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
Priority and Status of Claims
1. This application is a 371 of PCT/CN2023/083436 03/23/2023, which claims benefit of the foreign application: CHINA 202210321891.5 03/25/2022 and
CHINA 202210641979.5 06/07/2022.
2. Claims 1-17 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claims 1-3 and 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C.
112, first paragraph (pre- AIA ), because the specification does not reasonably provide
enablement of the instant “a catalyst” without limitation (i.e., no named compounds).
The specification does not enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make the invention commensurate
in scope with these claims.
ln In re Wands, 8 USPQ2d 1400 (1988), factors to be considered in determining
whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first
paragraph, have been described. They are:
1. the nature of the invention,
2. the state of the prior art,
3. the predictability or Iack thereof in the art,
4. the amount of direction or guidance present,
5. the presence or absence of working examples,
6. the breadth of the claims,
7. the quantity of experimentation needed, and
8. the level of the skill in the art.
In the instant case:
The nature of the invention
The nature of the invention is a process using “a catalyst” without limitation (i.e., no named compounds), see claim 1.
The state of the prior art and the predictability or Iack thereof in the art
The state of the prior art is Ferrari et al. WO 2014/020024A1, it discloses a
catalyst 4-methylaminopyridine, see claim 6 on page 15.
The amount of direction or guidance present and the presence or absence
of working examples
The only direction or guidance present in the instant specification is the description of a number of “a catalyst” on pages 5-10 of the specification. There is no data present in the instant specification for the “a catalyst” without limitation (i.e., no named compound).
The breadth of the claims
The instant breadth of the rejected claims is broader than the disclosure,
specifically, the instant “a catalyst” is without limitation (i.e., no named compound).
The quantity or experimentation needed and the Ievel of skill in the art
While the level of the skill in the chemical arts is high, it would require
undue experimentation of one of ordinary skill in the art to resolve any “a catalyst” without limitation. There is no guidance or working examples present for constitutional any “a catalyst” without limitation for the instant invention. Incorporation of the limitation of “a catalyst” supported by specification (i.e., claim 2) into claim 1 would overcome this rejection.
4. 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.
Claim Rejections - 35 USC § 102
5. 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 4 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Reld et al. US 2022/0298202 A1.
Applicants claim a compound of formula (I-2), i.e.,
PNG
media_image1.png
228
388
media_image1.png
Greyscale
, wherein R2 is alkyl (e.g. methyl).
Reld et al. ‘202 disclose of a compound 2a, i.e.,
PNG
media_image2.png
214
324
media_image2.png
Greyscale
, see column 11. It clearly anticipates the instant compound of formula (I-2), wherein R2 is alkyl (i.e., methyl).
6. Claims 5-10 are neither anticipated nor rendered obvious over the record, and therefore are allowable.
Claim Objections
7. Claim 4 is objected to because of the following informalities. Since claim 4 is drawn to an independent claim, therefore the definition of variable R1 shall be defined in claim 4 per se. Correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
July 13, 2026
Prosecution Insights