DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Please Note: This case has been transferred to Examiner Yong Chu.
Claim 8 has been amended. Claims 1-7 and 9-14 are cancelled. New claims 21-25 are added. Claims 8 and 15-25 are pending in the instant application. Claims 15-20 were withdrawn.
Response to Amendments
The Amendment by Applicants’ representative Mr. Gary Abelev on 08/27/2026 has been entered.
Status of Claims
New claims 21-22 and 24-25 are drawn to a composition of claim 8 or claim 21 and further defining the ruthenium catalyst comprises a compound represented by the Formula (I)
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250
156
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of claim 21, or the ruthenium catalyst comprises a compound represented by the Formula
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347
329
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of claim 22. Therefore, new claims 21-22 and 24-25 are drawn to different inventions from the invention of claim 8 under examination. Claims 21-22 and 24-25 require additional search and examination. Therefore, claims 21-22 and 24-25 are also withdrawn from further consideration. Claims 8 and 23 are under examination on the merits.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§103(a)
Applicants cancelled the rejected claims 1-2. The rejection of claims 1-2 is moot.
In terms of the rejection of claims 8-10, because Applicants canceled claims 9 and 10 and amended claim 8, the rejection of claims 8-10 is moot.
Non-status double patenting rejection
Applicants cancelled the rejected claims 1-2. The rejection of claims 1-2 is moot.
The following rejections are necessitated by the amendment filed on 08/27/2026:
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cerfontaine et al., Inorganic Chemistry, (2020), v.59, p.14536-14543.
Applicants’ claim 8 is drawn to a composition for catalyzing formation of a carbon-carbon double bond, comprising: a ruthenium catalyst; and a photocatalyst that is activated by a deep red to near-infrared light, wherein the photocatalyst comprises
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203
363
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wherein R' is Ph.
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87
9
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Cerfontaine et al. (Figure 1 at p.14538) discloses the polynuclear complex 1
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656
273
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,
which comprises a ruthenium catalyst
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604
237
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and a photocatalyst
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284
385
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. Because Cerfontaine et al. discloses the same photocatalyst as the one of claim 8, the photocatalyst of Cerfontaine et al. inherently is also activated by a deep red to near-infrared light.
In terms of the intend-to-use of the complex composition for catalyzing formation of a carbon-carbon double bond, [A] preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuring claim terms and limits the claim accordingly. Satisfaction of the claimed steps/elements necessarily results in satisfying the purpose of the invention or the intended use. Outdry Techs Corp. v. Geox S.P.A. 859 F.3d 1364, Fed. Cir. (2017). Therefore, Cerfontaine et al. anticipates claim 8.
In terms of claim 23, wherein the deep red to near-infrared light has a wavelength of about 600 nm to about 800 nm, it is well-known that 600–660nm is deep/visible red light, and 800–850nm is near-infrared light). Therefore, Cerfontaine et al. anticipates claim 23.
Conclusions
Claims 8 and 23 are rejected.
Claims 15-22 and 24-25 remain withdrawn.
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
/YONG L CHU/Primary Examiner, Art Unit 1731
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