisting of O, S and NRb (paragraphs 171-173);
R3, R4, R5 and R6, independently of each other, are phenoxy, which is substituted by one substituent R7 and by one or two substituents R7a (paragraph 174);
R7 is linear or branched C6-C12-alkyl (paragraph 174); each R7a is independently linear C1-C20-alkyl or branched C3-C10-alkyl (paragraph 174); R8 is linear or branched C5-C12-alkyl; each R8a if present, is C1-C10-alkyl; each Ra is independently selected from the group consisting of C1-C24-alkyl, C1-C24-fluoroalkyl, C1-C24-alkoxy, fluorine, chlorine and bromine; and
Rb is hydrogen, C1-C20-alkyl, C3-C24-cycloalkyl, heterocycloalkyl, hetaryl or C6-C10-aryl (paragraphs 168-174, and R1 and R2 are exemplified in the compound on page 58).”
Valouch et al. fail to specifically disclose “and wherein R7 is attached to phenoxy in para position and at least one of the substituents R7a is attached to phenoxy in the ortho position.” However, Valouch et al. teach that each can be a C6-C10-aryloxy that is polysubstituted (paragraph 174).
Furthermore, it has been held that selection based upon a suitability for an intended purpose is prima facie obvious. See MPEP §2144.07. In this instance, Valouch et al. show on page 50 that suitable substituents on the phenoxy include: a) a branched C3 alkyl in ortho position (XIII-3: isopropyl substituent); and b) a branched C8 alkyl in para position in (XIII-2: see the branched C8 substituent). Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to use the substitutions shown in both embodiments in combination (one in ortho, and one in para position) because Valouch et al. teach polysubstitution, and show that substitutions at ortho and para positions are suitable for the intended purpose. Regarding claim 19 Valouch et al. further disclose “wherein R1 and R2, independently of each other, are selected from the group consisting of linear C1-C24- alkyl, branched C3-C24-alkyl, C5-C8-cycloalkyl, phenyl and phenyl-C1-C10-alkylene,where the rings of cycloalkyl, phenyl and phenyl-alkylene in the three last-mentioned radicals are unsubstituted or substituted by 1, 2 or 3 identical or different substituents Ra (paragraph 171).” Regarding claim 21, only that which is option is recited, and therefore nothing is recited which defines over Valouch et al. [X is optional in Formula (I)].” Regarding claim 22, Valouch et al. further disclose “the compound of the formula (Ia)
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wherein R1 and R2 have the same meaning and are selected from C4-C20-alkyl, C5-C8-cycloalkyl or phenyl, wherein the two last-mentioned substituents are substituted by one, two or three C1-C6-alkyl substituents (paragraph 173); and R3, R4, RS and R6 have the same meaning and are phenoxy (paragraph 174); wherein phenoxy is substituted by one substituent R7 and one or two substituents R7a; wherein R7 is attached to phenoxy in para position and at least one of the substituents R7a is attached to phenoxy in the ortho position, and wherein R7 is linear or branched C6-C12-alkyl and each R7a is independently linear C1-C10-alkyl or branched C3-C10-alkyl.” See the rejection of claim 18 above for discussion on the substituents R7 and R7a; the substituents chosen for the rejection of claim 18 also read on the limitations recited herein.
Regarding claim 24, Valouch et al. further disclose “where R1 and R2 have the same meaning and are phenyl substituted by one, two, or three C1- C6-alkyl substituents, by one or two branched C3-C6-alkyl substituents (paragraph 173, R1 and R2 are exemplified in the compound on page 58).”
Regarding claim 25, Valouch et al. further disclose “wherein R3, R4, R5, R6, and X, if present, have the same meaning (paragraphs 174 and 175).”
Regarding claim 26, Valouch et al. disclose all that is claimed, as in claim 18 above, but fail to specifically disclose that formula (I) is
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However, Valouch et al. do disclose an almost identical formula on page 58. The difference between the two is that the branched C8-alkyl is lacking at the para position for R3, R4, R5, R6. Furthermore, Valouch et al. clearly describe polysubstitution on the phenoxy (paragraph 174), show that the substitutions can occur at both the para and ortho positions (see the compounds on page 50), and show the same branched C8-alkyl substituent for similar structures (page 50, XIII-2) is a possible substituent at the para position. Therefore, at the time of the filing of the invention, it would have been obvious to one having ordinary skill in the art to make R7 the branched C8-alkyl because it has been shown to be suitable for the intended purpose. See MPEP §2144.07.
Response to Arguments
Applicant's arguments filed 12/09/2025 have been fully considered but they are moot in view of the new grounds of rejection.
Conclusion
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/JOSHUA D ZIMMERMAN/ Primary Examiner, Art Unit 2853