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 .
DETAILED ACTION
Claims 16-34 of N.S. Lambic, et al., US 18/261,024 (07/11/2023) are pending. Claims 19-20,22-25 and 27-34 are withdrawn as directed to non-elected Group or not read on the elected species. Claims 16-18, 21 and 26 are under examination on merits. Claim 26 is objected to; claims 16-18 and 21 are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I, without traverse, in the reply filed on 01/06/2026. Claims 28-34 drawn to Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is made as FINAL.
Pursuant to the election of species requirement, Applicant elected, without traverse, the species of catalyst F in the paragraph [1004] of the specification in the reply filed on 01/06/2026 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Claims 16-18, 21 and 26 read on the elected species. The elected species was searched and determined to be free of prior art record. The search/examination was extended to other compounds as discussed in the 102 and/or 103 rejections below. Claims 19-20, 22-25, and 27 are withdrawn as not read on the elected species. The provisional election of species requirement is in effect. MPEP § 803.02(III)(A).
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Claim Objections
Claim 26 is objected to as it is being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
§ 112(b) Rejection -Unclear Claim Term
Claim 18 is rejected under 35 U.S.C. 112(b) as indefinite because the claim term “the catalyst compound has a syn or anti configuration” is not clear. In the representation of stereochemical relationships “anti” means ‘on opposite side’ of a reference plane, and ‘syn’ means ‘on the same side’. See IUPAC compendium of Chemical Terminology at 95-96 of 1622. Given the claimed complex compound comprises several of rings and groups, one ordinary skill dose not know which two groups refer to which plane for the claimed syn or anti configuration.
Claim Rejections - 35 USC § 102
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 16 and 21 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by J. Klosin, et al, WO2003091265A1 (2003)(“Klosin”).
Klosin teaches the compound of (N-cyclohexyl)-1,1-di(4-n-butyl)phenyl-1-((1,2,3,3a,7a-ŋ)-2-methyl-4-phenyl-1H-inden-1-yl)silanaminato-(2-)-N-)-titanium dimethyl. Kloshin at page 9, line 30-31. CAS abstract indicates that the compound of (N-cyclohexyl)-1,1-di(4-n-butyl)phenyl-1-((1,2,3,3a,7a-ŋ)-2-methyl-4-phenyl-1H-inden-1-yl)silanaminato-(2-)-N-)-titanium dimethyl has a chemical structure as indicated below.
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The Klosin compound maps the Formula (I) in claims 16 and 21 as:
M is Ti which is a IV transition metal;
X is silicon which is a bridging atom;
Y is N;
Z is carbon, wherein R1 and R2 joined to form a cyclohexyl group;
R3 is -CH3;
R4-R12 all are hydrogen atoms;
R13 and R14 all are 4-n-butylphenyl which are hydrocarbyl groups.
The Klosin compound meets each and every limitation of the formula (I) in the instant claims 16-17 and 21. The preamble language “A composition” in the instant claims 16 and 21 does not constitute a structural limitation. Neither instant claims nor the specification require that a “composition” comprise materials or components in addition to the claimed compound of formula (I). See for example, Specification at page 2, [0009]. Thus, under its broadest reasonable interpretation, consistent with the specification, a “composition” encompasses a one-component composition (i.e., a composition that consists only of the claimed compound). MPEP § 2111. Therefore, claims 16 and 21 are anticipated.
Claim Rejections - 35 USC § 103
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.
The factual inquiries 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.
Claims 16-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over A. R. Kim, et al, KR20190086989A (2019)(“Kim”).
A. R. Kim, et al, KR20190086989A (2019)(“Kim”)
Kim is published in Korean, a copy of machine translation is attached as the second part of the reference, which results in the total page of the Kim is 58, the format for the citation of Kim is XX/58.
Kim teaches a transition metal compound having a novel structure and a catalyst composition comprising the transition metal compound. Kim at 40/58, title.
Kim teaches that the transition metal compound represented by the following formula (1):
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Wherein,
R1 to R6 are each independently hydrogen; halogen; . . .
R7 is hydrogen; halogen; Alkyl having 1 to 20 carbon atoms; Cycloalkyl having 3 to 20 carbon atoms; Alkenyl having 2 to 20 carbon atoms; Alkoxy having 1 to 20 carbon atoms; Aryl having 6 to 20 carbon atoms; Arylalkoxy having 7 to 20 carbon atoms; Alkylaryl having 7 to 20 carbon atoms; Or arylalkyl having 7 to 20 carbon atoms,
Q is Si, C, N, P or S,
M is a Group 4 transition metal,. . . .
Kim at 41/58 for Formula (1) and at 3/58, emphasis added.
Kim teaches example compounds such as compound Formula 1-4 having a chemical structure as indicated below.
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Kim at 7/58, Formula 1-4.
The Kim compound Formula 1-4 maps the Formula (I) in claim 16 as:
M is Ti which is a IV transition metal;
X is silicon which is a bridging atom;
Y is N;
each of R1 and R2 are methyl;
R3 is -CH3;
R4-R9 and R11-R12 all are hydrogen atoms;
R12 is butyl;
R13 and R14 all are methyl.
Difference between Kim and the Claims 16-18 and 21
The Kim compound Formula 1-4 differs from the instant claims 16-17 and 21 in that the Z in the Kim compound Formula 1-4 is CCH3 rather the CH as claimed by the instant claim 16 as indicated below.
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The Kim compound Formula 1-4 further differs from the instant claim 18 in that it R1 and R2 are same.
Obvious Rationale of the instant Claims 16-18 and 21
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
One of ordinary skill is motivated to select the Kim Formula 1-4 for further investigation because Kim discloses it as an example Formula 1 and it can be used as a catalyst. Having selected the Kim Formula 1-4, one of ordinary skill is motivated to modify the Kim Formula 1-4 as indicated below, thus arrive at a compound meeting the structural requirement of the Formula (I) in claims 16-181 and 21.
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As mentioned in the 102 rejection above that the preamble language “A composition” in the instant claims 16-17 and 21 does not constitute a structural limitation, thus, the proposed compound meets each and every limitation of claims 16-18 and 21, therefore, claims 16-18 and 21 are obvious.
One ordinary skill has a motivation to do so with a reasonable expectation of success because the proposed compound is a position isomer of the Kim Formula 1-4, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. MPEP 2144.09.II.
Subject Matter Free of the Art
Claim 26 and the elected species are free of the art recorded. The closest prior art of record is A. R. Kim, et al, KR20190086989A (2019)(“Kim”).
A. R. Kim, et al, KR20190086989A (2019)(“Kim”)
As mentioned above that Kim teaches a transition metal compound meeting each and every limitation of claim 16.
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Difference between Kim and Claim 26
The compound taught by differs from the instant claim 26 in that:
(i). the R10 in the compound taught by Kim is tert-butyl group rather the claimed hydrogen;
(ii). each R5 and R6 in the compound taught by Kim is hydrogen atoms rather the claimed cyclopentyl group; and
(iii) R2 is ethyl group rather the claimed 1-adamantyl
Claim 26 and the elected Species are NOT obvious
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
Claim 26 and the elected species are not obvious because neither Kim nor Kim in view a second prior art motivates one ordinary skill to modify the Kim prior art compound(s) to arrive at the claimed compound and/or the elected species with a reasonable expectation of success.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The Z in the proposed compound is CH(CH3)(CH2CH3), it is stereogenic, therefore, it has a anti and /or syn configuration as the -CH2CH3 can be on the same of different side with the two methyl groups in Si(CH3)2 on the ring comprising Si.