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 .
Status of the Application
Claims 1-8, 10-12 and 14-16 are pending, of which Claims 8, 10-12 and 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-7 are under current examination.
Amendment necessitated new rejection as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 and 2 are indefinite as:
Claim 1 recites “the metal”, which lacks the antecedent basis.
Claim 2 recites “the metal”, which lacks the antecedent basis.
Appropriate correction required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lehmann (US 9079924 B2).
Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution (entire patent). Importantly, examples 2 and 3 (col 10-12):
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discloses:
providing at least one amino alcohol, methyldiethanolamine CH3N (C2H5OH)2, reads on alcohol of formula I, wherein D=NCH3; X=Y=-CR2R3-; R2=R3=H and polyethylene glycol (a protic solvent, alcohol);
adding at least one basic compound NH3 in above solution (thus NH3 is in a protic solvent, polyethylene glycol (alcohol) and obtaining one corresponding amino alkoxide, bis-(N-methyldiethanolamino) tin (example 2 with both steps 1 and 2);
adding 165 g Sn(IV)halide to solution containing polyethylene glycol (i.e., SnCl4 is in protic solvent making a solution) and amino alkoxide of step 2 (165g SnCl4 was added to 1335g of 16% solution of alkoxide in polyethyleneglycol; bis-(N-methyldiethanolamino) tin= 213.6g in 1335g solution; polyethylene glycol 1335g-213g=1121.4g; Therefore, SnCl4 165g in 1121.4g polyethylene glycol, i.e., 14.71% concentration of protic solvent by weight) to obtain corresponding metal amino alkoxide.
Since the cited prior art reads on all the limitations of the instant claims 1, 3, 4, 6 and 7, these claims are anticipated.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lehmann (US 9079924 B2).
Determining the scope and contents of the prior art
Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution (entire patent). Importantly, examples 2 and 3 (col 10-12):
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253
735
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721
615
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discloses:
providing at least one amino alcohol, methyldiethanolamine CH3N (C2H5OH)2, reads on alcohol of formula I, wherein D=NCH3; X=Y=-CR2R3-; R2=R3=H and polyethylene glycol (a protic solvent, alcohol);
adding at least one basic compound NH3 in above solution (thus NH3 is in a protic solvent, polyethylene glycol (alcohol) and obtaining one corresponding amino alkoxide, bis-(N-methyldiethanolamino) tin (example 2 with both steps 1 and 2);
adding 165 g Sn(IV)halide to solution containing polyethylene glycol (i.e., SnCl4 is in protic solvent making a solution) and amino alkoxide of step 2 (165g SnCl4 was added to 1335g of 16% solution of alkoxide in polyethyleneglycol; bis-(N-methyldiethanolamino) tin= 213.6g in 1335g solution; polyethylene glycol 1335g-213g=1121.4g; Therefore, SnCl4 165g in 1121.4g polyethylene glycol, i.e., 14.71% concentration of protic solvent by weight) to obtain corresponding metal amino alkoxide.
Ascertaining the differences between the prior art and the claims at issue
Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution, but fails to teach step C with further metal titanium, and amino alcohols examples of claim 5
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of amino alcohols of the instant claims 5- Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution. Since the cited prior art teaches general conditions of making amino alkoxide of amino alcohols, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that any amino alcohol having two OH groups may also be used in reaction of Lehmann to make corresponding amino alkoxide using same reaction conditions as taught by Lehmann.
Further, Case law has established that it is prima facie obvious to simply employ a different starting material in a generally old reaction. In re Farkas and Sorm 152 USPQ 109 (1966). Thus, the cited prior art meets limitation of the instant claims.
With regard to difference of fails to teach step C with further metal titanium Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution. Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that Sn or titanium or their mixture may be used to make mixture of metal amino alkoxide. This is because the cited prior art teaches using metal, such as Sn, Ti to make their corresponding alkoxide.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Lehmann discloses a method of making metal amino alkoxide using amino alcohol, basic compound NH3 in protic solvent polyethylene glycol (alcohol), metal halide with examples of Sn(IV) halide and titanium in protic solvent as a solution.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the metal amino alkoxide using any amino alcohol similar to the cited prior art and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited reference and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Response To Arguments
Applicant’s amendment and remarks, filed on 10/22/2025, have been fully considered but not found persuasive.
Applicant’s argument is moot in view of new rejection as set forth above.
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.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623