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 Claims
Claims 1-18 are pending.
Claims 21 is new.
Claims 19 and 20 are currently cancelled.
Response to Amendments
Applicant’s amendments filed 27 April 2026 are acknowledged.
Claim Rejections - 35 USC § 102
Applicant’s cancellation of claims 19 and 20 are sufficient to overcome the rejection of claims 19 and 20 under 35 U.S.C. 102(a)(1) as being anticipated by Ereztech (“Bis(ethylbenzene)molybdenum”, 11 October 2021, The Wayback Machine, Pgs. 1-20).
Due to the cancellation of the claims, the rejection is withdrawn.
Double Patenting
Applicant’s cancellation of claims 19 and 20 are sufficient to overcome the provisional rejections of:
Claim 19 on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of copending Application No. 18240151 to Kuiper (reference application, hereinafter Kuiper ‘151);
Claim 20 on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of copending Application No. 18240151 to Kuiper (hereinafter Kuiper ‘151) in view of Hunks et al. (US20140220733, hereinafter Hunks);
Claim 19 on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 20 of copending Application No. 19215290 to Kuiper (reference application, hereinafter Kuiper ‘290); and,
Claim 20 on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 20 of copending Application No. 19215290 to Kuiper (hereinafter Kuiper ‘290) in view of Hunks et al. (US20140220733, hereinafter Hunks).
Due to the cancellation of the claims, the above rejections are withdrawn.
Response to Arguments
Applicant’s arguments filed 27 April 2026 have been fully considered but they are not persuasive or moot.
Applicant’s argue that Asirvatham, Connor, Umilin, and Hunks do not disclose the limitations as recited in the claims. These arguments have been considered but are not persuasive for the reasons set forth in the maintained modified grounds of rejection below and the response to arguments below.
In response to Applicant’s arguments on pages 11-12 of the remarks filed on 27 April 2026 that the “Office Action concedes that the emphasized elements are not present in Asirvatham, stating “Asirvatham does not teach: The instant application claims 1 and 13 limitations of a mixture of bis (arene) metal complexes” which “provides significant improvement over the prior art”, and the “Office Action then relies on Connor for this element. However, Connor does not teach or suggest using a mixed starting solution to obtain an amount of the substituted bis (first arene) metal complexes”.
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
Connor is not relied upon to teach a mixture of bis (arene) metal complexes. As stated on page 9 of the previous office action dated 26 November 2025 (hereinafter POA), Umilin is relied upon to teach “a mixture of organometallic compounds, in which benzene or other aromatic hydrocarbons may be present as a ligand”, such as “a mixture of benzeneethylbenzenemolybdenum, bis-ethylbenzenemolybdenum, ethylbenzenediethylbenzenemolybdenum, and bis-diethylbenzenemolybdenum”, see Pg. 1220, Pg. 1, First Para.; Pg. 1221, Table 1.
“A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”, see MPEP 2141.01(a).
Asirvatham is in the known prior art field of the synthesis of “[b]is(n6-arene)molybdenum complexes with alkyl substituents” “by metathesis of the arene ligands of bis(n6-benzene)molybdenum”, see Abstract, where as stated on pages 7-8 of the POA, “a mixture of (η6-C6H6)-(η6-C6H5Et)Mo, (η6-C6H5Et)2Mo, (η6-C6H5Et)(η6-C6H4-Et2)Mo, and (η6-C6H4Et2)2Mo is obtained when ethylbenzene is employed in the FHS in order to synthesize bis (ethylbenzene) molybdenum, see Pg. 1687, Results and Discussion, i.e., the FHS synthesize of bis (ethylbenzene) molybdenum is a mixture of bis (arene) metal complexes” in the reaction mixture.
As stated on page 9 of the POA, Umilin is in the known prior art field of ““bis-ethylbenzenemolybdenum” produced according to the Friedel-Crafts reductive reaction” from “a mixture of organometallic compounds, in which benzene or other aromatic hydrocarbons may be present as a ligand”, such as “a mixture of benzeneethylbenzenemolybdenum, bis-ethylbenzenemolybdenum, ethylbenzenediethylbenzenemolybdenum, and bis-diethylbenzenemolybdenum”, see Pg. 1220, Pg. 1, First Para.; Pg. 1221, Table 1.
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the starting material of the FHS synthesize of bis (ethylbenzene) molybdenum of Asirvatham by applying the known technique of the mixture of bis (arene) metal complexes as taught by Umilin and as suggested by Asirvatham with a reasonable predictability of success for the purpose of efficiently and selectively preparing a bis (arene) metal complex with the desired thermal stability and purity, see Umilin, Pg. 1220, Title; Paras. 1-2; Fig. 1; Table1; and, MPEP 2143 I. B-D.
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”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Asirvatham and Umilin both teach or suggest the preparation and composition of bis (arene) metal complexes from the mixture of bis (arene) metal complexes, a person of ordinary skill in the art has good reason to modify Asirvatham by relying upon Umilin before the effective filing date of the claimed invention for knowledge generally available within the preparation and composition of bis (arene) metal complexes art regarding the starting material, see MPEP 2143 B & G and 2141, for the benefit of efficiently and selectively preparing a bis (arene) metal complex with the desired thermal stability and purity, see Umilin, Pg. 1220, Title; Paras. 1-2; Fig. 1; Table 1; and, MPEP 2141 and 2143 I. B-D.
In addition, selection of a known material, such as the desired starting bis (arene) metal complex mixture, based on its suitability for its intended use, such as an improvement in product purity, supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
For the reasons indicated above, applicant’s above arguments are not persuasive.
The rejection of claims 1-11 and 13-17 under 35 U.S.C. 103 as being unpatentable over Asirvatham et al. (“Synthesis of Bis(η6-alkylbenzene)molybdenum by Arene Metathesis”, 15 March 2001, Organometallics, Vol. 20, Pgs. 1687-1688, hereinafter Asirvatham) in view of Connor et al. (“Thermochemistry of bis-Arene- and Arenetricarbonyl-Chromium Compounds containing Hexamethylbenzene, 1,3,5-Trimethylbenzene and Naphthalene”, 1979, Journal of Organometallic Chemistry, Vol. 179, Pgs. 331-356, hereinafter Connor) and Umilin et al. (“Gas Chromatographic Analysis and Composition of Impurities in Bis-Ethylbenzenemolybdenum”, 1972, Consultants Bureau, Pgs. 1220-1222, hereinafter Umilin), as evidenced by Haynes, (“CRC Handbook of Chemistry and Physics”, 2017, 97th Edition, CRC Press, Pgs. 3-34, 3-174, 3-250) is maintained.
The rejection of claims 12 and 18 under 35 U.S.C. 103 as being unpatentable over Asirvatham et al. (“Synthesis of Bis(η6-alkylbenzene)molybdenum by Arene Metathesis”, 15 March 2001, Organometallics, Vol. 20, Pgs. 1687-1688, hereinafter Asirvatham) in view of Connor et al. (“Thermochemistry of bis-Arene- and Arenetricarbonyl-Chromium Compounds containing Hexamethylbenzene, 1,3,5-Trimethylbenzene and Naphthalene”, 1979, Journal of Organometallic Chemistry, Vol. 179, Pgs. 331-356, hereinafter Connor) and Umilin et al. (“Gas Chromatographic Analysis and Composition of Impurities in Bis-Ethylbenzenemolybdenum”, 1972, Consultants Bureau, Pgs. 1220-1222, hereinafter Umilin), as applied to claims 1-11 and 13-17 in the 35 USC 103 rejection above, in further view of Hunks et al. (US20140220733, hereinafter Hunks) is maintained.
Double Patenting
Applicant’s arguments on pages 12-13 of the remarks filed on 27 April 2026 with respect to the provisional nonstatutory double patenting rejections of claims 19 and 20 are moot. As stated above, claims 19 and 20 are currently cancelled; therefore, the rejections are withdrawn.
Maintained, Modified, and New Rejections Based on Amendments to the Claims in the reply filed on 27 April 2026
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new, modified, and maintained rejections, the specific new and modified rejections below are in italics.
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 1-11 and 13-17 stand rejected under 35 U.S.C. 103 as being unpatentable over Asirvatham et al. (“Synthesis of Bis(η6-alkylbenzene)molybdenum by Arene Metathesis”, published 15 March 2001, Organometallics, Vol. 20, Pgs. 1687-1688, hereinafter Asirvatham) in view of Connor et al. (“Thermochemistry of bis-Arene- and Arenetricarbonyl-Chromium Compounds containing Hexamethylbenzene, 1,3,5-Trimethylbenzene and Naphthalene”, published 1979, Journal of Organometallic Chemistry, Vol. 179, Pgs. 331-356, hereinafter Connor) and Umilin et al. (“Gas Chromatographic Analysis and Composition of Impurities in Bis-Ethylbenzenemolybdenum”, published 1972, Consultants Bureau, Pgs. 1220-1222, hereinafter Umilin), as evidenced by Haynes, (“CRC Handbook of Chemistry and Physics”, published 2017, 97th Edition, CRC Press, Pgs. 3-34, 3-174, 3-250).
Asirvatham teaches the claims 1, 4, 5, 7, 8, 10, 11, 13, and 15-17 limitations of the synthesis of bis(η6-alkylbenzene)molybdenum complexes where the arene in bis (arene) molybdenum complexes is replaced by an arene/aromatic solvents, such as ethylbenzene, isopropylbenzene, tert-butylbenzene, or toluene, at elevated temperatures to cleanly produce the corresponding bis(η6-alkylbenzene)-molybdenum complexes in 60-70% yield, see Pg. 1687, Col. 2-Pg. 1688, General Procedure. In a typical reaction, bis (arene) molybdenum complex, such as (η6-C6H6)2Mo, 100 mg, 0.4 mmol, and the aromatic solvent, 2 mL, such as ethylbenzene, isopropylbenzene, tert-butylbenzene, or toluene, are added to a Schlenk flask, the flask is sealed and placed in a 160 °C oil bath for 48 h, excess solvent is removed by vacuum transfer, and the product bis(η6-alkylbenzene)-molybdenum complex, such as (η6-C6H5R)2Mo, where R is ethyl aka bis (ethylbenzene) molybdenum, is recrystallized or sublimed, and typical isolated at yields of 60-70%, see Pg. 1687, Col. 2-Pg. 1688, General Procedure, and in order for recrystallization the product is inherently cooled to at least atmospheric temperature, see MPEP 2112, meeting:
The method of preparing a precursor, the bis(arene) metal complex, such as bis (benzene) molybdenum or bis (ethylbenzene) molybdenum, the first arene, the second arene, such as ethylbenzene, tert-butylbenzene, or toluene, heating the mixture, cooling, and precipitating/crystallizing the bis (first arene) metal complex and the bis (second arene) metal complex molybdenum product, such as bis (ethylbenzene) molybdenum or bis (benzene) molybdenum, bis (toluene) molybdenum, bis (tert-butylbenzene), in instant application claim 1 and in instant application claim 13;
The first instantly claimed formula of for example toluene and ethylbenzene, where Ra is alkyl and Rb-Rf are each independently hydrogen in instant application claim 4 and in instant application claim 15;
Within the temperature range in instant application claim 5;
The inherent cooling in instant application claim 7;
The instantly claimed formula of for example bis (ethylbenzene) molybdenum where Ar3 is ethylbenzene Ra is alkyl and Rb-Rf are each independently hydrogen, M is Mo in instant application claim 8;
The specific first arene and second arene, such as toluene, ethylbenzene, or tert-butylbenzene, in instant application claim 10 and in instant application claim 16;
Within the range of yield in instant application claim 11; and,
The first instantly claimed formula for example bis(η6-alkylbenzene)-molybdenum where Ar4 is benzene, Rg is alkyl, Rh-Rm are each independently hydrogen, M is Mo in instant application claim 17.
Asirvatham does not specifically teach synthesis of a variety of bis(η6-alkylbenzene)molybdenum complexes where the arene in the bis (arene) molybdenum complexes is replaced by a variety of differing arene/aromatic solvents. However, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04 IV.C., and selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Asirvatham to replace the arene in any bis (arene) molybdenum complex with the desired substituted arene for the benefit of producing the molybdenum complex without mixtures of various isomers generally obtained if alkylbenzenes are employed in the FHS, see Asirvatham, Pg. 1687, Col. 2-Pg. 1688, General Procedure.
Asirvatham does not teach:
The instant application claims 1 and 13 limitations of a mixture of bis (arene) metal complexes;
The specific instant application claim 13 limitations of further reacting the obtained first metal complex to obtain a second metal complex; and,
The limitations in instant application claims 2, 3, 6, 9, and 14.
Asirvatham teaches mixtures of various isomers of alkyl and dialkyl bis(η6-arene)molybdenum complexes are generally obtained if alkylbenzenes are employed in the FHS; thus, a mixture of (η6-C6H6)-(η6-C6H5Et)Mo, (η6-C6H5Et)2Mo, (η6-C6H5Et)(η6-C6H4-Et2)Mo, and (η6-C6H4Et2)2Mo is obtained when ethylbenzene is employed in the FHS in order to synthesize bis (ethylbenzene) molybdenum, see Pg. 1687, Results and Discussion, i.e., the FHS synthesize of bis (ethylbenzene) molybdenum is a mixture of bis (arene) metal complexes.
Connor relating to arene displacement/exchange in metal complexes, such as [Cr(η-areneA)2] + 2 areneB → [Cr(η-areneB)2] + 2 areneA (6), by refluxing at elevated temperature and at the optimal pressure, where the arenes are selected based on their optimal temperature of enthalpy for displacement of the target arenes, and the arenes are benzene, ethylbenzene, 1,2-diethylbenzene, 1,2-di(l-methylethyl)benzene, 1,3,5-trimethylbenzene and 1,2,4 trimethylbenzene, Pg. 332, Introduction; Pg. 346, Substitution, redistribution and exchange reactions-Pg. 350, Tables 9, 15 & 16. Specifically, refluxing a solution of [Cr(η-C6H3Me3)2] in benzene at elevated temperature and atmospheric pressure results in [Cr(η-C6H6)2], equations (17) and (18) and the reverse exchange is obtained using benzene and a catalyst to create [Cr(η-C6H6)2] from [Cr(η-C6H3Me3)2], see specifically Pg. 348-Pg. 349, Ln. 3, benzene has a boiling point of 80 ◦C, ethylbenzene has a boiling point of 136 ◦C, 1,2-diethylbenzene has a boiling point of 183 ◦C as evidenced by Haynes, Pgs. 3-34, 3-174, 3-250, meeting:
Within the pressure range in instant application claim 6; and,
The further reacting a variety of metal (η-areneA)2 with a variety of areneB to obtain a variety of metal (η-areneB)2 in instant application claim 13.
Umilin relating to “bis-ethylbenzenemolybdenum” produced according to the Friedel-Crafts reductive reaction just like the analogous compound of chromium, containing a mixture of organometallic compounds, in which benzene or other aromatic hydrocarbons may be present as a ligand, see Pg. 1220, Pg. 1, First Para., where bis-ethylbenzenemolybdenum comprises a mixture of benzeneethylbenzenemolybdenum, bis-ethylbenzenemolybdenum, ethylbenzenediethylbenzenemolybdenum, and bis-diethylbenzenemolybdenum, see Pg. 1221, Table 1, benzene has a boiling point of 80 ◦C, ethylbenzene has a boiling point of 136 ◦C, 1,2-diethylbenzene has a boiling point of 183 ◦C as evidenced by Haynes, Pgs. 3-34, 3-174, 3-250, meeting:
The mixture of bis (arene) metal complexes in instant application claim 1 and in instant application claim 13;
The boiling point limitations in instant application claim 2 and in instant application claim 14;
The formulas bis(η6-alkylbenzene)-molybdenum where Ar1 is benzene, R1 is alkyl, R2-R6 are each independently hydrogen or alkyl, Ar2 is benzene, R7 is alkyl, R8-R12 are each independently hydrogen or alkyl, Ar4 is benzene, Rg is alkyl, Rh-Rm are each independently hydrogen or alkyl, M is Mo in instant application claim 3; and,
The specific mixture of bis (arene) metal complexes in instant application claim 9.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the bis (arene) molybdenum complexes replaced by the arene/aromatic solvents of Asirvatham to specifically use the bis-ethylbenzenemolybdenum mixture as taught by Umilin as the starting bis (arene) molybdenum complex for arene displacement/exchange by a variety of arene solvents by modulating the temperature, pressure, and enthalpy of the target arenes to be displacement/exchange in order to produce the desired bis (arene) metal complex as taught by Connor with a reasonable predictability of success for the purpose of efficiently adjusting the thermodynamic conditions of the reaction in order to exchange the arene based on the specific arenes to exchange, how exothermic the reaction is, heat capacities, and heats of solution and of mixing, see Connor, Pg. 346, Substitution, redistribution and exchange reactions-Pg. 350, Tables 9, 15 & 16.
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”, see MPEP 2143 I.E. Since Asirvatham, Umilin, and Connor all teach the preparation and composition of bis (arene) metal complexes, a person of ordinary skill in the art has good reason to arene exchange the desired starting bis (arene) metal complex with the desired arene, by pursuing the known options within their technical grasp before the effective filing date of the claimed invention, such as those taught by Connor, for the benefit of efficiently adjusting the thermodynamic conditions of the reaction in order to exchange the arene based on the specific arenes to exchange, how exothermic the reaction is, heat capacities, and heats of solution and of mixing, see Connor, Pg. 346, Substitution, redistribution and exchange reactions-Pg. 350, Tables 9, 15 & 16 and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Selection of a known material, such as the desired starting bis (arene) metal complex, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the optimal pressure for displacement, “or degree,” such as the boiling parameters of the arenes to be displaced, “or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as cooling to room temperature, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Claims 12 and 18 stand rejected under 35 U.S.C. 103 as being unpatentable over Asirvatham et al. (“Synthesis of Bis(η6-alkylbenzene)molybdenum by Arene Metathesis”, published 15 March 2001, Organometallics, Vol. 20, Pgs. 1687-1688, hereinafter Asirvatham) in view of Connor et al. (“Thermochemistry of bis-Arene- and Arenetricarbonyl-Chromium Compounds containing Hexamethylbenzene, 1,3,5-Trimethylbenzene and Naphthalene”, published 1979, Journal of Organometallic Chemistry, Vol. 179, Pgs. 331-356, hereinafter Connor) and Umilin et al. (“Gas Chromatographic Analysis and Composition of Impurities in Bis-Ethylbenzenemolybdenum”, published 1972, Consultants Bureau, Pgs. 1220-1222, hereinafter Umilin), as applied to claims 1-11 and 13-17 in the 35 USC 103 rejection above, in further view of Hunks et al. (US20140220733, published 07 August 2024, hereinafter Hunks).
Asirvatham does not teach the limitations of the instant application claims 12 and 18.
Hunks relating to the purification and purity problem to be solved of metal precursor complexes teaches it is known in the art to purify liquid bis (arene) metal complex precursor by filtration to achieve a purity of 98%, see Abstract; Paras. [0096];[0110], specifically the first structure shown in Para. [0110], meeting the liquid metal complex, separation, filtration, and within the purity range in instant application claim 12 and in instant application claim 18.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the bis (arene) molybdenum complexes replaced by the arene/aromatic solvents of Asirvatham to purify the bis (arene) molybdenum complex product as taught by Hunks with a reasonable predictability of success for the purpose of efficiently producing a bis (arene) metal complex with low impurities for CVD/ALD processes, see Hunks, Paras. [0010];[0096];[0144].
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”, see MPEP 2143 I.E. Since both Asirvatham and Hunks teach the preparation and composition of bis (arene) metal complexes, a person of ordinary skill in the art has good reason to purify the complex, by pursuing the known options within their technical grasp before the effective filing date of the claimed invention, such as those taught by Hunks, for the benefit of efficiently producing a bis (arene) metal complex with low impurities for CVD/ALD processes, see Hunks, Paras. [0010];[0096];[0144] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
Claims 1 and 21 are newly rejected under 35 U.S.C. 103 as being unpatentable over Thompson et al. (US20090203928, published 13 August 2009, hereinafter Thompson). This new rejection is necessitated by the introduction of new claim 21.
Thompson is in the known prior art field of “process for producing” “organometallic compounds”, see Abstract, including “molybdenum-containing organometallic precursor compound[s]”, see Paras. [0027]-[0028], by “reacting a metal halide with a first salt in the presence of a first solvent and under reaction conditions sufficient to produce an intermediate reaction material, and reacting said intermediate reaction material with a second salt in the presence of a second solvent and under reaction conditions sufficient to produce said organometallic compound”, see Paras. [0020]-[0021];[0047];[0052], where the “process provides for the synthesis of organometallic precursor compounds using a process where all manipulations can be carried out in a single vessel, and which route to the organometallic precursor compounds does not require the isolation of an intermediate complex”, see Para. [0100].
Regarding the limitations of instant application claims 1 and 21, Thompson teaches a “process for producing an organometallic compound having the formula (L3)2M(L5)2 wherein M is a metal or metalloid having a (+4) oxidation state, L3 is the same or different and is a substituted or unsubstituted anionic 4 electron donor ligand, and L5 is the same or different and is a substituted or unsubstituted anionic 2 electron donor ligand; which process comprises reacting a metal halide with a first salt in the presence of a first solvent and under reaction conditions sufficient to produce an intermediate reaction material, and reacting said intermediate reaction material with a second salt in the presence of a second solvent and under reaction conditions sufficient to produce said organometallic compound”, where the “process provides for the synthesis of organometallic precursor compounds using a process where all manipulations can be carried out in a single vessel, and which route to the organometallic precursor compounds does not require the isolation of an intermediate complex”, see Paras. [0099]-[0113]. The metal halide is a bis (arene) metal complex, such as “[Ru(C6H6)Cl2]2” and/or an arene such as “Ru(PPh3)3Cl2, Ru(PPh3)4Cl2”, see Para. [0101], the intermediate reaction compounds are bis (arene) metal complexes, such as “bis(diisopropylacetamidinato)dicarbonylruthenium, bis((H3C)NC(CH)3CHC(CH3)N(CH3))dichlororuthenium, bis(1-3-diisopropyl-2-azaallyl)bis(trimethylphosphino)ruthenium, bis(2-methylallyl)dichlororuthenium, and the like”, see Para. [0107], the first and second solvents are arenes aka “aromatic hydrocarbons”, such as “tetrahydrofuran (THF), toluene, “or mixtures thereof”, see Paras. [0105];[0111], meeting the combining a mixture of bis (arene) metal complexes and a first arene in instant application claim 1;
The reaction conditions include a temperature of “between about −80° C. to about 150° C., and most preferably between about 20° C. to about 120° C.”, see Paras. [0106];[0112], with cooling to precipitate crystals prior to collection, see Para. [0175], meeting heating the mixture after combining and cooling the mixture after heating to precipitate crystals in instant application claim 1 and in instant application claim 21; and,
The organometallic compound is a precursor compound of the formula of a bis (first arene) metal complex, such as “Ru[N(CMe3)C(Me)N(CH2)2NMe2]2(PPh3)2”, see Paras. [0047];[0101];[0107];[0176], meeting the method of preparing the precursor compound of a bis (first arene) metal complex in instant application claim 1.
Thompson does not teach the limitations of the above instant application claims in one single express embodiment or Example.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the metal halides, salts, solvents, and reaction temperatures of Thompson to select the optimal metal halides, salts, solvents, and reaction temperatures as taught in the differing embodiments of Thompson with a reasonable predictability of success for the purpose of efficiently “generating organometallic precursor compounds that have varied chemical structures and physical properties” by specifically selecting the optimal reactants, order of adding reactants, and “any suitable combination of such conditions”, see Thompson, Paras. [0029]-[0030];[0106];[0112];[0171]-[0174].
A rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. Another rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have been capable of modifying the metal halides, salts, solvents, and reaction temperatures of Thompson to select the optimal metal halides, salts, solvents, and reaction temperatures as taught in the differing embodiments of Thompson with a reasonable predictability of success for the purpose of efficiently “generating organometallic precursor compounds that have varied chemical structures and physical properties” by specifically selecting the optimal reactants, order of adding reactants, and “any suitable combination of such conditions”, see Thompson, Paras. [0029]-[0030];[0106];[0112];[0171]-[0174]; and MPEP 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”, see MPEP 2141.
Selection of known materials, such the optimal metal halides, salts, and solvents as taught in the differing embodiments of Thompson, based on their suitability for their intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree,” such as reaction temperatures, “or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), see MPEP 2144.05.
Conclusion
No claims are allowed.
Applicant's amendment, adding new claim 21, 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.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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