DETAILED ACTION
This office action follows a response filed on February 24, 2026. Claims 1-4, 6, 7, 10, 11, 13, and 16-19 were amended, and new claim 21 was added. Claims 1-21 are pending.
Claim Objections
Claim 1 is objected to because of the following informalities: On page 5, line 26 (fourth from last line), please replace “is selected” with “are selected”.
Claim 1 is objected to because of the following informalities: On page 5, line 28 (second from last line), please replace “and 1-(C8-C12)tricycloalkyl” with “ , 1-(C8-C12)tricycloalkyl”.
Claim 1 is objected to because of the following informalities: On page 6, line 2, please replace “(C6-C10)aryl and” with “(C6-C10)aryl or”.
Claim 2 is objected to because of the following informalities: In line 1, please insert “palladium” prior to “compound of formula (I)” so that language is consistent with that in claims 1, 7, and 10.
Claim 2 is objected to because of the following informalities: In line 11, please replace “is selected” with “are selected”.
Claim 2 is objected to because of the following informalities: In line 18, please replace “and 2,2-dimethylpropyl” with “or 2,2-dimethylpropyl”.
Claim 3 is objected to because of the following informalities: In line 1, please insert “palladium” prior to “compound of formula (I)” so that language is consistent with that in claims 1, 7, and 10.
Claim 4 is objected to because of the following informalities: In line 1, please insert “palladium” prior to “compound of formula (II)” so that language is consistent with that in claim 21.
Claim 5 is objected to because of the following informalities: In line 1, please replace “The vinyl” with “A vinyl”.
Claim 5 is objected to because of the following informalities: In line 1, please insert “palladium” prior to “compound of formula (I)” so that language is consistent with that in claims 1, 7, and 10.
Claim 6 is objected to because of the following informalities: In line 1, please replace “The vinyl” with “A vinyl”.
Claim 6 is objected to because of the following informalities: In line 2, please insert “palladium” prior to “compound of formula (II)” so that language is consistent with that in claim 21.
Claim 11 is objected to because of the following informalities: On page 11, line 13, please replace “is selected” with “are selected”.
Claim 11 is objected to because of the following informalities: On page 11, line 15, please replace “and 1-(C8-C12)tricycloalkyl” with “ , 1-(C8-C12)tricycloalkyl”.
Claim 11 is objected to because of the following informalities: On page 11, line 27, please replace “and linear” with “or linear”.
Claim 13 is objected to because of the following informalities: On page 13, line 8, the phrase “in any combination” is superfluous and may be deleted.
Claim 18 is objected to because of the following informalities: On page 18, line 16, please replace “is selected” with “are selected”.
Claim 18 is objected to because of the following informalities: On page 18, line 16, please replace “and 1-(C8-C12)tricycloalkyl” with “ , 1-(C8-C12)tricycloalkyl”.
Claim 18 is objected to because of the following informalities: On page 19, line 4, delete “selected from” which appears after “anion selected from”.
Claim 21 is objected to because of the following informalities: On page 21, line 14, please replace “is selected” with “are selected”.
Claim 21 is objected to because of the following informalities: On page 21, line 16, please replace “and 1-(C8-C12)tricycloalkyl” with “ , 1-(C8-C12)tricycloalkyl”.
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.
Claim 17 is rejected under 35 U.S.C. 112(d) 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. The compounds, lithium tetrakis(3,5-difluorophenyl)borate (page 15, line 12) and N,N-dimethylanilinium tetrakis(pentafluorophenyl)borate (DANFABA) (page 16, line 15), do not meet the structure requisites of formula (III), set forth in independent claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102 / 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-10, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Bell et al. (US 2005/0187398).
Bell et al. discloses the compounds [Pd(OAc)(PiPr-tBu2)2(MeCN)][B(C6F5)4] and [Pd(OAc)(PPh3)2(MeCN)][B(C6F5)4] which are used as a catalyst for solution polymerization of norbornene and norbornene derivatives. Polymers obtained therefrom are used as an optical film. Present claims are drawn to a polymer solution, film, and optical layer (i.e., film) that are described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 7-10, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Takeyama et al. (US 2009/0297870).
Reference example 1 of Takeyama et al. discloses preparation of an addition polymer having units derived from norbornene and ethylnorbornene. The polymer has a glass transition temperature Tg of 281 ºC. A film is prepared by a solvent casting process. Present claims are drawn to polymer solution, film, and optical layer (i.e., film) that are described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Takeyama et al. (US 2009/0297870).
A film prepared from a polymer having a glass transition temperature Tg of 281 ºC would be expected to have a comparable glass transition temperature. One of ordinary skill in the art would have reasonably expect the film to exhibit claimed storage modulus. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Claims 7-10, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Rhodes et al. (US 6,903,171).
Examples 181, 201, 236, and 278 of Rhodes et al. disclose use of palladium catalysts to prepare polymer solutions and optically clear polymer films obtained therefrom. Present claims are drawn to polymer solution, film, and optical layer (i.e., film) that are described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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Subject of claims 1-3 and 5, drawn to a palladium compound of formula (I), is patentably distinct over references cited to date. None of cited references teaches the palladium compound of formula (I). Claims will be allowed upon minor revisions to obviate claim objections, supra.
Subject of claims 11-17, drawn to a polymerization composition comprising: a) a palladium compound selected from the group consisting of a compound of formula (I) and a compound of formula (II), b) a compound of formula (III), and c) at least one monomer of formula (IV). None of references cited to date teaches claimed polymerization composition comprising a compound of formula (I). None of cited references teaches a composition containing the combination of compound of formula (II), b) a compound of formula (III), and c) at least one monomer of formula (IV). Claims will be allowed upon minor revisions to remove objections to claim 11, and upon appropriate amendment to overcome rejection of claim 16 under 35 U.S.C. 112(d), supra. For purposes of completing PTO-326, status of claims 12, 14, 15, and 17 is listed as “objected to”.
Subject of claims 4, 6, and 21, drawn to a palladium compound of formula (II), as amended, is patentably distinct over references cited to date. The closest reference is Bell et al. (US 2005/0187398), cited previously. Prior art teaches palladium compounds of general formula [(ER3)aPd(Q)(LB)b]p[WCA]r wherein ER3 is Group 15 neutral donor ligand. Reference discloses cyclohexyldiadamantylphosphine as a neutral donor ligand containing at least two 1-(C8-C12)tricycloalkyl groups. Claims, however, exclude cyclohexyl as the remaining substituent bound to phosphorus. Therefore, prior art does not teach subject of claims 4, 6, and 21. Claims will be allowed upon minor revisions to obviate claim objections, supra.
Response to Arguments
The rejection of claim 2 under 35 U.S.C. 112(d), set forth in paragraph 15 of the previous office action dated November 15, 2025, has been withdrawn in view of claim amendment.
The rejection of claim 16 under 35 U.S.C. 112(d), set forth in paragraph 16 of the previous office action, has been withdrawn in view of claim amendment.
The rejection of claim 16 under 35 U.S.C. 112(d), set forth in paragraph 17 of the previous office action, has been maintained.
The rejection of claim 17 under 35 U.S.C. 112(d), set forth in paragraph 18 of the previous office action, has been withdrawn in view of claim amendment.
The rejection of claims 1, 2, and 5 under 35 U.S.C. 102(a)(1) as being anticipated by Bell et al. (US 2005/0187398), set forth in paragraph 20 of the previous office action, has been overcome by amendment.
Applicant traverses the rejection of claims 7-10, 18, and 19 under 35 U.S.C. 102(a)(1) as being anticipated Bell et al. (US 2005/0187398), set forth in paragraph 20 of the previous office action. Applicant contends that because the compound of claim 1 is patentably distinguishable from prior art, claims 7-10, 18, and 19, which depend from claim 1, must also be patentably distinguishable. Patentability by relationship applies to a compound (claim 1) and a catalyst containing the compound (claim 3) or a compound and a process of using the compound. However, this does not necessarily apply to a compound and a material prepared from the compound, especially where a claim is written as a product-by-process claim. This is because the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In such instance, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Applicant points to comparative examples 1 and 2 of specification wherein a film prepared from palladium-based catalysts are poor in quality and unsuitable for making polymers exhibiting superior qualities. Unobviousness must be established between claimed invention and that cited in prior art of record. Contrary to Applicant’s assertion, the palladium-based catalyst in comparative example 1 ([Pd(OAc)(PAd2Bu)2][B(C6F5)4] + LiB(C6F5)4]) and in comparative example 2 ([Pd(OAc)(PCy3)2] [B(C6F5)4] + LiB(C6F5)4]) are not representative of the palladium-based catalysts described in Bell et al. ([Pd(OAc)(P(iPr)(tBu)2)2(MeCN)][B(C6F5)4] and [Pd(OAc)(PPh3)2(MeCN)][B(C6F5)4]). Catalysts in comparative examples contain phosphine ligands with differing steric demands and electronic properties, and notably, an excess LiB(C6F5)4 activator. Thus, the catalysts of comparative examples are quite different from those cited in prior art. Since catalytic effects a particularly unpredictable aspect of chemistry, each embodiment of catalyst must be assessed individually for activity. In re Slocombe, 184 USPQ 741, 744 (CCPA 1975). It follows that Applicant has not met the burden of proof to properly assess whether a film formed by polymer made from claimed catalyst and that of prior art catalyst are, indeed, chemically and/or physically distinguishable. Based on these considerations, the rejection has been maintained.
Applicant traverses the rejection of claims 7-10, 18 and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Takeyama et al. (US 2009/0297870), set forth in paragraph 21 of the previous office action. Applicant submits that Takeyama et al. requires a larger amount of palladium-based catalyst to make norbornene-ethylidenenorbornene copolymer and on this basis, asserts that the catalysts of prior art will not produce the same quality film as that of claimed invention. Applicant’s arguments have been considered fully, but they are not persuasive. The burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. While Applicant has pointed out that processes are different, there is no showing by experiment or otherwise that the film of prior art and that of claimed invention are distinguishable and/or have unobviousness differences. Moreover, Applicant merely refers to “film” generically without reference to the chemical composition of the film (note that the type of polymer is relevant because claim 18 includes component c) at least one monomer of formula (IV)). Again, unobviousness must be established between claimed invention and that cited in the rejection. There is no showing that a norbornene-ethylidenenorbornene film, as per Takeyama et al. is different from a norbornene-ethylidenenorbornene film prepared from the catalyst of instant invention. Based on these considerations, the rejection has been maintained.
The rejection of claims 7-10, 18 and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Ohkita et al. (US 2008/0125556), set forth in paragraph 22 of the previous office action, has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 April 17, 2026
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