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 .
Applicants' arguments, filed 09/29/2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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, 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anga et al (Dalton Trans, 2016, 44, 995-965).
Anga et al discloses amidinato magnesium complexes which result from the reaction of 2 R-N=C=N-R + Mg(CH2Ph)2(Det2))2 in toluene (pg 956 scheme 3) where R is isobutyl and the ratio appears to be 1:2 based on the instant compounds (I) and (II). The compounds care reacted with benzyl alcohol as well (pg 961).
With regards to claims 1, 3, 4, 6, 8-10 and 14-15, Examiner notes even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113(I). As it appears the same process is followed as instantly claimed, and the ratio of components is at least 1:2 for Mg and N=C=N compounds, it is reasonably expected that the resulting compounds and formulations meet the instant claim limitations.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srinivas et al (Dalton Trans, 1997, 957-963).
Srinivas et al discloses the reaction of MgR2 + R’NCX at a 1:2 ratio in tetrahydrofuran to yield Mg(SCPhNBut)2 where R is Ph, Et, or Pr (pg 958 Scheme 1).
Examiner notes even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113(I). As it appears the same process is followed as instantly claimed, and the ratio of components is at least 1:2 for Mg and N=C=N compounds, it is reasonably expected that the resulting compounds and formulations meet the instant claim limitations.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are 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).
Anga et al is discussed above but does not teach the compound of formula (I).
Srinivas et al is discussed above for teaching the compounds of formula (I) were known and suitable for reacting with carbodiimide compounds.
It would have been obvious to one of ordinary skill in the art to vary the two components of the reactions, given their common core structure to vary the resulting complexes, thereby producing additional agents.
Applicants have previously asserted the criticality of the ratio and the improvement of viscosity with regards to some of the compounds. Examiner notes that the results are not commiserate in scope of the claims. Specifically, claim 1 is broad insofar as it is directed to any compounds within the claimed formula. While there are some showings of improved viscosity results, the claims must differentiate between the broader range of compounds made obvious and the range which demonstrates the unexpected results.
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 BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri (9am-6pm + 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