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 Claims
Claims 1-25 are pending in the present reissue application.
Information Disclosure Statement
The information disclosure statements (IDS) filed 23 February 2025 have been considered by the Examiner.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
The consent documents filed on 15 July 2024 do not identify the assignee(s) owning an undivided interest in the original patent:
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Claim Rejection – 35 U.S.C. §251
Claims 19-25 are rejected for lack of any defect in the original application and lack of any error in obtaining the original patent under 35 U.S.C 251.
During prosecution of U.S. patent application 16/792,795 (“the ‘795 application”) which matured into the original patent 11,390,614 (“the ‘614 patent”), a restriction requirement mailed 24 January 2022 was made between the following groups:
Group I, claims 1-2, 5-7, and 11, drawn to a process for making formula IV.
Group II, claims 8 and 13, drawn to a process for making reactant VIa.
Group III, claim 12, drawn to a process for making reactant VIIa.
Group IV, claims 14-16, drawn to a process for making a single species IIIa.
Group VI, claims 19-21 and 29, drawn to a process for making a single species Ia.
In a response filed 24 January 2022, Applicant elected Group I, claims 1-2, 5-7, and 11, drawn to a process of making formula IV. Applicant made the election without traverse. Applicant further requested that the non-elected claims be held in abeyance for possible rejoinder and/or further prosecution in future divisional and/or continuation applications. The ‘614 patent was issued with elected claims 1, 2, 5-7, and 11 being renumber as claims 1-6. The claims directed to the non-elected group were not rejoined and therefore were effectively cancelled. No further divisional and/or continuation application(s) seeking to prosecute the non-elected groups was/were filed.
Additionally, pursuant to MPEP 1412.01 II, the failure to file continuation/divisional application of the non-elected invention(s) or non-claimed subject matter distinct from the elected invention cannot be recovered by filing a reissue application. The failure to file a continuation/divisional application is not considered to be an error causing a patent granted on the elected claims to be wholly or partially inoperative by claiming less than Applicant had a right to claim. See MPEP 1412.01 II, citing In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA).
In the instant reissue application, claims 1-18 (Invention I) are directed towards a method for preparing a benzofuran derivative which was the elected invention during prosecution of the underlying ‘795 application. However, claims 19-21 (Invention II) are directed towards a compound VI and claims 22-25 (Invention III) are directed towards a compound IV both of which are patentably distinct from the originally elected method for the following reasons.
Inventions I and II are directed towards a product and a method of using the product. Inventions I and II can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. In the instant case, the benzoic acid compound VI of Invention II can be used by itself as a solvent or acidifying agent or as a reactant in a process to produce a materially different product such as a benzoic acid ester.
Inventions I and III are directed towards a process of making a compound and a compound made from the process. A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process. In the instant case, the product of Invention III can be made by a materially different process comprising aromatization of a dihydrobenzofuran carboxylic acid precursor
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such as that taught by Burgos et al., US 2009/0131688 (illustrated below).
Inventions II and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make a product other than the claimed final product and the species are patentably distinct. In the instant case, the intermediate product is deemed to be useful as a starting material for making a substituted benzoic acid ester derivative and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since Invention I was elected by Applicant during the prosecution of the underlying ‘795 application and since Inventions II and III were non-claimed subject matter distinct from the elected invention, the failure to file a continuation/divisional application of the subject matter of Inventions II and III is not correctable by reissue of the original patent under 35 U.S.C. § 251. Accordingly, claims 19-25 are not further treated on the merits.
Claim Objections
Claim 3 is objected to because of the following informalities: the claim recites the terms “tetrahydro-furan” and “pro-panol” both which comprise an extraneous hyphen. The terms should be “tetrahydrofuran” and “propanol”, respectively. Appropriate correction is required.
Ongoing Duty to Disclose
Applicant(s) is/are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent 11,390,614 is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Pertinent Prior Art
● Lu et al., WO 2017/084494 (copy provided herewith) discloses the following reaction scheme:
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It is noted that Lu et al. does not teach or suggest utilizing the compound V recited in reissue claim 1 in the disclosed reaction scheme. Instead, the method disclosed by Lu et al. relies on a sequence of alkylation with 2-bromo-1,1-diethyoxyethane followed by cyclization and debromination to form the benzofuran core (i.e., the conversion of 1e to 1f in the reaction scheme above).
Allowable Subject Matter
Claims 1, 2, and 4-18 are allowed over the prior art.
Conclusion
Claims 1, 2 and 4-18 are allowed. Claim 3 is objected to. Claims 19-25 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/ Reexamination Specialist, Art Unit 3991
Conferees:
/JOSEPH R KOSACK/ Reexamination Specialist, Art Unit 3991
/Patricia L Engle/ SPRS, Art Unit 3991
Prosecution Insights