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.
Response to Election/Restrictions
Applicant’s election with traverse of Group I claims 1-12 in the reply filed on 12/10/2025 is acknowledged.
Applicant elected the species of [2,6-Bis(1-(2,6-dimethylphenylimino)pentyl)pyridine] iron butadiene (Catalyst 3), and further elects catalyst species [2,6-Bis(1-(2,6- dimethylphenylimino)pentyl)pyridine] iron methyl (Catalyst 4) recited in claim 10 having the structures as shown below (the instant Specification page 26):
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As we see above, the Catalyst 3 falls within the scope of formula (I), however the Catalyst 4 fails within the scope of formula (II).
Per conversation with applicant’s representative Mr. Robb D. Edmonds on 12/22/2025, applicant elected the species of the Catalyst 3 without traverse. Therefore, the E1-3 recited in formula (I) as being carbon.
Regarding Group election, the traversal is on the ground(s) that no search burden exists. Applicants’ arguments are not found persuasive as indicated in the previous office action mailed on 08/27/2025, there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (c) the prior art applicable to one invention would not likely be applicable to another invention; (d) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph; (e) different search queries are required to account for the differing active steps of the method groups, which are not present in the composition claims, thus causing a serious and examination burden. In this case, the different fields of searches are required for the method of making of nanoparticles and using the nanoparticles (i.e. specific steps involved in these processes, etc.). Therefore there would be a serious search and examination burden if restriction were not required.
Claims 13-24 are withdrawn from consideration as non-elected Group.
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):
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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, R4-9, 11-12=H, R23=2-6-dimethylphenyl ([0042]), R1-2=Methyl, L-L2=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 (A) in the iron catalyst of the Formula (II) taught by Delis et al. is 1, 3-pentadiene R10-13 and 14-16=H, R12=CH2 which corresponds to the X1 and X2 in instant Formula (I).
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]):
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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.
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 butadiene (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.
Conclusion
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.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738