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 .
Non-Final Rejection
The Status of Claims:
Claims 1-6, 9-22 are pending.
Claims 1-5, 9-11,14-15, 17, and 19-22 are rejected.
Claims 12-13,16 and 18 are objected.
DETAILED ACTION
1. Claims 1-6, 9-22 are under consideration in this Office Action.
Priority
2. It is noted that this application is a 371 of PCT/US2023/011636 01/26/2023, which has a priority of 63303470 01/26/2022
Drawings
3. The drawings filed on 7/24/2024 are accepted by the examiner.
IDS
4. The IDS filed on 4/11/2025 were reviewed by the examiner.
Claim Objections
Claims 12-13,16 and 18 are objected to because of the following informalities:
In claim 16, the expression “ 850 CC” is recited. The “CC” should be replaced with “C”. Appropriate correction is required.
Claims 5, 12-13, and 18 are 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.
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 1-3, 5, 9, 14-15, 20-22 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.
In claims 1-2, the phrases “ a suitable deprotecting agent” , “ an amide coupling agent” are recited. These expressions are vague and indefinite because the claims do not specify what kind of the deprotecting agent s and the amide coupling agent are involved in the process .The examiner recommends to put the specific deprotecting agent and specific amide coupling agent into the claims.
In claims 3, 9, 22, the expression “M is metal ” is recited. This expression can be vague and indefinite because the claims do not specify what kinds of metal is used for the claims. The examiner recommends to add the specific metal to the claims.
In claims 14-15, the abbreviated terms “NMP” ,“DMAC”, “DMF”, “ DMSO” are recited. These expressions can be vague because each of the abbreviated terms may be meant for a different meaning in a different field of the art . The examiner recommends to add its meaning for the abbreviated term.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation “ C1.6alkyl-O-C1.6alkyl, tetrahydropyranyl, allyl, or benzyl ” ”
, and the claim also recites “ preferably methyl-O-methyl, tetrahydropyranyl, or benzyl; more preferably benzyl” , which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The examiner recommends to put the narrowed limitations to its dependent claims.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-4, 9-11, 15,17,19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for FeCl3, gold. Palladium does not reasonably provide enablement for any catalyst generally. The specification does not enable any skilled process chemist or pilot-plant operator to make the invention commensurate in scope with these claims. “The factors to be considered [in making an enablement rejection] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims”, In re Rainer, 146 USPQ 218 (1965); In re Colianni, 195 USPQ 150, Ex parte Formal, 230 USPQ 546. The three issues here are the lack of guidance in the specification, the limited working examples, and the unpredictability of the catalytic arts.
a) Determining if compound 5 would react with a compound 6 under any conditions, it would require a reaction process with a variety of any catalysts or a generally to produce a compound 3 , a small quantity of experimentation. b) The direction concerning the”catalysts generally " is found in a paragraph#0016, page 4. c) There is one working example 5 of using only FeCl3 catalyst as for representing the " catalyst generally ", pages 28-29. d) The nature of the invention is chemical synthesis to make the compound 3. This requires chemical catalysis.
f) The artisan using Applicants' invention to prepare the claimed compounds would be a process chemist or pilot plant operator with a BS degree in chemistry and several years of experience. As suggested by Applicants in the parent application, he would know how to use FeCl3 but be unaware of any other catalyst to use.
g) Chemical reactions are well-known to be unpredictable, In re Marzocchi, 169 USPQ 367, In re Fisher, 166 USPQ 18. Additionally, catalytic processes, such as are present here, are inherently unpredictable. The U.S. District Court District of Connecticut held in MOBIL OIL CORPORATION v. W.R. GRACE & COMPANY, 180 USPQ 418 that “there is an inherent mystery surrounding the unpredictability of the performance of catalysts; a mystery which is generally recognized and acknowledged by chemists in the cracking art. This is one more reason why the presumption of patent validity "should not be disregarded especially in a case of this sort where the intricate questions of [bio]chemistry involved are peculiarly within the particular competence of the experts of the Patent Office.” Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156, 164, 116 USPQ 484, 490 (4th Cir. 1958)". "The catalytic action can not be forecast by its chemical composition, for such action is not understood and is not known except by actual test, Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 368-369 (1928). Also see, Application of Grant, 304 F.2d 676, 679, 134 USPQ 248, 250-251 (CCPA 1962); Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176, 181, 148 USPQ 522, 525-526 (2d Cir. 1966), cert. denied 385 U.S. 821, 151 USPQ 757 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268, 152 USPQ 446, 450-451 (2d Cir. 1967); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 132-133, 118 USPQ 122, 128-129."
h) The breadth of the claims includes the presently unknown list of catalysts embraced by limitation " a catalyst generally ". Thus, the breadth of the claims is moderate.
Claims 10-11, 17, 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Sodium tungstate (Na2WO4) does not reasonably provide enablement for any catalyst generally. The specification does not enable any skilled process chemist or pilot-plant operator to make the invention commensurate in scope with these claims. “The factors to be considered [in making an enablement rejection] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims”, In re Rainer, 146 USPQ 218 (1965); In re Colianni, 195 USPQ 150, Ex parte Formal, 230 USPQ 546. The three issues here are the lack of guidance in the specification, the limited working examples, and the unpredictability of the catalytic arts.
a) Determining if compound 12 would react with an oxidizing agent under any conditions, it would require a reaction process with a variety of any catalysts or a generally to produce a compound 11 , a small quantity of experimentation. b) The direction concerning the” catalysts generally " is found in a paragraph#00143, pages 18-19. c) There is one working example 2 of using only Sodium tungstate (Na2WO4) catalyst as for representing the " catalyst generally ", page 23. d) The nature of the invention is chemical synthesis to make the compound 11. This requires chemical catalysis.
f) The artisan using Applicants' invention to prepare the claimed compound would be a process chemist or pilot plant operator with a BS degree in chemistry and several years of experience. As suggested by Applicants in the parent application, he would know how to use Sodium tungstate (Na2WO4) but be unaware of any other catalyst to use.
g) Chemical reactions are well-known to be unpredictable, In re Marzocchi, 169 USPQ 367, In re Fisher, 166 USPQ 18. Additionally, catalytic processes, such as are present here, are inherently unpredictable. The U.S. District Court District of Connecticut held in MOBIL OIL CORPORATION v. W.R. GRACE & COMPANY, 180 USPQ 418 that “there is an inherent mystery surrounding the unpredictability of the performance of catalysts; a mystery which is generally recognized and acknowledged by chemists in the cracking art. This is one more reason why the presumption of patent validity "should not be disregarded especially in a case of this sort where the intricate questions of [bio]chemistry involved are peculiarly within the particular competence of the experts of the Patent Office.” Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156, 164, 116 USPQ 484, 490 (4th Cir. 1958)". "The catalytic action can not be forecast by its chemical composition, for such action is not understood and is not known except by actual test, Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 368-369 (1928). Also see, Application of Grant, 304 F.2d 676, 679, 134 USPQ 248, 250-251 (CCPA 1962); Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176, 181, 148 USPQ 522, 525-526 (2d Cir. 1966), cert. denied 385 U.S. 821, 151 USPQ 757 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268, 152 USPQ 446, 450-451 (2d Cir. 1967); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 132-133, 118 USPQ 122, 128-129."
h) The breadth of the claims includes the presently unknown list of catalysts embraced by limitation " a catalyst generally ". Thus, the breadth of the claims is moderate.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 6 is rejected under 35 U.S.C. 102(a)(2) as being anticipated clearly by Tamayo et al (WO 2020/132648 A1). .
Tamayo et al discloses the following compound:
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278
767
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(see abstract ). This is identical with the claim.
Conclusion
Claims 1-4, 9-11,14-15, 17, and 19-22 are rejected.
Claims 12-13,16 and 18 are objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached 8:00-5:00.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 8/04/2026
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