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 .
DETAILED ACTION
Claims 1-13 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of the compound of formula (4), disclosed on page 11 of the instant specification (reproduced below),
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in the reply filed on July 1, 2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statements filed on November 14, 2024 and July 1, 2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1 and 12 are objected to because of the following informalities:
in claim 1, under step (B), the phrase “the producing of” should be changed to “to produce” (line 7 of the claim);
in claim 1, the duplicate definitions of variables R1, R2, R3, R4, Y and n should be deleted (the last three lines of the claim); and
in claim 12, the phrase “during (A) the producing of” should be changed to “during (A) in the producing of” (line 3 of the claim).
Appropriate correction is required.
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 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 –
(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 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
Takahi et al. {WO 2011/033872 A1- see provided machine generated English translation} – who disclose the process of Example [1-1] in paragraph [0089] on page 24 of the English translation wherein the compound,
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, is prepared by the process which comprises using the compound,
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, as the starting material in the presence of thiourea, ethanol (i.e., a protic polar solvent) and ethyl acetate (i.e., an aprotic polar solvent);
and
Shimakawa et al. {JP 2001/163872 A - see provided machine generated English translation} - who disclose the process of Example 1 in paragraph [0031] on pages 3-4 of the English translation wherein the compound,
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, is prepared by the process which comprises using the compound,
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, as the starting material in the presence of thiourea, sulfuric acid (i.e., a protic polar solvent) and isopropyl ether (i.e., an aprotic polar solvent).
Each of the above cited prior art disclose processes of making which are embraced by the instant claimed invention. Therefore, each of the above cited prior art anticipates the instant claimed invention.
The showing in the instant specification on pages 13-15 has been considered. However, the showing is not commensurate in scope with the instant claimed invention. Note, for instance, a specific protic polar solvent (i.e., sulfuric acid) and a specific aprotic polar solvent (i.e., DMSO) were used in the comparison showing in Table 1 on page 15 of the instant specification. To establish unexpected, beneficial and superior results of the instant claimed process over the processes taught in the prior art, Applicant should compare by testing a sufficient number of exemplified prior art processes with the process of the instant claimed invention. Therefore, the comparison showing in the instant specification is not persuasive.
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Takahi et al. {WO 2011/033872 A1} and Shimakawa et al. {JP 2001/163872 A}, each taken alone, and each in further view of the teachings in Takemura et al. {WO 2020/031815 A1} and Fei et al. {CN 110776491 A}. Machine generated English translations of each of the prior art have been provided with this Office Action except for Takemura et al. US equivalent, US 2021/0292297, to Takemura et al. will serve as an English translation.
Determination of the scope and content of the prior art (MPEP §2141.01)
Applicant claims a process for preparing an episulfide compound of formula (2),
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, comprising adding a protic polar solvent and an aprotic polar solvent to a compound of formula (1),
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.
Takahi et al. teach the process of Example [1-1] in paragraph [0089] on page 24 of the provided English translation wherein the compound,
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, is prepared by the process which comprises using the compound,
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, as the starting material in the presence of thiourea, ethanol (i.e., a protic polar solvent) and ethyl acetate (i.e., an aprotic polar solvent).
Shimakawa et al. teach the process of Example 1 in paragraph [0031] on pages 3-4 of the English translation wherein the compound,
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, is prepared by the process which comprises using the compound,
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, as the starting material in the presence of thiourea, sulfuric acid (i.e., a protic polar solvent) and isopropyl ether (i.e., an aprotic polar solvent).
Ascertainment of the difference between the prior art and the claimed invention (MPEP §2141.02)
Takahi et al. nor Shimakawa et al. teach the limitations being claimed in instant claims 12 and 13 such as using acetic anhydride in the process as claimed in instant claim 12 or teach the process of using epichlorohydrin to produce a compound of instant formula (1) as claimed in instant claim 13.
Finding of prima facie obviousness--rational and motivation
(MPEP §2142-2143)
However, Takemura et al. teach the use of acetic anhydride in a process for preparing an episulfide compound in Example 1 in paragraph [0058] on pages 4-5. Further, Fei et al. (page 5, first full paragraph, of the provided English translation) teach that a compound of formula (2),
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(page 2), having two or more mercapto groups is reacted with epichlorohydrin to obtain a compound of formula (3),
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(page 2), which is a compound of instant formula (1).
The claimed process is no more than a selective combination of prior art teachings done in a manner obvious to one of ordinary skill in the art since each step of the process appears to be relatively complete in itself and there is no indication of an interaction between steps of such a type that would lead one of ordinary skill in the art to doubt that a substitution of alternative steps known to the art could be made. In re Mostovych, 144 USPQ 38 (C.C.P.A. 1964). Therefore, the instant claimed invention would have been obvious to one skilled in the synthesis art.
Allowable Subject Matter
The instant claimed process for producing the elected species of the compound of instant formula (4), disclosed on page 11 of the instant specification, is allowable over the prior art of record.
Reminder to Applicant
As a reminder, Applicant should specifically point out the support in the original disclosure {i.e., page number(s) and line number(s)} for any new claims or amended claims and for any amendments made to the disclosure. Making generic statements such as “all amendments are fully supported in the originally filed disclosure or the originally filed claims” without specifying page numbers and originally filed claim numbers are insufficient. See MPEP §714.02 and MPEP §2163.06(I).
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
September 9, 2026
Book XXIX, page 103
Prosecution Insights