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 7-10 are currently under examination. Claims 11-20 are withdrawn from consideration. Claims 3-6 have been cancelled. Claims 1 and 7 are withdrawn.
Previous Grounds of Rejection
In the light of the amendments, the double patenting rejection as being unpatentable over claims 1-6 of US 11, 331, 656 B2 is withdrawn. Among them, claims 3-6 have been cancelled.
In the light of the amendments, the double patenting rejection as being unpatentable over claims 1-6 of US 12,377, 407 B2 is withdrawn. Among them, claims 3-6 have been cancelled.
Regarding claims 1-4, in the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Rovis et al. (US 2020/0108381 A1, published on 04/09/2020, US 11,331,656 B2) is withdrawn. Among them, claims 3-6 have been cancelled.
Regarding claims 1-7, in the light of the amendments, the rejection under 35 U.S.C. 102(a)(2) as being anticipated by Rovis et al. (US 2020/01611245 A1, provisional application filed on 11/20/2020, US 12, 377, 407 B2) is withdrawn. Among them, claims 3-6 have been cancelled.
New grounds of rejections are set forth below.
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 § 102
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 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rapish et al. (US 2019/0083966 A1).
Regarding claim 7, Rapish et al. teach a catalyst system comprising ruthenium compound having Formula I and a photosensitizer (the claimed photocatalyst) of Os(bpy)3 (claims 10-12).
A product-by-process limitation of “ a photocatalyst that is activated by a deep red to near-infrared light…” of claim 7 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven 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." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
The phrase of "for catalyzing formation of a carbon-carbon double” recites in claim 10 interpreted as intended use. Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Rapish et al. teach the same composition as the instant claim 7, the resulting catalyst composition would expect to be capable of performing these specific carbon-carbon double formation chemical reactions as per applicant claim 7. Therefore it meets the claim limitations.
Regarding claims 8-10, as discussed above, Rapish et al teach Os(bpy)3 (R’ as being H) which reads on the instant claimed photocatalyst.
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 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 Rovis et al. 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 Rovis et al. and Bantreil et al. teach ruthenium metathesis catalysts, one would have a reasonable expectation of success.
A product-by-process limitation of “ a photocatalyst that is activated by a deep red to near-infrared light…” of claim 10 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven 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." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
The phrase of "for catalyzing formation of a carbon-carbon double” recites in claim 10 interpreted as intended use. Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Rapish et al. teach the same composition as the instant claim 10, the resulting catalyst composition would expect to be capable of performing these specific carbon-carbon double formation chemical reactions as per applicant claim 10. Therefore it meets the claim limitations.
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.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 1-2 and 7-10 filed on 11/20/2025 have been considered but are moot in view of the new grounds of rejections.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738