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 (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.
Status of Claims
Claims 1-2 and 8-10 are currently under examination. Claims 11-20 are withdrawn from consideration. Claims 3-7 have been cancelled. Claims 8 and 10 are amended.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Previous Grounds of Rejection
The double patenting rejection as being unpatentable over claims 1-2 of US 11, 331, 656 B2, and in view of Bantreil et al. (Organometallics, 2010, 29, 3007-3001) stands.
In the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Rapish et al. (US 2019/0083966 A1) with respect to claims 7-10 is withdrawn. Among them, claim 7 has been cancelled.
Regarding claims 1-2, the rejection under 35 U.S.C. 103 as being unpatentable over Rovis et al. (US 2020/0108381 A1, published on 04/09/2020, US 11,331,656 B2), and in view of Bantreil et al. (Organometallics, 2010, 29, 3007-3001) stands.
New grounds of rejections are set forth below.
Previous & New Grounds of Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-2 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 of US 11, 331, 656 B2, and in view of Bantreil et al. (Organometallics, 2010, 29, 3007-3001).
Although the conflicting claims are not identical, they are not patentably distinct from each other. US ‘656 teaches a composition comprising a ruthenium metathesis catalyst and a photoredox catalyst that is activated by visible light including a wavelength of about 350 nm to 750 nm (which encompasses the instant claimed wavelength of deep red).
US ‘656 teaches a composition for metathesis comprising a photocatalyst that activated by a wavelength about 600 nm to about 750 nm (the instant claimed deep red) and a ruthenium catalyst having a structure as shown below (Abstract, FIG.2, [0080], claims 1-6):
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As we see above, the catalyst taught by US ‘656 comprises, do not specifically disclose, the instant claimed having the formula represented in the instant claim 1.
Bantreil et al. teach ruthenium complex 1b for metathesis (Scheme 1, page 3008):
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The ruthenium complex 1b taught by Bantreil et al. corresponds to the instant claimed ruthenium catalyst.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the ruthenium complex 1b taught by Bantreil et al. in the composition taught by US ‘656 as an alternative ruthenium catalyst to obtain the invention as specified in the claim 1, and expect to the same catalyzing metathesis results. One of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Since both of US ‘656 and Bantreil et al. teach ruthenium metathesis catalysts, one would have a reasonable expectation of success.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Rovis et al. (US 2020/0108381 A1, published on 04/09/2020, US 11,331,656 B2), and in view of Bantreil et al. (Organometallics, 2010, 29, 3007-3001).
Regarding claim 1, Rovis et al. teach a composition for metathesis reactions (formation of a carbon-carbon double bond) comprising a photocatalyst that activated by a wavelength about 600 nm to about 750 nm (the instant claimed deep red) and a ruthenium catalyst having a structure as shown below (Abstract, FIG.2, [0080], claims 1-6):
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As we see above, the catalyst taught by Rovis et al. comprises, do not specifically disclose, the instant claimed having the formula represented in the instant claim 1.
Bantreil et al. teach ruthenium complex 1b for metathesis (Scheme 1, page 3008):
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The ruthenium complex 1b taught by Bantreil et al. corresponds to the instant claimed ruthenium catalyst.
Regarding claim, 2 as discussed above, the photocatalyst in the composition taught by Rovis et al. active a wavelength of about 600 nm to about 750 nm which is encompassed by the instant claimed ranges.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rovis et al. (US 2020/0108381 A1, published on 04/09/2020, US 11,331,656 B2), and in view of Tan et al. (Spin-Forbidden Excitation Enables Infrared Photoredox Catalysis, 2020, 1-6, https:// doi.org/10.26434/chemrxiv.12124215.v1, posted on 04/23/2020).
Regarding claim 8, Rovis et al. teach a composition for metathesis reactions (formation of a carbon-carbon double bond) comprising a photocatalyst that activated by a wavelength about 600 nm to about 750 nm (the instant claimed deep red) and a ruthenium catalyst having a structure as shown below (Abstract, FIG.2, [0080], claims 1-6):
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Although Rovis et al. do not specifically disclose the instant claimed photocatalyst as per applicant claim 8, Tan et al. teach a photoredox catalyst Os4 having the structure as shown below for converting near-infrared (NIR) and deep red (DR) light into chemical energy with minimal energetic waste (Abstract, FIG.2):
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As we see above, the OS4 taught by Tan et al. corresponds to the instant claimed photocatalyst, wherein R’ is H.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the photocatalyst taught by Tan et al. in the composition taught by Rovis et al. to obtain the invention as specified in the claim 8, motivated by the fact that Os catalysts converts the near-infrared (NIR) and deep red (DR) light into chemical energy with minimal energetic waste and have lower extinction coefficients in the NIR and DR and bypass the energy losses associated with ISC rendering it more suitable for large scale reaction in batch (Abstract and page 4).
Since both of Rovis et al. and Tan et al. teach photocatalysts activated by deep red light, one would have a reasonable expectation of success.
Regarding claims 9-10, as discussed above, the OS4 taught by Tan et al. reads on the instant claimed photocatalyst wherein R’ is H.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed 4/27/2026 with respect to claims 1-2 and 8-10, have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Regarding the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 of US 11, 331, 656 B2, and in view of Bantreil et al. (Organometallics, 2010, 29, 3007-3001), applicant argued that the Bantreil Publication teaches away from selecting complex lb. The Bantreil Publication states that several ruthenium complexes have been tested. Among those, the Bantreil Publication provides that the best ruthenium complex was complex la, NOT complex lb. a skilled artisan would have chosen complex la having IMeMe instead of complex lb having IiPrMe for modifying the composition of the '656 Patent. Such a modification with complex la would NOT have arrived at the recited subject matter of presently-pending independent claim 1.
Accordingly, based on at least the reasons provided herein above, it would not have been obvious to combine the '656 Patent and the Bantreil Publication should be withdrawn (Remarks, pages 12-13).
The Office respectfully disagrees. As set forth in the previous office actions and the discussion above, the combine the '656 Patent and the Bantreil Publication read on the instant claims. Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach away the complex 1b. See In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I.
Applicant is reminded that patents are part of the literature of the art, relevant for all they contain, and that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (MPEP2123). As such, the rejection is proper and stands.
Conclusion
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
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