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 .
Status of the Application
Claims 1-21 are pending.
Election/Restrictions
Applicant's election with traverse of Group III, claims 14-20, directed to a composition, and the species:
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in the reply filed on 04/03/2026 is acknowledged. The election was made with traverse.
The traversal is on the ground(s) that the inventions could be examined together without undue burden. This is not found persuasive because Groups I-IV are drawn to compositions having compounds of different genus and each genus encompass millions of compounds (Groups I-III) or process of using group I genus (encompassing millions of compounds). Therefore, the inventions of different groups I-III and IV require a different field of search. As a result, an undue burden would be placed on the Examiner to search applicant's each composition and process. Further, genus of group III presents millions of compounds of different structures and an undue burden would be placed on the Examiner to search applicant's each composition.
The requirement is still deemed proper and is therefore made FINAL.
Since the elected species reads on claims 14-16 and 18, these claims are under current examination. Accordingly, Claims 1-13, 17 and 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 14-16 and 18 are under current examination.
Claim Rejections - 35 USC § 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 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazawa (Nature catalysis; vol 3, 2020, 851-858; as provided by the applicant on IDS dated 11/13/2023).
Miyazawa discloses a composition comprising a diruthenium complex which reads on genus of the instant claims 14 and 16:
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when R1=alkyl=t-butyl; R2=R3=Cl and X=ligand=Cl (entire article, page 853, fig 2). The cited prior art also teaches that various dirhodium complexes are known and have catalytic activity in asymmetric synthesis reactions and replacing rhodium with ruthenium according to the invention provides exceptional high activity and provides motivation to replace Rh to Ru in such catalysts (entire article).
Since the cited prior art reads on all the limitations of the instant claims 14 and 16, these claims are anticipated.
Claim Rejections - 35 USC § 103
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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14-16, 18 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Miyazawa (Nature catalysis; vol 3, 2020, 851-858; as provided by the applicant on IDS dated 11/13/2023) and Davies (Nature; 2018, Vol 564, 395-399) in combination.
Determining the scope and contents of the prior art
Miyazawa discloses a composition comprising a diruthenium complex which reads on genus of the instant claims 14 and 16:
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923
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when R1=alkyl=t-butyl; R2=R3=Cl and X=ligand=Cl (entire article, page 853, fig 2). The cited prior art also teaches that various dirhodium complexes are known and have catalytic activity in asymmetric synthesis reactions and replacing rhodium with ruthenium according to the invention provides exceptional high activity and provides motivation to replace Rh to Ru in such catalysts (entire article).
Ascertaining the differences between the prior art and the claims at issue
Miyazawa discloses a composition comprising a diruthenium complex which reads on genus of the instant claims 14 and 16. Miyazawa also teaches that various dirhodium complexes are known and have catalytic activity in asymmetric synthesis reactions and replacing rhodium with ruthenium according to the invention provides exceptional high activity and provides motivation to replace Rh to Ru in such catalysts, but fails to teach the elected species wherein R2=R3=Ph and X=BArF.
Resolving the level of ordinary skill in the pertinent art
With regards to the difference of elected species R2=R3=Ph- Miyazawa discloses a composition comprising a diruthenium complex with R2=R3=Cl. Miyazawa also teaches that various dirhodium complexes are known and have catalytic activity in asymmetric synthesis reactions and replacing rhodium with ruthenium according to the invention provides exceptional high activity and provides motivation to replace Rh to Ru in such catalysts.
This deficiency is cured by Davies.
In the same field of endeavor of asymmetric synthesis, Davies teaches a composition comprising dirhodium catalyst Rh2(S-TPPTTL)4 (same as elected species with a difference of Rh vs Ru) and its importance in asymmetric C-H functionalization and stereoselectivity (entire article):
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Thus, with the guidance and motivation provided by Miyazawa and Davies, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that replacing Rh with Ru in Davies catalyst as suggested and motivated by the teachings of Miyazawa is beneficial in asymmetric synthesis.
With regards to the difference of counter anion-It is routine to use counter anions in coordination complexes, such as halides, acetates, BArF etc., absent any evidence to the contrary. Thus, the cited prior art meets all limitations of the instant claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ composition.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Miyazawa discloses a composition comprising a diruthenium complex with R2=R3=Cl. Miyazawa also teaches that various dirhodium complexes are known and have catalytic activity in asymmetric synthesis reactions and replacing rhodium with ruthenium according to the invention provides exceptional high activity and provides motivation to replace Rh to Ru in such catalysts. In the same field of endeavor of asymmetric synthesis, Davies teaches a composition comprising dirhodium catalyst Rh2(S-TPPTTL)4 and its importance in asymmetric C-H functionalization and stereoselectivity.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that Rh may be replaced with Ru to provide better and efficient catalyst and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed composition with a reasonable expectation of success.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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