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 .
Status of the Application
Claims 1-17 are pending.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-5, directed to a compound, and the species:
PNG
media_image1.png
440
1463
media_image1.png
Greyscale
in the reply filed on 04/24/2026 is acknowledged. The election was made without traverse.
Since the elected species reads on claims 1, 2 and 4-5, these claims are under current examination and are only examined to the extent these claims read on the elected species. Accordingly, claims 3 and 6-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is therefore made FINAL.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1-2 and 4-5 are under current examination.
Claim Objections
Claim 1 is objected to because Claim 1 recites, “C2-15 amide containing at least one fluoro group, F---H”. Thus, F is a repetition and needs to be deleted.
Appropriate correction is required.
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 Cho (US 2015/0255276 A1).
Cho discloses organometallic precursorXnMR1mR2k, wherein M is a central metal atom and can be Zr, Hf or Ti; X is a ligand and can be cyclopentadienyl (Cp), substituted Cp, indenyl or dimethylfulvenyl; R1 and R2 are ligands of M and are amino group, such as dimethylamino diethylamino and n+m+k=3 or 4, encompass genus and elected species when M=Hf; X=indenyl; X=Cp and R1=R2 = dimethyleneamino or diethyleneamino groups (entire application, especially abstract, paragraphs 0007-0029, 0061 and claims). The cited prior art further teaches
PNG
media_image2.png
480
536
media_image2.png
Greyscale
PNG
media_image3.png
525
590
media_image3.png
Greyscale
Since M is limited to only three species Zr, Hf and Ti, a person of ordinary would have been able to "at once envisage" the specific compound within the generic chemical formula. Thus, claims 1 and 2 are anticipated.
If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. In In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. The broad generic formula seemed to describe an infinite number of compounds but claim 1 was limited to a structure with only one variable substituent R. This substituent was limited to low alkyl radicals. One of ordinary skill in the art would at once envisage the subject matter within claim 1 of the reference.
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, 4-5 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 2015/0255276 A1) and Federico (EP0595390 A1) in combination.
Determining the scope and contents of the prior art
Cho discloses organometallic precursorXnMR1mR2k, wherein M is a central metal atom and can be Zr, Hf or Ti; X is a ligand and can be cyclopentadienyl (Cp), substituted Cp, indenyl or dimethylfulvenyl; R1 and R2 are ligands of M and are amino group, such as dimethylamino diethylamino and n+m+k=3 or 4, encompass genus and elected species when M=Hf; X=indenyl; X=Cp and R1=R2 = dimethyleneamino or diethyleneamino groups (entire application, especially abstract, paragraphs 0007-0029, 0061 and claims). The cited prior art further teaches
PNG
media_image2.png
480
536
media_image2.png
Greyscale
PNG
media_image3.png
525
590
media_image3.png
Greyscale
Since M is limited to only three species Zr, Hf and Ti, a person of ordinary would have been able to "at once envisage" the specific compound within the generic chemical formula. Thus, claims 1 and 2 are anticipated.
If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. In In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. The broad generic formula seemed to describe an infinite number of compounds but claim 1 was limited to a structure with only one variable substituent R. This substituent was limited to low alkyl radicals. One of ordinary skill in the art would at once envisage the subject matter within claim 1 of the reference.
Ascertaining the differences between the prior art and the claims at issue
Cho discloses organometallic precursorXnMR1mR2k, wherein M is a central metal atom and can be Zr, Hf or Ti; X is a ligand and can be cyclopentadienyl (Cp), substituted Cp, indenyl or dimethylfulvenyl; R1 and R2 are ligands of M and are amino group, such as dimethylamino diethylamino and n+m+k=3 or 4, encompass genus and elected species when M=Hf; X=indenyl; X=Cp and R1=R2 = dimethyleneamino or diethyleneamino groups and further give example of compound with indenyl as X, but fails to teach example of compound wherein compound has additional X as Cp and example of elected species.
Resolving the level of ordinary skill in the pertinent art
With regard to the difference of example of compound that has additional X as Cp and example of elected species-Cho discloses organometallic precursorXnMR1mR2k, wherein M is a central metal atom and can be Zr, Hf or Ti; X is a ligand and can be cyclopentadienyl (Cp), substituted Cp, indenyl or dimethylfulvenyl; R1 and R2 are ligands of M and are amino group, such as dimethylamino diethylamino and n+m+k=3 or 4, encompass genus and elected species when M=Hf; X=indenyl; X=Cp and R1=R2 = dimethyleneamino or diethyleneamino groups and further give example of compound with indenyl as X. Thus, based on the guidance provided by the cited prior art on X, it would have been prima facie obvious to a person of ordinary skill in the art that the compound may have additional X as Cp.
This deficiency is further cured by Federico.
Federico discloses organometallic precursor:
PNG
media_image4.png
373
910
media_image4.png
Greyscale
wherein M is a central metal atom and can be Zr, Hf or Ti; Cp is a ligand and can be cyclopentadienyl, indenyl or fluorenyl; R1-R4 are alkyl groups, encompass genus and elected species when M=Hf; Cp=indenyl; Cp=cyclopentadienyl and R1=R2 =dimethylamino groups (entire application):
PNG
media_image5.png
691
918
media_image5.png
Greyscale
Thus, based on the guidance provided by Cho and Federico, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that the compound may have indenyl and cyclopentadiene along with two dimethylamino and metal as Hf, Ti or Zr.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ compound.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed with no change in their respective functions, and the combination 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, Cho discloses organometallic precursorXnMR1mR2k, wherein M is a central metal atom and can be Zr, Hf or Ti; X is a ligand and can be cyclopentadienyl (Cp), substituted Cp, indenyl or dimethylfulvenyl; R1 and R2 are ligands of M and are amino group, such as dimethylamino diethylamino and n+m+k=3 or 4, encompass genus and elected species when M=Hf; X=indenyl; X=Cp and R1=R2 = dimethyleneamino or diethyleneamino groups and further give example of compound with indenyl as X. Federico discloses organometallic precursor with M as a central metal atom and can be Zr, Hf or Ti; two Cp ligand from a group cyclopentadienyl, indenyl or fluorenyl; two additional ligands dimethylamino groups.
So, the combination of prior art read applicants claims.
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 a reasonable expectation of success that organometallic precursor may have Hf as central metal atom ligated to indenyl, cyclopentadiene and two dimethylamino ligands and can be made by combination 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.
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.
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, 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.
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.
/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
Prosecution Insights