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 .
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.
Status of Claims
Claims 1-2, 4-8 and 10-14 are currently under examination. Claims 17-21, 23-25 and 29 are withdrawn from consideration. Claims 3, 9, 15-16, 22 and 26-28 have been cancelled. Claims 1 and 13 are amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection improper Markush Group Rejection is amended as set forth below.
In the light of the amendments, the rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, with respect to claims 1-2, 4-8 and 10-14 is withdrawn.
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 1-2, 4-8 and 10-14 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Rosenfeld et al. (Inorganic Chemistry, 2007, 9715-9735) with respect to claims 1, 4-5, 8, 10-12 and 14 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Chan et al with respect to claim 12 is withdrawn.
New grounds or rejections are set forth below.
Amended & New Grounds or Rejections
Improper Markush Grouping Rejection
Claims 1-2, 4-8 and 10-14 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 712-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature. The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
The instant claimed catalyst compound represented by Formula (I), (I-A) and (I-B) comprising a broad claimed a catalyst compound the formula (I), (I-A) and (I-B) with many independently varying elements M, E, R, X, L, R’, R’’ and n.
The recited Markush group so disparate chemically as not to be members of a recognized chemical class of compounds, but, in fact represent a of class of a catalyst compound having the many independently varying elements M, E, R, R’, R’’, X, L and n.
The recited Markush group E which is selected from O, S, Se, Te or NR’’ so disparate chemically as not to be members of a recognized chemical class of compounds, but, in fact represent a of class of a catalyst compound varying elements M, E, R, R’, R’’, X, L and n. There is no any single structural similarity. The support having the formula (I), (I-A) and (I-B) with different O, S, Se, Te or NR’’ group behaves in the different manner for a catalyst compound.
Furthermore, the L are broadly selected from amine ligand, sulfur ligand, phosphine ligand, diethyl ether, tetrahydrofuran, furan, thiofuran, pyrrole, N-methyl pyrrolidinone, and substituted pyridine. There is no any single structural similarity and behaves in the different manner for a catalyst compound.
In response to this rejection, applicants should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claim(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature.
This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1).
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under Improper Markush Grouping for the reasons set forth above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-7 and 12-13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites the limitation of “L is selected from…unsubstituted pyridine”. It does not further limit its independent claim 1, wherein “provide that n is 1, L is substituted pyridine’’.
Claim 7 recites the limitation of “E is O, …L is selected from substituted or unsubstituted pyridine”. It does not further limit its independent claim 1, wherein “provide that n is 1, E is NR’’, L is substituted pyridine’’.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Appropriated corrections are required.
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.
Claims 1-2, 4-8, 10-11, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (JACS, 2018, 140, 11395-11401, applicants submitted in IDS).
Regarding claims 1 and 13, Chan et al. teach an Oxo-tungsten complex 1b having the structure as shown below (Scheme 2) (Abstract, and page 11396):
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As we see above, the Oxo-tungsten complex 1b corresponds to the instant claimed catalyst, wherein R=-OSi(O-tert-Bu)3, X=Cl, n=1, E=O, M=W, except the L as being unsubstituted pyridine.
Although Chan et al. does not specifically disclose the claimed catalysts having substituted pyridine as per applicant claims 1 and 13, the embodiment disclosed by Chan et al. have overall appearances that are basically the same as the instant claim. They are all have the core structure of OSi(O-tert-Bu)3 groups, oxygen atom, halogen and a pyridine ligand. The only structure difference between the claimed catalysts and the pyridine ligand of Chan et al. is that the claimed catalyst has substituted pyridine ligand.
The claimed catalysts are true homologs of the prior art oxo-tungsten complex. The similarity between the chemical structures is sufficiently close that one on ordinary skill in the arts would have been motivated to make the claimed catalysts in searching for new oxo-tungsten complexes. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made See MPEP 2144.09 I-III.
Regarding claims 2, 4-7 and 13, as discussed above, the 1b complex taught by Chan et al. contains L=unsubstituted or substituted pyridine, R= -OSi(O-tert-Bu)3, R’= tert-Bu, X=Cl, and E=O as the instant claims.
Regarding claims 8, 10-12 and 14, they are not examined due to the fact that they are dependent on unexamined optional catalyst compound represented by Formula (I) and Formula (I-A).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 12/04/2025, with respect to claims 1-2, 4-8, 10-11 and 13-14, have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Regarding claims rejected under Improper Markush Group, applicant argued Mo and W are both group 6 transition metals that share the same number of valence electrons and are known to form complexes of the structure presented. Further, the ligands defined for variables E, R, X and L are among those known to skilled artisan to have the proper electron configuration or Lewis basicity required to form complexes with transition metals such as Mo and W. The presently claimed complexes share the same ring opening metathesis catalytic activity which relies on the central group 6 transition metal (Variable M) common to all the presently claimed compounds (Remarks, pages 7-8).
The Office respectfully disagrees. As discussed above, the L are broadly selected from amine ligand, sulfur ligand, phosphine ligand, diethyl ether, tetrahydrofuran, furan, thiofuran, pyrrole, N-methyl pyrrolidinone, and substituted pyridine. There is no any single structural similarity and behaves in the different manner for a catalyst compound.
As such, the rejection of claim 1 as set forth in the office action above is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738