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 4-6 are currently under examination. Claims 3 and 7-15 are withdrawn from consideration. Claims 1-2 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/27/2025 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as deleting the word “derived” and "derivatives" with respect to claims 1-2 is withdrawn.
Regarding claims 1-2 and 4-6, the rejection under 35 U.S.C. 103 as being unpatentable over Bihel et al. (WO 2017/198846A1) is amended as set forth below.
Previous & Amended Grounds of Rejections
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 and 4-6 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.
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.”
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 07/29/2025, with respect to claims 1-2 and 4-6, have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Regarding claims 1-2 and 4-6 rejected by the Bihel et al., applicant argued Bihel teaches a dry solid composition. One of ordinary skill would clearly recognize that the "dry solid composition" of Bihel on pages 43 and 44 is a freeze dried synthetic telomer product rather than a dry formulation as required by amended claim 1, which requires at least one surfactant, at least one lipophilic compound and at least one metal catalyst.
Therefore, one of ordinary skill would understand that isolation of synthesized compounds is common practice in organic synthesis in order to characterize the resultant compounds as well as obtain a product yield. However, one of ordinary skill would also recognize that this process of drying the synthesized compounds is not readily applicable to mixtures of compounds, especially with reactive components such as metal catalysts that have a propensity for side reactions when in metal atoms are in close proximity with other molecules (i.e., under dry conditions).
Indeed,F6TAC22 is merely mentioned on page 45 of Bihel as a synthetic product and mentions that PEG can be included on page 12 in a surfactant. However, nowhere on page 12, pages 45-48, or the remaining sections of Bihel is it suggested that a dry formulation as required by independent claim I can be obtained.
Bihel does not disclose or suggest the lyophilization of nanodroplets for the preservation of ready-to-use green nanoreactors by simply adding water, which is the objective of the instant application.
Bihel discloses "selection of surfactants enables a clean separation of the organic and the aqueous phases after said extraction...and that said aqueous phase...can directly be used, without further step, to perform aqueous-based platinum group metal or gold-catalyzed reactions. "Bihel, p. 4, 11. 20-24.
Thus, one of ordinary skill would understand that Bibel only performs catalysis under solution conditions and does not disclose or suggest that drying a formulation required by independent claim 1 and then rehydrating the composition would be effective for catalysis.
One of ordinary skill would have had no motivation to selectively pick and choose certain teachings from Bihel as alleged by the Examiner to arrive at the instantly claimed composition.
It is impermissible to use the claimed invention as an instruction manual or "template" to piece together the teachings of the prior art so that the claimed invention is rendered obvious. One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention. See Inre Fritch, 972 F.2d 1260 (Fed. Cir. 1992).
Moreover, one of ordinary skill would lack motivation to look to Bihel as one would have no reasonable expectation of success at arriving at drying a composition that can be further rehydrated and used for catalysis.
For example, one of ordinary skill would understand that atoms of a metal catalyst as required by independent claim 1 would likely be reactive under concentrated (i.e., dried) conditions when in the presence of at least one lipophilic compound and at least one surfactant as required by instant claim 1.
One would reasonably expect deterioration of catalytic activity due to the reaction of the metal with molecules in close proximity (i.e., oxygen, the lipophilic compound, and/or the surfactant). Therefore, one would expect that such a dry composition would have significantly diminished, if not completely diminished, catalytic activity upon rehydration. As such, one would lack reasonable expectation of success, and thus motivation, to arrive at the instant claims.
In contrast, the instant application demonstrates advantageously superior or comparable performance qualities in comparison with conventional solution-based micellar catalysis.
See instant published specification, paras. [0009] and [0065]-[0088]. For example, results provided in Example 4 of the specification as published that a rehydrated form of a dry formulation in accordance with instant claim 1 and using a recycled palladium catalyst is capable of being used for a cross-coupling reaction to produce an isolated yield of 30% of the target compound. These results are unexpectedly significant as one would expect that such dehydration and subsequent rehydration of the dry formulation would provide little to no catalytic activity (Remarks, pages 7-12).
The Office respectfully disagrees.
In response to Appellant 's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant 's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 (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.
In responds to applicant’s argument that the instant application shows unexpected results in the instant specification paragraphs [0009] and [0065]-[0088] and Example4 (Remarks, page 12), the Examiner respectfully submits that these examples that applicant used to show the difference are not commensurate in scope with the breadth of the claims. Therefore, they are not convincing.
To demonstrate the “unexpected results”, applicants are needed to demonstrate the significant improvements for the dry formulation. “the unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of “a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree” (See MPEP 716.02).
In addition, since the Bihel et al. teach all of the claimed reagents and dry composition, the physical properties of the resulting composition (i.e., superior or comparable performance qualities) would necessarily follow as set forth in MPEP 2112.01(II).[1]
As such, the rejection of claim 1 as set forth in the office action mailed 4/28/2009, is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
Conclusion
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).