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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/06/2026 has been entered.
Status of the Application
Claims 1-3, 5-14, and 17-20 are pending, of which claims 3, 5-14, and 17-20 are withdrawn.
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 1-2 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Arteaga Muller (US 2022/0372053 A1).
Arteaga Muller discloses pure Mo(0) precursor, Mo(toluene)2, same as formula I as in the instant claims with no halogens, O or Mo-O bond or any other impurity, therefore reads on purity greater than 90% Mo on a molar basis. The cited prior art also discloses Mo(toluene)2 with impurities, such as 10%, 5% etc., (entire application, especially abstract, paragraphs 0008-0013, 0017, 0115, 0152 and claims):
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Although the instant claims 1-2 are product-by-process claim, the case law has established that “Even 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009).
The cited prior art discloses same compound as in the instant claims with purity of 100% 99%, 95%, 90% and melting point of 100% pure compound as 72C. Although the cited prior art is silent about melting point of the compound with purity less than 100%, such as 90% purity, the melting point of compound having purity, such as 90% is expected to be same as in the instant claims whether or not measured by the cited prior art. This is because physical properties are inherent properties of compound or compositions and are inseparable from compound or compositions.
Since the cited prior art reads on all the limitations of the instant claims 1-2, 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Arteaga Muller (US 2022/0372053 A1).
Determining the scope and contents of the prior art
Arteaga Muller discloses pure Mo(0) precursor, Mo(toluene)2, same as formula I as in the instant claims with no halogens, O or Mo-O bond or any other impurity, therefore reads on purity greater than 90% Mo on a molar basis. The cited prior art also discloses Mo(toluene)2 with impurities, such as 10%, 5% etc., (entire application, especially abstract, paragraphs 0008-0013, 0017, 0115, 0152 and claims):
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Although the instant claims 1-2 are product-by-process claim, the case law has established that “Even 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009).
Ascertaining the differences between the prior art and the claims at issue
Arteaga Muller discloses pure Mo(0) precursor, Mo(toluene)2, same as formula I as in the instant claims with no halogens, O or Mo-O bond or any other impurity, therefore reads on purity greater than 90% Mo on a molar basis. The cited prior art also discloses Mo(toluene)2 with impurities, such as 10%, 5% etc., but fails to teach melting point of Mo(toluene)2 with less purity, such as 90%.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference-The cited prior art discloses same compound as in the instant claims with purity of 100% 99%, 95%, 90% and melting point of 100% pure compound as 72C. Although the cited prior art is silent about melting point of the compound with purity less than 100%, such as 90% purity, the melting point of compound having purity, such as 90% is expected to be same as in the instant claims whether or not measured by the cited prior art. This is because physical properties are inherent properties of compound and compositions and are inseparable from compound or compositions.
Based on the above established facts, it appears that the 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 measured physical properties as claimed by known methods with no change in their respective functions, and the measurement 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, Arteaga Muller discloses pure Mo(0) precursor, Mo(toluene)2, same as formula I as in the instant claims with no halogens, O or Mo-O bond or any other impurity, therefore reads on purity greater than 90% Mo on a molar basis. The cited prior art also discloses Mo(toluene)2 with impurities, such as 10%, 5% etc.
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 reasonable expectation of success that the physical properties of a compound or a composition may be measured 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 references and to make the instantly claimed compound with a reasonable expectation of success.
Response to Arguments
Applicant’s remarks and amendment, as filed on 02/06/2026, have been fully considered but not found persuasive.
Applicant argued over rejection under 102 using case laws and directing attention that the structure implied by the process steps should be considered.
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This is not found persuasive and the instant claims stand rejected. This is because applicant only argued without showing any evidence what structural difference is imparted by the process. The cited prior art teaches exactly same compound and structural elements as recited in the instant claims and reads on every structural element of the compound of the instant claims.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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