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 1-20 are pending.
Election/Restrictions
Applicant's election without traverse of Group II, claims 15-20, directed to a composition, and the species of bis(toluene)Mo, in the reply filed on 04/24/2026 is acknowledged. The election was made without traverse.
The requirement is therefore made FINAL.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 15-20 are under current examination.
Claim Objections
Claims 15-20 are objected as these claims refers to M as WO, which is not a metal symbol. From the description provided in the instant invention, it appears that metal is tungsten, W.
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.
Claims 19 and 20 are 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 pre-AIA the applicant regards as the invention.
Claims 19 and 20 are indefinite:
Claim 19 recites “a coupled arene compound” and it is unclear what structure of compound satisfies definition of a coupled arene. For instance, does toluene (CH3 coupled with benzene) satisfies such definition or a complex of benzene with metal ion satisfies it or a biphenyl ring system satisfies it. Further, specification provides no definition of such coupled arene compound.
For compact prosecution any arene compound with any substituent has been interpreted as a coupled arene compound.
Claim 20 is indefinite as the claim, at several instances, recites narrow and broad limitations within the same claim. For instance, magnesium halide, alkaline earth metal halides, aryl magnesium halide, halogenated metal compounds;
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etc. Thus, making scope of the claim unclear.
Claim 20 is indefinite as the claim recites “consisting of the metal”, which lacks antecedent basis. Further, the claim recites M is Mo—Cr. However, there is no M in any structure recited in claim 20.
Appropriate correction 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 15-18 and elected species are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (Chem. Soc. Dalton Trans. 1995, p1563-1568; as provided by the applicant on IDs dated 03/08/2024).
Schmidt discloses elected species bis(toluene)Mo along with its synthesis using reactants, such AlCl3, and toluene and purification using step-wise filtration, solvent washing, solvent extraction, filtration and crystallization from filtrate (thus a composition) to pure compound bis(toluene)Mo with no impurities and NMR data with no impurity peak (reads on instant claims 15-18).
Since the cited prior art reads on all the limitations of the instant claims 15-18, these claims are anticipated.
Claims 15-20 and elected species are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Muller (US20220372053 A1; effective filing date 05/21/2021).
Muller discloses elected species bis(toluene)Mo, pure or with purity, such as 99% or 99.99% with impurities (thus a composition), such as toluene (reads on coupled arene compound of the instant claims), chlorinated metal compounds (reads on halogenated metal compounds of the instant claims) , lithium, sodium, potassium pyrazolyl (reads on anionic aryl metal complexes with alkali metal cations of the instant claims) (entire application, especially abstract, paragraphs 0113-0117, examples and claims).
Since the cited prior art reads on all the limitations of the instant claims 15-20, these claims are anticipated.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 15-20 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-18 and 21 of co-pending US application 18107855. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application are drawn to a composition comprising bis(arene)M complex and co-pending application is drawn to a process of making a composition comprising bis(arene)M complex (thus, disclosing composition of the instant claims) and composition of the instant claims with a difference in wording.
The difference of wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application. For the foregoing reasons, the instantly claimed composition is made obvious.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented yet.
Conclusion
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.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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