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 .
Response to Amendment
This is the initial office action for application 17626847 filed 11/13/2025.
Claims 1-18 remain cancelled.
Claims 19-37 are currently pending and have been fully considered.
The 35 USC 112 rejection of claims 19-33 have been withdrawn in light of applicant’s amendment.
It appears that applicant has submitted a copy of claims that include annotations that comment on the amendments. A clean copy is recommended.
Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
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 19-37 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 parent claim 19, Q does not appear to be defined in claim 19 and has been interpreted as the Q in claim 21.
Appropriate correction is required.
Regarding claims 19-37, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
For example, Z is written as “carboxylate, optionally of formula C(R18)(R19)(R20)C(=O)O-.”
For another example, L is written to state “a donor ligand, optionally a neutral donor ligand, optionally a neutral electron donor solvent or an electron donor ligand linked to R17.”
For every instance that the phrase “optionally” is used, the claims have been interpreted with their broadest reasonable interpretation.
For example, Z is been interpreted as carboxylate and L is being interpreted as a donor ligand.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 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.
Claim(s) 19-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over ENDO (USPGPUB 2014/0106960).
ENDO teaches Z-selective olefin metathesis catalysts and their synthetic procedure.
Regarding claim 19 and 31, ENDO teaches schemes to prepare the catalysts.
ENDO teaches catalyst complexes with ruthenium with the formula:
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ENDO teaches a process with scheme 9
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ENDO also teaches scheme 6 that shows an intermediate being formed with the addition of tBuCOOAg.
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Scheme 9 would also be expected to an intermediate with 2 tBuCOO prior to the lose of one tBuCOOH. The 2 tBuCOO may be considered the Y groups as presently defined. The tBuCOOH may be considered the Z-H as defined in the present claims.
ENDO teaches in paragraph 120 that a pivalyl ligand can be replaced with another anionic ligand.
ENDO further teaches in scheme 6 that the addition of tBuCOOAg produces an intermediate that produces tBu-COOH.
The process that ENDO teaches in scheme 9 would also be expected to produce tBu-COOH which is a carboxylic acid and would be in contact with the process.
ENDO further teaches in scheme 12 that the ligand can be replaced with another ligand such as a carboxylic acid as taught in a compound of formula 22c. ENDO also teaches in paragraph 8 that the ligand may be a carboxylate.
The scheme meets the limitations for formula (XII) to (XIII) and (XIIA) to (XIIIA).
tBUCOO meets the limitation for Y as presently defined.
R as 2,6-dimethylphenyl meets the limitation for the R1, R2, R3, R4, and R4 as presently defined.
O meets the limitation for X3 as presently defined.
iPr, isopropyl, meets the limitation for R10 as presently defined.
tBuCOO meets the limitation for Z as presently defined.
Regarding claims 20 and 32, ENDO teaches schemes to prepare the catalysts.
ENDO teaches catalyst complexes with ruthenium with the formula:
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X1 is defined as anionic ligands.
X1 may be replaced by X2 which is another anionic ligand.
Anionic ligands are taught in paragraph 11 to include halogens, alkyl, aryl, carboxylate, and others.
ENDO further teaches a scheme 9 in which
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The scheme meets the limitations for formula (XII) to (XIII) and (XIIA) to (XIIIA).
Cl meets the limitation for X1 and X2 as presently defined.
tBuCOO meets the limitation for Y as presently defined.
R as 2,6-dimethylphenyl meets the limitation for the R1, R2, R3, R4, and R4 as presently defined.
O meets the limitation for X3 as presently defined.
iPr meets the limitation for R10 as presently defined.
ENDO teaches in paragraph 120 that a pivalyl ligand can be replaced with another anionic ligand.
ENDO teaches in paragraph 125 and schemes 11-12 other ligands include formula 22e such as nitrate, as well as other anions.
Q may be nitrate or other anions.
Regarding claims 21 and 33, ENDO teaches in scheme 9 a compound wherein m may be 0, and G may be chlorine.
ENDO teaches in paragraph 120 that a pivalyl ligand can be replaced with another anionic ligand.
ENDO teaches in paragraph 125 and schemes 11-12 other ligands include formula 22e such as nitrate, as well as other anions.
Q may be nitrate or other anions.
A compound in scheme 9 with the pivalyl ligand replaced with another anionic ligand such as nitrate would meets the limitation of XIV-A.
Regarding claims 22, ENDO teaches in paragraph and scheme 3 the addition of salts of formula M1X2. Scheme 9 teaches the use of salt tBuCOOAg and Scheme 6 teaches the production of tBuCOOH with would contact the intermediate in the process.
tBuCOOAg meets the limitation of salt of formula [M+][Y-]
tBuCOOH meets the limitation of a formula of Z-H.
Regarding claim 23, ENDO teaches in paragraph 115 and scheme 9 an example with R being 2,6-dimethyl phenyl.
Regarding claims 24-25, ENDO teaches in paragraphs 76-77 that R4 may be a phenyl group substituted with up to 3 substitutents that include C1-C20 alkyl.
Regarding claim 26, ENDO teaches in paragraphs 76-77 that R4 may be a composed of two aromatic rings.
2 aromatic rings for R4 may only be in the 2 configurations that are being claimed.
n may be 0.
Examples of the R group that would be equivalent to R3 is taught in Scheme 7 with R may be c.
Regarding claim 27, examples of the R group that would be equivalent to R3 is taught in Scheme 7 with R may be a.
Regarding claim 28, ENDO teaches in scheme 9 an example in which X3 would be -O-.
Regarding claim 29, ENDO teaches in scheme 9 an example in which R10 would be iPr or isopropyl, which is a C3 alkyl group.
Regarding claim 30, ENDO teaches in scheme 9 that comprises an adamantly group moiety.
Regarding claim 34, ENDO teaches in scheme 9 a compound that meets the limitation of XX-D wherein m may be 0, and G may be chlorine.
y be linked to form a cyclic structure; (when m is 0, R15 may be anything).
ENDO teaches in paragraphs 76-77 that R4 may be a composed of two aromatic rings.
2 aromatic rings for R4 may only be in the 2 configurations that are being claimed.
n may be 0.
Examples of the R group that would be equivalent to R3 is taught in Scheme 7 with R may be c.
Furthermore, ENDO further teaches in paragraphs 76-77 that R4 of ENDO may be a phenyl group substituted with up to 3 substituents that include C1-C20 alkyl.
Regarding claim 35, ENDO teaches a compound with formula 19a on page 15:
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which meets the present limitations of formula (Y-D) expect that X3 is O.
ENDO teaches in paragraphs 76-77 that R4 may be a composed of two aromatic rings.
2 aromatic rings for R4 may only be in the 2 configurations that are being claimed.
n may be 0.
Examples of the R group that would be equivalent to R3 is taught in Scheme 7 with R may be c.
Furthermore, ENDO further teaches in paragraphs 76-77 that R4 of ENDO may be a phenyl group substituted with up to 3 substituents that include C1-C20 alkyl.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, ENDO also teaches the general formula of the compounds is
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L2 is explicitly taught in paragraph 52 to include neutral electron donor ligands.
It would be well within one of ordinary skill in the art to replace the oxygen with sulfur or nitrogen.
L2 is further explicitly taught in paragraph 79 to include heterocycles containing nitrogen, sulfur, oxygen or a mixture thereof.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding claims 36-37, ENDO teaches in paragraph 138 that catalysts 19a is shown on table 2 and showed high Z selectivity in a CM reaction. CM reactions are shown in table 4 to work on alkenes.
Response to Arguments
Applicant’s amendments to claims 19-33 has clarified the scope of the claims and have been examined on the merits.
Applicant's amendments regarding claims 34-37 have necessitated a new grounds of rejection. However, the claims are still rejected under ENDO as ENDO also teaches the general formula of the catalysts and teaches that L2 which would equate to include X3 and is taught to comprise oxygen, sulfur, nitrogen or a mixture.
It would be well within one of ordinary skill in the art to substitute the oxygen with sulfur or others with a reasonable expectation of success.
Although ENDO teaches specific examples, it would be well within one of ordinary skill in the art to adapt the general teachings of ENDO to produce other catalysts without the scope of the teachings of ENDO.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MING CHEUNG PO whose telephone number is (571)270-5552. The examiner can normally be reached M-F 10-6.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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