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 1-5, 8-16 and 21-26 of D. Leitch et al., US 18/271,800 (Jan. 11, 2022) are pending. Claims 12-16 and 21-26, to non-elected Groups (II)-(V) are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions. Claims 1-5 and 8-11 are under examination on the merits. Claims 1-5 and 8-11 are rejected.
Restriction
Restriction is required under 35 U.S.C. 121 and 372. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group (I) Claims 1-5 and 8-11 drawn to a complex, having a structure according to Formula Ill;
Group (II) Claims 12-16 drawn to a catalyst having a structure according to Formula IV, VA, or VB;
Group (III) Claims 21-23 drawn to a method of making the complex of Group (I);
Group (IV) Claims 24-25 drawn a method of making the catalyst of Group (II);
Group (V) Claims 26 drawn the method of using the catalyst of Group (I);
Election by Telephone
During a telephone conversation with Johanna Schwartz on February 25, 2026, a provisional election was made without traverse to prosecute the invention of Group (I), claims 1-5 and 8-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-16 and 21-26, to non-elected Groups (II)-(V) are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to non-elected inventions.
Lack of Unity of Invention
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons.
According to PCT Rule 13.2, unity of invention exists only when there is a shared same or corresponding special technical feature among the claimed inventions. The “Instructions Concerning Unity of Invention” (MPEP, Administrative Instructions Under the PCT, Annex B, Part 1(b)) state, “The expression 'special technical features' is defined in Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art.” Thus, unity of invention exists only when the shared same or corresponding technical feature is a contribution over the art. The technical feature that unites the groups is not a contribution over the art.
Unity of Invention Is Lacking among Groups (I) through (V)
Unity of invention is lacking among Groups (I), (III) and (V) because even though the inventions of these groups require the common technical feature of a complex of Formula III, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of M. van Laren et al., 38 Angewandte Chemie International Edition, 3715-3717 (1999) (“van Laren”). Per the § 102 rejection below, van Laren discloses a complex of Formula III. MPEP § 1893.03(d).
Unity of invention is lacking between Groups (II) and (IV) because even though the inventions of these groups require the common technical feature of a complex of Formula III, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of J. Lee et al., 45 Dalton Transaction, 10375-10388 (2016) (“Lee”). Lee discloses Pd(dppp)(MA), which meets claim 12, Formula VB. Lee at page 10386, col. 1 (“Synthesis of Pd(dppp)(MA)”).
Unity of invention is lacking between Groups (I), (III) and (V) and Groups (II) and (IV) because the groups do not share the same or corresponding technical feature. MPEP § 1893.03(d). Groups (I), (III) and (V) are drawn to a palladium complex, having a structure according to Formula Ill; however, Groups (II) and (IV) are drawn to the structurally different palladium catalyst having the structure according to Formula IV, VA, or VB.
Rejoinder
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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).
Unclear Claim Variable “A”
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite because antecedent basis is lacking with respect to “the A group” in the claim 10 provisos:
10 . . . provided that, for Formula IIIA, if
(i) the A group is maleic anhydride,
(ii) m and m' are 1, and
(iii) R5 = R6,
then R5 and R6 are not, or are other than, OMe, methyl, isopropyl, chloro, or trifluoromethyl;
or if
(i) the A group is maleic anhydride,
(ii) m and m' are 2, and
(iii) R5 = R6,
then R5 and R6 are not, or are other than, methyl, isopropyl, or trifluoromethyl.
It is unclear what “the A group” references because no “A group” is earlier recited in claim 10 or in the structure of claim 10 Formula IIIA. MPEP § 2173.05(e). As discussed in the MPEP a lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. MPEP § 2173.05(e). Similarly, if two different levers are recited earlier in the claim, the recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. MPEP § 2173.05(e). A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. MPEP § 2173.05(e). Claim 10 appears to be referencing specification Formula 1 (which does recite a variable “A”). See specification at page 15. However, particular embodiments appearing in the specification may not be imported into the claims. MPEP § 2111.01(II).
Unclear Term of Degree “lower alkyl”, lower “heteroalkyl” and “lower haloalkyl”
Claim 5 is rejected under 35 U.S.C. 112(b) as being indefinite because the meanings of “lower alkyl”, “lower heteroalkyl” and “lower haloalkyl” are unclear.
When a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. MPEP § 2173.05(b)(I)
The specification does not clearly define these terms. The most relevant portion of the specification teaches.
. . . each R5 and R6 independently is selected from alkyl, such as lower alkyl (e.g., methyl; ethyl; propyl; isopropyl; butyl; iso-butyl; tert-butyl; sec-butyl; pentyl and any isomers or cyclic versions thereof; hexyl and any isomers or cyclic versions thereof; heptyl and any isomers or cyclic versions thereof; octyl and any isomers or cyclic versions thereof; nonyl and any isomers or cyclic versions thereof; decyl and any isomers or cyclic versions thereof); haloalkyl, such as lower haloalkyl (e.g., CF3); heteroalkyl, such as lower heteroalkyl (e.g., OMe); halide; cyano; ester; amide; or amine . . .
Specification at page 17, [0124]. Thus, the above specification excerpt purports examples of “alkyl” or “lower alkyl”.1 However, no clear cutoff is disclosed such that one of ordinary skill can unambiguously determine whether certain alkyl groups meet the subject limitation. In sum, the specification does not provide any standard for determining “lower alkyl”, and there is no apparent standard that is recognized in the art for assigning a particular alkyl group as lower alkyl. MPEP § 2173.05(b)(I); see also footnote 1.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1) Rejection over M. van Laren et al., 38 Angewandte Chemie International Edition, 3715-3717 (1999) (“van Laren”)
Claims 1, 4, 5, 8, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by M. van Laren et al., 38 Angewandte Chemie International Edition, 3715-3717 (1999) (“van Laren”). Reference van Laren discloses the following palladium complexes I a-d.
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van Laren at page 3715, col. 1
Each of these complexes clearly falls within the genus of claim 1 Formula III, where “R and R' together to provide an aromatic, heterocyclic, or alicyclic ring system”; van Laren’s variable E (-CO2Me) meets the meaning of claim 1 variable R1-R4 “electron withdrawing group”; and van Laren’s variable R1 and R2 are encompassed by the meanings of claim 1 variables R5 and R6. See, specification at page 10, [064] (listing ester as an “electron withdrawing group”); specification at page 10, [072] (defining “heteroaliphatic”). Claim 1 is therefore anticipated. Claims 1, 4 and 5 are clearly anticipated.
Claim 8 is anticipated by van Laren complex I(d), where the phenyl groups are 2,4-dimethyl substituted.
Claim 9 is clearly anticipated.
Claim 10 is anticipated because van Laren complexes I a-d fall within the scope of claim 10 formula IIIA and is not excluded the proviso discussed in the § 112(b) rejection. Per the § 112(b) rejection, the claim 10 proviso appears to be referencing specification Formula 1 (which does recite a variable “A”). See specification at page 15.
§ 102(a)(1) Rejection over R. van Asselt et al., 33 Inorganic Chemistry, 1521-1531 (1994) (“van Asselt”)
Claims 1-5, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by R. van Asselt et al., 33 Inorganic Chemistry, 1521-1531 (1994) (“van Asselt”).
Reference van Asselt discloses bis(arylimino)acenaphthene (Ar-BIAN) palladium complexes that fall within claim 1 Formula III. See list of palladium complexes indexed from the reference by CAS in CAS Abstract and Indexed Compounds, R. van Asselt et al., 33 Inorganic Chemistry, 1521-1531 (1994).
For example, van Asselt discloses Pd(2,6-iPr₂C₆H₃-BIAN)(MA) (5c):
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See, van Asselt at page 1524, Scheme at top of col. 1. Complex Pd(2,6-iPr₂C₆H₃-BIAN)(MA) falls within the genus of claim 1 Formula III, where “R and R' together to provide an aromatic, heterocyclic, or alicyclic ring system”; “R2 and R4 join together to provide a cyclic group and the remaining R1 and R3 groups . . . are hydrogen”.
The limitations of claims 2 and 3 are met because in 5c, “R2 and R4 join together to provide a 5-membered cyclic group”, which is maleic anhydride.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met because each R5 and R6 are isopropyl, which is asserted to fall within the scope of “lower alkyl”. See § 112(b) rejection above.
The limitations of claim 8 are clearly met.
The limitations of claim 9 are met because “R and R' . . . join together to provide an aromatic . . . ring system”.
§ 102(a)(1) Rejection over B. Crociani et al., Journal of the Chemical Society, Dalton Transactions: Inorganic Chemistry, 71-79 (1991) (“Crociani”)
Claims 1, 4, 5 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by B. Crociani et al., Journal of the Chemical Society, Dalton Transactions: Inorganic Chemistry, 71-79 (1991) (“Crociani”). Crociani discloses the following palladium complex:
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See, second listed compound in Table 1, page 72, i.e., [Pd(olefin)(R2N=CH-CH=NR2)], where R2 is C6H4OMe-4 and the olefin is “dmf” (where “dfm” stands for dimethyl fumarate, Crociani at page 71, col. 2, lines 1-2). See also, CAS Abstract and Indexed Compounds, B. Crociani et al., Journal of the Chemical Society, Dalton Transactions: Inorganic Chemistry, 71-79 (1991).
This compound falls within the genus of claim 1 Formula III, where the two -CO2Me groups meet the meaning of claim 1 variable R1-R4 “electron withdrawing group”; and the 4-phenyl -OMe groups meet the claim 1 variables R5 and R6. See, specification at page 10, [064] (listing ester as an “electron withdrawing group”); specification at page 10, [072] (defining “heteroaliphatic”). Claims 1, 4 and 5 are clearly anticipated.
Claim 10 is anticipated because Crociani’s palladium complex falls within Markush formula IIID.
Claim 11 is anticipated because Crociani’s palladium complex is a species of the last listed formula of claim 11. As indexed by CAS above, the ester groups are in a trans or E-configuration relative to the double bond. In this regard, Crociani states “[s]uch a co-ordination mode with an E-s-trans-E a-diimine skeleton conformation has already been reported for d8 metal complexes”. Crociani at page 77, col. 1.
Non-Statutory Double Patenting Rejections
The non-statutory 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 non-statutory 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).
Provisional Non-Statutory Double Patenting Rejection over D. Leitch et al., US 18/838,903 (2023), published as US 2025/0153157 (2025)
Claims 1-5, 8, and 10-11 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over conflicting claim 16 of D. Leitch et al., US 18/838,903 (2023), published as US 2025/0153157 (2025).
The rejection is provisional because the conflicting claims have not been patented. Conflicting claim 16 depicts palladium complex DMFDAB-Pd-MAH:
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Instant claims 1-5, 8, and 10-11 are patentably indistinct from conflicting claim 16 because palladium complex DMFDAB-Pd-MAH anticipates the instant claims. Complex DMFDAB-Pd-MAH is the first listed species of instant claim 11.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER R PAGANO whose telephone number is (571)270-3764. The examiner can normally be reached 8:00 AM through 5:00 PM.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Based on the parsing language used in this specification paragraph, it is not clear if the recited specification listing (i.e., methyl, ethyl . . . decyl and any isomers or cyclic versions thereof”) are intended to be examples of “alkyl” or examples of “lower alkyl”. Claim 5 would be indefinite under § 112(b) on this grounds alone.