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 .
Specification
The use of the terms and/or phrases “MestReNov,” “CombiFlash,” “RediSep Rf Gold,” and “RediSep Rf,”which are a trade names or a marks used in commerce, has been noted in this application. See specification page 21 paragraphs 0024 – 0025. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 – 2, 9 – 13, 16, 28 – 29, 36 – 40, 42, and 46 – 47 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.
Regarding claim 1, the term “sterically bulky group” in line 5 of the claim is a relative term which renders the claim indefinite. The term “sterically bulky group” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, is the group considered a sterically bulky one compared to a H atom? Or is the group considered a sterically bulky one compared to a CH3 group? As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of what group would be considered a sterically bulky group. As such one of ordinary skill in the art would not be reasonably apprised of what compounds are included within the scope of claim 1 and which are not. Therefore, given the uncertainty around the meaning of “sterically bulky group” claim 1 is rejected under 35 U.S.C. 112(b). Additionally, claims 2, 9 – 13, and 16 are included in the rejection for being dependent on claim 1 and failing to address the deficiency.
Regarding claim 28, the term “sterically bulky group” in line 3 of the claim is a relative term which renders the claim indefinite. The term “sterically bulky group” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular, is the group considered a sterically bulky one compared to a H atom? Or is the group considered a sterically bulky one compared to a CH3 group? As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of what group would be considered a sterically bulky group. As such one of ordinary skill in the art would not be reasonably apprised of what compounds are included within the scope of claim 28 and which are not. Therefore, given the uncertainty around the meaning of “sterically bulky group” claim 28 is rejected under 35 U.S.C. 112(b). Additionally, claims 29, 36 – 40, 42, and 46 – 47 are included in the rejection for being dependent on claim 28 and failing to address the deficiency.
Moreover, claim 12 recites, “the method of claim 1, wherein Y comprises a branched C3-C10 alkyl, cycloalkyl, aryl, heteroaryl, or non-aromatic heterocyclyl.” Claim 12 the use of the word, “comprises,” in line 1 of the claim renders the claim indefinite because it is unclear what other alternatives are intended to be encompassed by the claim 12. In particular, one of ordinary skill in the art would not know whether Y could be alternative structural features or whether Y is limited to the list of structural features recited in the claim. As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of what compounds are included within the scope of claim 12 and which are not. Therefore, given the uncertainty around what Y includes claim 12 is rejected under 35 U.S.C. 112(b).
Furthermore, claim 39 recites, “the method of claim 28, wherein Y comprises a branched C3-C10 alkyl, cycloalkyl, aryl, heteroaryl, or non-aromatic heterocyclyl.” Claim 39 the use of the word, “comprises,” in line 1 of the claim renders the claim indefinite because it is unclear what other alternatives are intended to be encompassed by the claim 39. In particular, one of ordinary skill in the art would not know whether Y could be alternative structural features or whether Y is limited to the list of structural features recited in the claim. As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of what compounds are included within the scope of claim 39 and which are not. Therefore, given the uncertainty around what Y includes claim 39 is rejected under 35 U.S.C. 112(b).
Discussion of the Prior Art
The closet prior art of Kanda et. al. ((2014), Enantioselective Synthesis of Planar-Chiral Phosphines with 1,N-dioxa[N]paracyclophane scaffold and their applications as chiral ligands, Heterocycles, 88, 1355 – 1370) teach asymmetric catalysis is a powerful tool for the preparation of enantiomerically enriched compounds. See page 1355 paragraph 1. Specifically, Kanda et.al. teach compound 8aa of structure
PNG
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228
238
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Greyscale
. See page 1360 Table 4. However, Kanda et. al. fail to teach any of the compounds of claims 43 or 48. See claims 43 and 48 limitations. Moreover, the prior art fails to provide motivation to modify the prior art of compound 8aa to arrive at a compound of either claims 43 or 48. Thus given that the closet prior art compound 8aa fails to anticipate or render obvious the examined compounds of claims 43 or 48; claims 43 and 48 are free of the prior art.
Conclusion
Claims 1 – 2, 9 – 13, 16, 28 – 29, 36 – 40, 42, and 46 – 47 are rejected. Claims 43 and 48 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627
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