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, 4-6 and16-20 are currently under examination. Claims 3 and 7-15 are withdrawn from consideration. Claim 1 is amended. Claims 16-20 are newly added.
Previous Grounds of Rejection
Regarding claims 1-2 and 4-6, in the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Bihel et al. (WO 2017/198846A1) is amended as set forth below.
New grounds of rejections are set forth below.
Amended & New Grounds of Rejections
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 17 and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 17 and 20 recite the limitation "the core-shell droplets". There are insufficient antecedent basis for this limitation in the claims. Appropriated corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recite the limitation of “ wherein the aqueous medium contains at least 70% by volume of water”. It does not further limit its independent claims 1, “wherein the dry formulation has a water content of less than 10 wt%”.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Appropriated corrections are required.
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 1-2, 4-6, 16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bihel et al. (WO 2017/198846A1).
Regarding claim 1, Bihel et al. teach a dry solid composition after extracting Pd-catalyzed cross-coupling reaction and evaporated to a solid (pages 45-48) comprising aqueous solution containing Pd (pages 3-4 and 47-48)(applicant’s elected grouping of patentably indistinct species of Group 8 metal of the Periodic Table), a surfactant including F6TAC7 (applicant’s elected grouping of patentably indistinct species of oligomers of FiTACn) (page 45) and a lipid compound triacetate of a triol compound (also known as glycerol, glycerol tri-esters, applicant’s elected grouping of patentably indistinct species of Lipid) THAM. After evaporation, the resulting dry solid would expect to have water <10% wt. as the instant claim (pages 43-48, claims 1-16).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine F6TAC22 and THAM to obtain the invention as specified in the claim 1, in particular view MPEP 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (in this case used as a surfactant and lipid compound).... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980)”
Although Bihel et al. do not specific disclose the use Karl Fisher Titration determining the water content <10%wt. in the solid composition as per applicant claim 1, the resulting dry solid composition would expect to have some moisture content which reads on the instant claimed limitation of <10%wt.
The phrase of "the dry formulation is in a form that is capable of metal catalysis after reconstitution in an aqueous medium” recites in claim 1 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 Bihel et al. teaches the same dry formulation composition as the instant claim 1, it would expect to be capable of performing these specific chemical reactions of metal catalysis as per applicant claim 1. Therefore it meets the claim limitations.
Regarding claim 2, as discussed above, the dry solid composition taught by Bihel et al. comprises lipid THAM (applicant’s elected grouping of patentably indistinct species of Lipid) (page 12).
Regarding claim 4, as discussed above, the dry solid composition taught by Bihel et al. comprises a weight ratio of Pd 5.7 mg) to a surfactant (20 mg) which is different from the instant claimed at least 50%wt (page 47).
The differences in concentration will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Bihel et. al.
Regarding claims 5-6, as discussed above, the composition taught by Bihel et al. comprises a Group 8 metal Pd.
Although Bihel et al. do not specific disclose the metal of Fe as per applicant claims 5-6, Applicant elected a single grouping of patentably indistinct species of a metal of Group 8 of the Periodic Table.
According to MPEP that “Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case.
In either instance, if the examiner finds one of the species of Pd unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.”
Regarding claim 16, a product-by-process limitation of “the dry formulation is obtained by…” of claim 16 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.
Regarding claim 18, a product-by-process limitation of “the dry formulation is obtained by…” of claim 18 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.
Regarding claim 20, the phrase of "wherein upon reconstitution in the aqueous medium, the dry formulation is in a form that is capable of metal catalysis after reconstitution in an aqueous medium” recites in claim 20 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 Bihel et al. teaches the same dry formulation composition as the instant claim 20, it would expect to be capable of performing these specific chemical reactions of metal catalysis as per applicant claim 20. Therefore it meets the claim limitations.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 03/20/2026 have been considered but are moot in view of the amended and 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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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
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