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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/22/2026 has been entered.
Applicants' arguments, filed 6/22/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 4, 6, and 8 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anga et al (Dalton Trans, 2016, 44, 995-965).
Applicants assert the prior art does not disclose the specific molar ratio instantly claimed, nor that the reaction occurs in a non-coordinating solvent, which render the claims allowable. Applicants also assert Examiner has not demonstrated the compounds are the same.
Examiner disagrees. First, as previously noted, the instant process limitations are not relevant if the resulting compounds appear to be the same. As such, Examiner noted that where the prior art teaches mixing at a ratio of 1:2, then the resulting coordination of the Mg atoms of component (i) and the two N atom of component (II) will reasonably be expected to be saturated. As such, it is unclear how an excess of component (II) modifies the resulting compounds to make them distinct from the prior art. There is no discussion in the responses or the instant specification which distinguishes the resulting product of a 1:2 molar ratio reaction to the instantly claimed ratio reaction. Instead, it appears that the excess will simply be excess in solution. Applicants have presented no evidence to suggest otherwise. Additionally, looking at the instant specification, the comparison between viscosities in Table 5 appear to be a comparison of n-butyl-n-octyl magnesium in heptanes alone for examples 6g and 6h, but the prior art teaches the combination with carbodimides. As such, Table 5 does not provide a distinction between the compounds of the prior art and the instantly claimed compounds. Based on this logical reasoning, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. MPEP 2112(V) and 2145.
To overcome this rejection, evidence showing the process of the prior art would render a compound with distinct properties or structures linked to the molar ratio or solvents used would be sufficient to counter the argument of anticipation.
Claims 1-8 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srinivas et al (Dalton Trans, 1997, 957-963).
Applicants assert the prior art does not disclose the specific molar ratio instantly claimed, nor that the reaction occurs in a non-coordinating solvent, which render the claims allowable. Applicants also assert Examiner has not demonstrated the compounds are the same.
Examiner disagrees. First, as previously noted, the instant process limitations are not relevant if the resulting compounds appear to be the same. As such, Examiner noted that where the prior art teaches mixing at a ratio of 1:2, then the resulting coordination of the Mg atoms of component (i) and the two N atom of component (II) will reasonably be expected to be saturated. As such, it is unclear how an excess of component (II) modifies the resulting compounds to make them distinct from the prior art. There is no discussion in the responses or the instant specification which distinguishes the resulting product of a 1:2 molar ratio reaction to the instantly claimed ratio reaction. Instead, it appears that the excess will simply be excess in solution. Applicants have presented no evidence to suggest otherwise. Additionally, looking at the instant specification, the comparison between viscosities in Table 5 appear to be a comparison of n-butyl-n-octyl magnesium in heptanes alone for examples 6g and 6h, but the prior art teaches the combination with carbodimides. As such, Table 5 does not provide a distinction between the compounds of the prior art and the instantly claimed compounds. Based on this logical reasoning, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. MPEP 2112(V) and 2145.
To overcome this rejection, evidence showing the process of the prior art would render a compound with distinct properties or structures linked to the molar ratio or solvents used would be sufficient to counter the argument of anticipation.
Claim Rejections - 35 USC § 103
Claims 1-8 and 14-15 stand rejected under 35 U.S.C. 103 as being unpatentable over Anga et al (Dalton Trans, 2016, 44, 995-965) in view of by Srinivas et al (Dalton Trans, 1997, 957-963).
Applicants assert the prior art does not disclose the specific molar ratio instantly claimed, nor that the reaction occurs in a non-coordinating solvent, which render the claims allowable. Applicants also assert Examiner has not demonstrated the compounds are the same.
Examiner disagrees. First, as previously noted, the instant process limitations are not relevant if the resulting compounds appear to be the same. As such, Examiner noted that where the prior art teaches mixing at a ratio of 1:2, then the resulting coordination of the Mg atoms of component (i) and the two N atom of component (II) will reasonably be expected to be saturated. As such, it is unclear how an excess of component (II) modifies the resulting compounds to make them distinct from the prior art. There is no discussion in the responses or the instant specification which distinguishes the resulting product of a 1:2 molar ratio reaction to the instantly claimed ratio reaction. Instead, it appears that the excess will simply be excess in solution. Applicants have presented no evidence to suggest otherwise. Additionally, looking at the instant specification, the comparison between viscosities in Table 5 appear to be a comparison of n-butyl-n-octyl magnesium in heptanes alone for examples 6g and 6h, but the prior art teaches the combination with carbodimides. As such, Table 5 does not provide a distinction between the compounds of the prior art and the instantly claimed compounds. Based on this logical reasoning, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. MPEP 2112(V) and 2145.
To overcome this rejection, evidence showing the process of the prior art would render a compound with distinct properties or structures linked to the molar ratio or solvents used would be sufficient to counter the argument of anticipation.
Allowable Subject Matter
Claims 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-13 are allowable after consideration of Applicants arguments. While the product by process claims do not require disclosure of the specific steps if the resulting product appears to be the same, the method of making claims do require the specific steps. While the molar ratio is unclear if it provides a distinct difference as discussed above, and would still be obvious, the use of non-coordinating solvents is not discussed or suggested. As noted by Applicant, all examples appear to use coordinating solvents and there would be no motivation to use a different class of solvents for the reactions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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