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 .
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.
Claim(s) 1-4 and 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kinami et al. (US 10,479,809).
The claims are drawn to a method for producing an alkenyl phosphorus compound of formula (4) by reacting a compound of formula (1) with an alkynyl compound of formula (2) in the presence of a transition metal complex, a Lewis acid, and a low-polarity additive. Further limitations include the catalyst being a nickel complex, and the low-polarity additive being selected from toluene, tetralin, and methylnaphthalene.
Kinami et al. teach a process for preparing an alkenyl phosphorus compound by reacting a compound formula (1) with an alkynyl compound of formula (2) to produce a compound of formula (3a) or (3b), wherein the reaction is conducted in the presence of a transition metal catalyst and a phosphorus oxo acid compound (abstract).
Examples of the phosphorus compound of formula (1), the alkynyl compound of formula (2), and the product of formula (3a) or (3b) can be found at column 6, line 33 to column 9, line 32. The transition metal catalyst is preferably a low-valent nickel complex containing a trivalent phosphorus compound as ligand (col. 9, lines 35 to 62). The reaction conditions include a temperature from -20 to 120°C and pressures from 0.0001 to 5 Mpa. A solvent is not required, but the reaction may be carried out in a solvent including, inter alia, toluene or xylene (col. 14, lines 30 to 61).
The reference does not expressly teach the use of a Lewis acid in the process; however, a phosphorus oxo acid having an intramolecular P-H bond is used in the reaction. Examples of such compounds include phosphinic acid, phenylphosphinic acid, and biphenylphosphinic acid (col. 11, lines 32-58). Such compounds can act as Lewis acids. Therefore, the instant claims are found to be obvious in view of the process taught by Kinami et al.
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.
Claim 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-11 of copending Application No. 17/595,444 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a process for producing an alkenyl phosphorus compound by reacting a phosphorus compound of formula (1) with an alkynyl compound of formula (2) in the presence of a transition metal complex and a Lewis acid. The difference between the two set of claims is that the instant claims also recite the presence of a low-polarity additive, e.g., an aromatic, aliphatic, or alicyclic hydrocarbon. The reference application, while not expressly recited the presence of such a compound, does not preclude the presence of such a compound, as the reference application uses open-ending claim language. Accordingly, the examiner finds that the process recited in the claims of the reference application renders the instant claims obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692