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 .
Election/Restriction
Claim 1-9 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claim 10-16, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 04/02/2026 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: Table 1 on page 20, and Table 3 on page 27, are blurry and text are illegible as indicated by the US publication.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12, recites wherein the catalyst is selected from among, “LiOiPr, LiMe, and BnOH.” However, it is unclear what “LiOiPr, LiMe, and BnOH,” stand for and the specification does not appear to give any definitions either. Specifically, it is unclear what “Bn,” “Oi,” “Pr,” and/or “Bn” is meant to represent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-9, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/059,781 (App. No. 19/059,781).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/059,781 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-4, 6-9, App. No. 19/059,781 teaches a catalyst composition comprising a cocatalyst and a compound having the formula 3,
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, wherein M is cobalt, X1 and X2 is halogen group, m is 0-3, Z is oxygen or a -CH2-. (claims 1-10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 5, 10-16, are objected to as being dependent upon a rejected base claim.
Claims 1-16 would be allowable with a filing of a terminal disclaimer to overcome the provisional nonstatutory double patenting rejection over copending App. No. 19/059,781 and if Claim 12 is rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The first closest prior art is Jia et al., “Three copper(II) complexes derived from 2-methylquinoline and cyclic secondary amines: Synthesis and catalytic application in C N bond forming reactions,” Applied Organometallic Chemistry, vol. 36, issue 7, page 1-11 (2022). (hereinafter Jia). Jia teaches the copper complex having the formula
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105
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(page 2).
Jia does not teach the claimed transition metal compound of formula 1, 2, and/or 3.
The second closest prior art is US 2020/0223880 A1 to Chinnathambi et al. (hereinafter Chinnathambi). Chinnathambi teaches a cobalt complex having the formula
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201
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, and
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(para 46).
Chinnathambi does not teach the claimed transition metal compound of formula 1, 2, and/or 3.
The third closest prior art is Wang et al., “A Novel Azide Copper Complex: [[Azido{bis[2-(piperidin–1-ylmethyl)pyridine]}copper(II)]perchlorate] Hydrate,” Russian Journal of Coordination Chemistry, vol. 35, No. 10, pp. 789-792, (2009). (hereinafter Wang). Wang teaches a copper complex with a ligand, 2-(piperidin-1-ylmethyl)pyridine), obtained by mixing a solution of Cu(ClO4)2 · 6H2O to form the copper complex of C22H34ClN7O5Cu with the formula
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348
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(page 789-791).
Wang does not teach the claimed transition metal compound of formula 1, 2, and/or 3.
The fourth closest prior art is Rivas et al., “Internal hydrogen bonding in tetrahedral and trigonal bipyramidal zinc(II) complexes of pyridine-based ligands,” Dalton Transactions, Issue 17, pp. 3339-3349. (2003). (hereinafter Rivas). Rivas teaches a Zinc complex having the formula
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238
372
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, (page 3341).
Rivas does not teach the claimed transition metal compound of formula 1, 2, and/or 3.
The last closest prior art is CN 111303214 A to Wang Qinggang et al. (hereinafter Wang Qinggang). Wang Qinggang teaches the Iron complex having the formula
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126
148
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.
Wang Qinggang does not teach the claimed transition metal compound of formula 1, 2, and/or 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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