CTNF 18/031,279 CTNF 88629 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAIL ACTION This office action is a response to a 371 application filed 4/11/2023, which is a national stage application of PCT/KR2021/016853 filed 11/17/2021, which claims foreign priority to KR10-2020-0154030 filed 11/17/2020 and KR10-2021-0157833 filed 11/16/2021. As filed, claims 1-10 are pending. Election/Restrictions Applicant's election with traverse of Group I – Claims 1-4 in the reply filed on 5/28/2026 is acknowledged. Regarding the restriction requirement , the traversal is on the ground(s) that all 10 claims can be searched and examined together in a single application in accordance with the desired practice of compact prosecution without undue burden on the office. Thus, reconsideration and withdrawal of the restriction requirement is respectfully requested. This is not found persuasive because claims 1-10 are not so linked as to form a single general inventive concept and lack of unity of invention. The vastness of the claimed subject matter and the complications in understanding the claimed subject matter impose as serious burden on the search and examination of the claimed subject matter. Since the claims do not relate to a single general inventive concept under PCT Rule 13.1 and lack the same or corresponding special technical features, the claims lack unity of invention. The restriction requirement is still deemed proper and is therefore made FINAL . 08-05 AIA Claim s 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/28/2026 . Information Disclosure Statement The information disclosure statements (IDSs) submitted on 4/11/2023; 5/2/2024; 12/19/2024; and 3/17/2025 has been considered by the Examiner. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 07-30-03-h AIA Claim Interpretation With regards to the phrase, such as “five-membered ammoxidation catalyst" in claim 1, the Examiner finds such phrase as simply stating an inherent property within the catalyst of instant formula (1). See MPEP 2111.02(II). Accordingly, as the prior art teaches the instant catalyst, the result would most necessarily to act like a five-membered ammoxidation catalyst, specifically in the claimed catalyst taught by the prior art (see rejection below). Claim Rejections - 35 USC § 103 07-20 AIA The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 07-23 AIA 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(a) 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. 07-21-02-aia AIA Claim s 1 and 2 are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 7,544,633, hereinafter Kang . See PTO-892 form mailed on 4/8/2026 . The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02. Regarding claims 1 and 2: Determining the scope and contents of the prior art: Kang, for instance, teaches a catalyst for partial oxidation of propylene or isobutylene, and such catalyst has the following formula, as shown below. PNG media_image1.png 174 658 media_image1.png Greyscale (column 2, lines 63-66) PNG media_image2.png 266 644 media_image2.png Greyscale (column 3, lines 1-10) Wherein: instant variable a is 0.5-2; variable X of Kang is Ni; instant variable b is 3-8; instant variable c is 0.5-2; variable Y of Kang is K; instant variable d is 0.005-0.2; and instant variable f is a number determined by according to the oxidation state of each metal. Ascertaining of the difference between the prior art and the claim at issue: Kang, for instance, did not explicitly teach the exact molar ratio of Bi as 0.75-1.5; the exact molar ratio of Ni as 5-10; the exact molar ratio of Fe as 1.2-3.0; and the exact molar ratio of K as 0.01-0.5. Finding of prima facie obviousness --- rationale and motivation: The Examiner finds that the abovementioned molar ratios of the abovementioned elements in the teaching of Kang overlaps with the instant molar ratios of Bi, Ni, Fe, and K. According to the guidance in MPEP 2144.05(I), the instant molar ratios Bi, Ni, Fe, and K is considered prima facie obvious over Kang. In addition, the discovery of new catalyst can take time to achieve, so when promising catalysts are developed, a person of ordinary skill in the art is highly motivated to explore the catalytic activity of the abovementioned obvious variants in search for the best catalyst with an optimal solubility, catalytic activity, etc. Double Patenting 08-33 AIA 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 double patenting rejection is appropriate where the claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. The instant claims are drawn to a five-membered ammoxidation catalyst of instant formula (1). Claims 1 and 2 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over the conflicting claims of the following U.S. patents or co-pending applications. See Table below. If the conflicting claims are in a co-pending application , then the rejection is a provisional ODP rejection because the conflicting claims have not in fact been patented. Co-pending Application No./ U.S. Patent No. Conflicting Claims Provisional ODP (Yes or No) 7,544,633 1 and 7-9 Yes The analysis employed for an obviousness-type double patenting rejection parallels the analysis for a determination of obviousness under 35 U.S.C. § 103. See MPEP 804; In re Braat, 937 F.2d 589, 19 USPQ 2d 1290 (Fed. Cir. 1991); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). For this reason, the factual inquires set forth in Graham v. John Deere Co., 383 U.S. 1, USPQ 459 (1966) are employed herein. The Graham v. Deere inquires are summarized as follows: (A) Determining the scope and contents of the patent claim relative to a claim in the application at issue; (B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue; (C) Determine the level of ordinary skill in the pertinent art; and, (D) Evaluate any objective indicia of nonobviousness. (A) Determining the scope and contents of the patent claim relative to a claim in the application at issue – The conflicting claims of the abovementioned U.S. patent are drawn to a catalyst of formula (1). (B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue - The conflicting claims of the abovementioned U.S. patent did not explicitly teach the exact molar ratios of Bi, Ni, Fe, and K, as shown in instant claim 1. (C) Determine the level of ordinary skill in the pertinent art - the level of ordinary skill in the art may be found by inquiring into: (1) the type of problems encountered in the art; (2) prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) the education level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 855, 962 (Fed. Cir. 1986). All of those factors may not be present in every case, and one or more of them may predominate. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983). Based on the typical education level of active workers in the field of organic chemistry, as well as the high degree of sophistication required to solve problems encountered in the art, the Examiner finds that a person of ordinary skill in the art would have at least a college degree in the field related to medicine, chemistry, and/or the pharmaceutical art and at least four years of work experience, i.e. a masters or doctorate level scientist/clinician. (D) Evaluate any objective indicia of nonobviousness - none Conclusion - Although the conflicting claims are not identical, one of ordinary skill in the art would recognize that they are not patentably distinct from each other. As recited above, the catalyst in the conflicting claims of abovementioned U.S. patent is an obvious variant of the instant catalyst. The Examiner, according to the guidance in MPEP 2144.05(I), finds that a prima facie case of obviousness exists where the instantly claimed molar ratios of Bi, Ni, Fe, and K overlap with the molar ratios of Bi, Ni, Fe, and K in the abovementioned U.S. patent. The unpredictable nature of the chemical arts generally allows an assertion of similarity to be rebutted by a sufficient demonstration of nonobviousness that employs secondary considerations of objective indicia. In this case, there are no indicia of nonobviousness shown to provide evidence that the catalyst of the abovementioned U.S. patent is excluded as the instant catalyst of the instant application. Absent indicia of nonobviousness, the Examiner finds that one of ordinary skill in the art would consider the instant catalyst and that of the conflicting claims of the abovementioned U.S. patent to be equally effective in their objective. This rejection is in agreement with the judicially created doctrine grounded in public policy 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. Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 3 and 4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion Claims 1 and 2 are rejected. Claims 3 and 4 are objected. Claims 5-10 are withdrawn. Telephone Inquiry Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /PO-CHIH CHEN/Primary Examiner, Art Unit 1621 Application/Control Number: 18/031,279 Page 2 Art Unit: 1621 Application/Control Number: 18/031,279 Page 3 Art Unit: 1621 Application/Control Number: 18/031,279 Page 4 Art Unit: 1621 Application/Control Number: 18/031,279 Page 5 Art Unit: 1621 Application/Control Number: 18/031,279 Page 6 Art Unit: 1621 Application/Control Number: 18/031,279 Page 7 Art Unit: 1621 Application/Control Number: 18/031,279 Page 8 Art Unit: 1621 Application/Control Number: 18/031,279 Page 9 Art Unit: 1621 Application/Control Number: 18/031,279 Page 10 Art Unit: 1621 Application/Control Number: 18/031,279 Page 11 Art Unit: 1621
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