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/Restrictions
Applicant’s election without traverse of Group II, claims 14-20 in the reply filed on 6/16/2026 is acknowledged. Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim
Claim Status
Claims 1-20 were filed on 8/30/2023 and are pending. Claims 1-13 are withdrawn and claims 14-20 are under examination.
Priority
The application was filed on 8/30/2023 and claims benefit of priority to:
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See filing receipt dated 9/12/2023.
Specification and Drawings
The disclosure is objected to because of the following informalities: the structures in [0035] are illegible.
Appropriate correction is required.
The drawings are objected to because the text in Fig. 3 is illegible.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 (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 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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hobbs (“Mono-organotin(IV) compounds as esterification and transesterification catalysts” Applied organometallic chemistry, 1992, p. 95, of record in the IDS filed on 5/6/2026).
Hobbs teaches the use of a compound of the following formula in a transesterification reaction in Table 1 on p. 96: BuSn(OSiPh3)3. This is a compound of claim 14 wherein R is n-butyl, a C4 alkyl and R2 is phenyl, an aryl. Also see MPEP 2131.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erlikh (Vysokomolekulyarnye Soedineniya, 1963, p. 217, of record in the IDS filed on 5/6/2026).
Erlikh teaches a compound of the following formula in the first reaction on p. 217:
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. This is a compound of claim 14 wherein R is a carboxylate and R2 is methyl, a C1 alkyl. In the same reaction Erlikh also teaches the following compound: [(CH3)3SiO]4Sn. This is a compound of claim 14 wherein R is a silylated alkoxide (OSi(CH3)3) and R2 is methyl, a C1 alkyl. Also see MPEP 2131.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidbaur (“Darstellung und eigenschaften von alkylstannosiloxanen” Journal of Organometallic Chemistry, 1964, p. 217, of record in the IDS filed on 5/6/2026).
Schmidbaur teaches a compound of the following formula (VI) on p. 246: [(CH3)3SiO]3SnCH3. This is a compound of claims 14 and 15 wherein R and R2 are methyl, a C1 alkyl. Schmidbaur also teaches the following compound (VII) on p. 246: [(CH3)3SiO]4Sn. This is a compound of claim 14 wherein R is a silylated alkoxide (OSi(CH3)3) and R2 is methyl, a C1 alkyl. Also see MPEP 2131.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada (JP2001031870A, published on 2/6/2001, of record in the IDS filed on 5/6/2026, including a machine generated translation).
Okada teaches the following compound: monobutyltin tris(triethoxysilicate). This compound corresponds to a compound of claim 14 wherein R2 is a C2 alkoxide and R is butyl (C4 alkyl). Also see example 6 in lines 333-350 of the translation. Okada additionally teaches that R2 can be methyl, propyl or butyl. See lines 147-150 of the translation. Also see MPEP 2131.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gutmann(“Triphenylsiloxyverbindungen von Elementen der 4. Gruppe” Monatshefte fuer Chemie (1960), 91, 519-22).
Gutmann teaches the following compound of formula [(C6H5)3SiO]4Sn in Table 1 on p. 520. This is a compound of claim 14 wherein R is a silylated alkoxide (OSi(C6H5)3) and R2 is C6H5, an aryl. Also see MPEP 2131.
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 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of co-pending Application No. 18/785117 (‘117, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of ‘117 requires the species of instant claims 15, 16, and 18 in any purity. Also see MPEP 2131.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Subject Matter free from the Prior Art
The compositions of claims 16-20 appear to be free from the prior art. The closest art to the claimed invention are the references of record. The references do not teach or suggest modifying the disclosed compounds to arrive at those claimed. Nor do the references explicitly teach that the purity of the compounds is 99.9%, or that such a purity of said compounds is possible to attain.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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