DETAILED ACTION
Claims 1-6 are currently pending in the instant application.
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 Arguments
Applicant’s arguments, see p. 1-4, filed 12/15/2025, with respect to the rejection(s) of claim(s) 1-3 under Sharutin et al as well as claims 1-2, 4 and 6 under Furukawa et al have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sharutin et al.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sharutin et al (see Russian Journal of General Chemistry, 2002, Vol. 72, No. 12, p. 1925-1926). Sharutin et al teach the reaction
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and exemplifies adding pentaphenylantimony (2.17 mmol) and diphenyl-bismuth 4-methylbenzenesulfonate (2.17 mmol) to give triphenylbismuth. Although Sharutin et al does not teach a substoichimetric amount of the arylbismuth precursor relative to the nucleophile, it would have been prima facie obvious to vary the amount of bismuth compound to the antimony compound to optimize the yield of the process. According to MPEP 2144.05, Section II, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” MPEP 2144.05 citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Barton et al (see Tetrahedron, 1986, Vol 42, No. 12, p. 3111-3122, see IDS filed 06/24/2022).
Barton et al teach synthesis of di-p-tolylphenyl bismuth from di-p-tolylbismuth chloride (4.8 g = 11.2 mmol) and phenylmagnesium bromide from bromobenzene (1.76 g = 11.2 mmol) and magnesium (0.28 g = 11.5 mmol) - see p. 3119. Although Barton et al does not teach a substoichimetric amount of the arylbismuth precursor relative to the nucleophile, it would be obvious to vary the amount of bismuth compound to the nucleophile (i.e. phenylmagnesium bromide) to optimize the yield of the process. According to MPEP 2144.05, Section II, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” MPEP 2144.05 citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Barton et al (see Tetrahedron, 1986, Vol 42, No. 12, p. 3111-3122, see IDS filed 06/24/2022) in view of Sharutin et al (see Russian Journal of General Chemistry, 2002, Vol. 72, No. 12, p. 1925-1926).
The teachings of Sharutin et al are described in the above 103 rejection. Regarding the use of R2 as a tosyl group, Barton et al teach a chloro group instead. However Sharutin et al teaches that reaction of a diarylbismuth precursor having a tosyl group as a leaving group with an organometal nucleophile is known. Thus, a chloro and tosyl group would be considered equivalents as they both function as leaving groups and it would have been prima facie obvious to substitute one for the other. See MPEP 2144.06.
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gilman et al (see J. Am. Chem Soc, 1941, Vol. 63, No. 1, p. 207-211).
Gilman et al teach the reaction diphenylbismuth chloride (0.01 mol) with α-naphthylmagnesium bromide (0.01 mol) to give diphenyl-α-naphthylbismuth. Although Gilman et al et al does not teach a substoichimetric amount of the arylbismuth precursor relative to the nucleophile, it would be obvious to vary the amount of bismuth compound to the nucleophile (i.e. α-naphthylmagnesium bromide) to optimize the yield of the process. According to MPEP 2144.05, Section II, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” MPEP 2144.05 citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Gilman et al (see J. Am. Chem Soc, 1941, Vol. 63, No. 1, p. 207-211) in view of Sharutin et al (see Russian Journal of General Chemistry, 2002, Vol. 72, No. 12, p. 1925-1926).
The teachings of Sharutin et al are described in the above 103 rejection. Regarding the use of R2 as a tosyl group, Gilman et al teach a chloro group instead. However Sharutin et al teaches that reaction of a diarylbismuth precursor having a tosyl group as a leaving group with an organometal nucleophile is known. Thus, a chloro and tosyl group would be considered equivalents as they both function as leaving groups and it would have been prima facie obvious to substitute one for the other. MPEP 2144.06.
Conclusion
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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