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 1-12 are currently under examination. Claims 13-24 are withdrawn from consideration. Claims 1, 5 and 10 are amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Delis et al. (WO 2011/006044 A2) with respect to claims 1-9 and 11-12 is amended as set forth below.
Amended Grounds of Rejections
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 (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.
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.
Claims 1-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Delis et al. (WO 2011/006044 A2).
Regarding claim 1, Delis et al. teach iron catalyst containing terdentate pyridine diimine ligand formula (II) having the structure as shown below (pages 3-4 and claims 1-9):
PNG
media_image1.png
560
826
media_image1.png
Greyscale
PNG
media_image2.png
278
902
media_image2.png
Greyscale
PNG
media_image3.png
132
844
media_image3.png
Greyscale
As we see above, the iron catalyst of the Formula (II) taught by Delis et al. corresponds to the instant claimed catalyst compound represented by Formula (I) wherein alternative selected as G=Fe, R3=C1-18 alkyl (the instant claimed R1 or R2), R4-9, 11-12=H, R23=2-6-dimethylphenyl ([0042]), R1-2=Methyl, L1-L2=butadienes.
Butadiene is known included 1,3-butadiene and 2-methyl-1,3-butadiene (isoprene) which reads on the instant claimed conjugated diene.
Regarding claims 2-3, as discussed above, the pyridine ring in the iron catalyst of the Formula (II) taught by Delis et al. corresponds to the instant Formula (I) wherein E1-3=C, R3-5=H.
Regarding claims 4-5, as discussed above, the Formula (II) taught by Delis et al. encompasses 1,3-butdiene which corresponds to the X1 and X2 in instant Formula (I) (claim 9).
Regarding claim 6, as discussed above, the R23 and R1-2, 4-6 in the Formula (II) taught by Delis et al. are 2,6-dimethylphenyl groups as the instant claim (R1-2=methyl, R4-6=H, [0042]):
PNG
media_image4.png
386
924
media_image4.png
Greyscale
Regarding claims 7-9, as discussed above, the R3 groups in the iron catalyst of the Formula (II) taught by Delis et al. are C1-18 alkyl groups which encompasses the instant claimed C4-C12 alkyl.
The prior art compounds are true homologs of the claimed compounds, the similarity between the chemical structures and properties is sufficiently close that one on ordinary skill in the arts would have been motivated to make the claimed compounds in searching for iron catalysts. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made See MPEP 2144.09 I-III.
Regarding claims 11-12, the L1-L2 in the iron catalyst of the Formula (II) taught by Delis et al. include butadienes (a conjugated diene) obtained after filtration on aa filter frit ([00118]).
A product-by-process limitation of “wherein the catalyst is generated by addition of a conjugated diene…” of claim 11, and “wherein is purified by filtration…” of claim 12 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven 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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Allowable Subject Matter
Claim 10 including only the elected species would be allowable if rewritten to overcome the rejections as discussed above.
The Examiner searched the elected species as discussed above. There was no prior art discovered on the particular elected species. Therefore, the search of the species has been extended to the non-elected the compound represented by the Formula (I) as discussed above.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 1-12 field on 04/15/2026 have been considered but are moot in view of the amended ground(s) of rejection.
Conclusion
Applicant's amendment 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YUN QIAN/Primary Examiner, Art Unit 1738
Prosecution Insights