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 1-10 and 12-32 of T. Vollgraff, et al., 18/262,516 (07/21/2023) are pending. Claims 1-7 and 16-26 are withdrawn as drawn to non-elected Groups. Claims 8-10, 12-15 and 27-32 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I, without traverse, in the reply filed on 02/17/2026. Applicant added new claims 27-32 falling within the scope of Group I. Applicant amended claims 10 and 12; cancelled claim 11, in the reply filed on 07/01/2026. Thus, now claims 8-10,12-15 and 27-32 drawn to the elected Group I. Claims 1-7 and 16-26 drawn to nonelected Groups II-V are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is maintained as FINAL.
Maintained Objection to Abstract
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Withdrawal Claims Rejections- 35 U.S.C. 112(b)
Rejection of claim 15 under 35 U.S.C. 112(b) as indefinite because it recites the improper preference language of “in particular” is withdrawn in view of claim amendment on claim 15.
Maintained 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 8-10, 12-15 and 27-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by J. Richter, et al, 475, Inorganica Chimica Acta, 18-27 (2018)(“Richter”).
Richter teaches a compound 4a that is prepared as follows:
In the case of 4, the unsolvated material was dissolved in DME at ca. 60 ºC to give a clear, orange-red solution. Slow cooling to room temperature afforded well-formed, colorless single-crystals of the DME adduct (C16H21)Li(DME)(4a).
Richter at page 20, left col. 12-15, emphasis added.
Per Scheme 3, Richter teaches a compound 41 has a chemical structure as indicated below.
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Richter at page 19, right col. Scheme 3.
Richter also teaches that the compound 4a has a molecular structure in the crystal as indicated in Fig. 1.
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Richter at page 20, left col. Fig. 1.
Thus, the Richter compound 4a has a chemical structure as indicated below
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Which maps the general formula MAYn(AzuH) (I) of claims 9-10 , 12-14 as:
MA is Li that is a alkali metal;
Y is DME (CH3O-CH2CH2-OCH3), n is 1;
Azu is an azulene derivative, wherein, the carbon atoms of C1, C4, C7 and C8 has a methyl or isopropyl group; and
the C6 has a hydrogen atom.
The X-ray data indicating compound 4a is pure, and Richter also teaches that compound 4a is a monomer. Richter at page 23, Conclusion, line 5-7. Thus, the Richter compound 4a is an isomerically pure compound. The Richter compound 4a meets each and every limitation of claims 10 and 12-13, therefore, claims 10 and 12-13 are anticipated.
Claim 8 is anticipated because Richter teaches a suspension comprising the compound 4a and DME that is a solvent.
Claim 14 is anticipated because DME (CH3O-CH2CH2-OCH3) is an aprotic polar solvent. See specification at page 23, line 1.
Claim 15 is anticipated because Richter also teaches the follows compound that maps the claimed formula as MA+ is Li+. Richter at page 22, Scheme 9.
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Claims 9 and 27-32 are also anticipated because these claims are interpreted as product-by-process claims. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." See MPEP2113.I.
Applicant’s Arguments
Applicant argues on the ground that the Richter compound is not an pure compound as in the Conclusion Section of Richter indicates some impurities in Richter compound cannot readily removed. Last paragraph at page 24 of the Remarks filed on 07/01/2026.
This argument has been fully considered but not persuasive. As mentioned in the 102 rejection above that the X-ray data indicating compound 4a is pure, Richter also teaches that compound 4a is a pure monomer. In the Conclusion Section, while Richter teaches there is stereoisomers for compounds 6-11, 14 and 15, Richter does not mention the compound 4a is an impure compound. See Richter at right col. the last sentence to page 24, left col. line 3.
Non-Statutory Double Patenting Rejections
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).
Claims 9-10, 12-14 and 27-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-5 of co-pending Application No. 18/262,532 (published as US 20240317788A1) in the claim set filed on 07/21/2023.
Conflicting Claims
The conflicting claim 1 claims compounds according to the follows general formula
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wherein
- M+ is an alkali metal cation,
- R is selected from the group consisting of primary, secondary, tertiary alkyl, alkenyl and alkynyl radicals having 1 to 10 carbon atoms, cyclic alkyl radicals having 3 to 10 carbon atoms, a benzyl radical, mononuclear aryl radicals, polynuclear aryl radicals, mononuclear heteroaryl radicals and polynuclear heteroaryl radicals,
- Y is a neutral ligand that is bound or coordinated to M+ via at least one donor atom, wherein H20 is excluded, and
-n= 0, 1, 2, 3 or 4,
As mentioned in the previous Office action that the conflicting claim 1 anticipates the instant claim 9, 27-32.
The conflicting claim 2 further claims:
2. Compound according to claim 1, wherein
i. there is an isomerically pure compound according to general formula I or general formula II or
ii. there is an isomer mixture containing a first regioisomer according to formula I and a second regioisomer according to formula II.
Claims 10,12 are obvious because when one ordinary skill in the art conduct the conflicting claim 2 to obtain isomerically pure the general formula I/II, which would arrive at compounds falling within the chemical genera of instant claims 1-12, therefore, claims 1012 are obvious.
Regarding the instant claims 13-14, the conflicting claims 4-5 further claims:
4. Compound according to claim 1, wherein the alkali metal cation M+ is selected from the group consisting of Li+, Na+ and K+.
5. Compound according to claim 1 , wherein the neutral ligand Y
A) is a polar aprotic solvent or
B) is a crown ether selected from the group consisting of macrocyclic polyethers and aza-, phospha- and thia- derivatives thereof,
wherein an internal diameter of the crown ether and an ion radius of the alkali metal cation M+ correspond to each other.
Therefore, the instant claims 13-14 is obvious by the combination of conflicting claims 2, and 4/5 respectively.
Applicant’s Argument
Applicant argues that the claimed inventions are patentably distinct. Reply for Non-Statutory Double Patenting Rejections at page 24 in the reply filed on 07/01/2026. It should be noted that there is no claim amendment for claims 9 and 27-32, applicant does not provide any reason why the rejection for claims 9 and 27-32 made in the previous Office action is improper.
Terminal Disclaimer
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.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Richter compound 4 is one homologous of the Example 1 compound Li(GuaH) in the instant specification. Specification at page 159, Example 1.
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