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 U.S.C. § 102
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 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 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.
Claims 1-3, 6-10, and 13 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Journal of Organometallic Chemistry, 2000, 606(2), 112-124 (herein “Laine”).
As to claims 1-3 and 6: Laine describes complexes (see formulas 10-11 in Scheme 1 on p. 113) that are according to the presently recited Formulas 3 and 3A.
As to claims 7-9: Laine further discloses polymerization of norbornene using the complexes (see section 2.4 and Table 5).
As to claim 10: Laine further discloses the cocatalyst MAO (see Table 5).
As to claim 13: Laine further discloses the solvent dichloromethane (see section 3.4).
Claims 1-4 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Journal of Coordination Chemistry, 2014, 67(13), 2312-2329 (herein “Kim”).
As to claims 1-4: Kim describes a complex (see formula L5PdCl2 at the bottom right of Scheme 1, section 3.1, p. 2320) that is according to the presently recited Formulas 3 and 1D.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 11-12 are rejected under 35 U.S.C. § 103 as being unpatentable over Laine in view of Polymer, 1998, 39(25), 6501-6511 (herein “Charpentier”).
The discussion set forth above regarding Laine with respect to base claims 1, 7, and 10 is incorporated here by reference. As set forth above, Laine describes a method according to claim 10. Laine’s method includes the cocatalyst methylaluminoxane (MAO; see section 3.4 and Table 5).
Laine does not disclose the presently recited cocatalysts.
Charpentier describes various aspects of aluminoxanes (see the abstract). Charpentier discloses that modified methylaluminoxane (MMAO) has the advantages over conventional MAO of high solubility in both aliphatic and aromatic solvents and a longer shelf-life (see the paragraph bridging pp. 6502-6503).
In light of Charpentier, one of ordinary skill in the art would have been motivated to use modified methylaluminoxane in place of the cocatalyst methylaluminoxane described in Laine in order to take advantage of its solubility and longer shelf-life. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed Laine’s polymerization using modified methylaluminoxane in place of methylaluminoxane.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but it would be allowable if written in independent form.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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