DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/275,384 application filed 1 August 2023, which is being examined under the first inventor to file provisions of the AIA .
Claims 1, 4-8, 10-11, 13-16, and 19 are pending and have been fully considered.
Claim Interpretation
Applicant is reminded that “[d]uring patent examination, the pending claims must be ‘given their broadest reasonable interpretation consistent with the specification’” MPEP 2111. Olefin has been interpreted as hydrocarbons, either cyclic or acyclic, with one or more double bonds.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites “wherein the (pre)catalyst of the general formula (1) is added…” Formula (1) has been removed from the claims in the amended claim set filed 1 August 2023. Therefore, it is unclear which formula claim 15 is referring to. Claim 16 is rejected for the same reason, i.e., reference to formula (1).
Claim 16 recites the limitation "the mixture of dicyclopentadiene and the (pre)catalyst" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Moreover, applicant may want to consider having claim 16 depend from claim 15 to further clarify the mixture in question.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1 and 4-6 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 4 of prior U.S. Patent No. 11,535,702. This is a statutory double patenting rejection. Note that claim 1 of the patent recites “[a] composition comprising: a) one or more monomers…b) an organo-ruthenium compound of formula (II):
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“wherein the organo-ruthenium compound of formula (II) is selected from the group consisting of:
[1,3-Bis(2,6-diisopropylphenyl)-2-imidazolidinylidene]{2-(E)-({2-[methylthio-κS]phenyl}imino-κN)methyl]phenoxido-κO}[2-(oxido-κO)benzylidene-κC]ruthenium(II) (Ru-1)” [first part of claim 4 in the patent]. Note that the preceding corresponds to formula 1B in instant claim 6 [see also paragraphs 0062-0063 in the published application]. Claim 4 of the patent continues with “the organo-ruthenium compound of formula (II) is selected from the group consisting of:
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[1,3-Bis(2,4,6-trimethylphenyl)-2-imidazolidinylidene]{2-(E)-({2-[isopropylthio-κS]phenyl}imino-κN)methyl]phenoxido-κO}[2-(oxido-κO)benzylidene-κC]ruthenium(II),” which corresponds to formula 2A in instant claim 6. Likewise, the 3rd formula in claim 4 of the patent corresponds to formula 3A in instant claim 6, and the 4th formula in claim 4 corresponds to formula 4A. The other claims in the instant application are directed to moieties of the claimed compound(s), which moieties are covered by the preceding.
Allowable Subject Matter
Claims 7-8, 10-11, 13-14, and 19 are objected to as 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.
The following is a statement of reasons for the indication of allowable subject matter: while Burtovy et al (US 11,535,702) discloses “it has now been found that by employing a novel series of organoruthenium compounds as described herein in combination with one or more olefinic monomers and a suitable photoactive agent, it is now possible to fabricate a 3D object or an OLED device” and “Embodiments in accordance with the present invention relate generally to a long shelf stable, single component mass polymerizable polycycloolefin monomer compositions containing a latent organo-ruthenium compound, which undergo rapid mass polymerization via ring open metathesis polymerization methods when subjected to suitable photolytic conditions.” However, Burtovy et al is not prior art since the reference has the same priority date as the instant application, 2 February 2021.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN A MCCAIG whose telephone number is (571)270-5548. The examiner can normally be reached Monday to Friday 8 to 4:30 Mountain Time.
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, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
6 March 2026
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