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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Election/Restrictions
Applicant’s election without traverse of Group II claims 1-3 and 12 in the reply filed on 02/23/2026 is acknowledged.
Claims 13-15, 17, 28-30, 33-34, 41-42, 51-52, 59-60 and 66 are withdrawn as non-elected Groups.
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.
Claims 1-3 and 12 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.
The limitation of “M is not BF4” recited in claim 1 line 8 from bottom is unclear and confused because the claimed formula (I) does not have M group.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 factual inquiries 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.
Claims 1-3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Archer et al. (WO 2010/118377 A2).
Regarding claims 1 and 12, Archer et al. teach a ligand 13 having the structure as shown below (page 28):
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As we see above, the ligand compound 13 taught by Archer et al. corresponds to the instant claimed compound formula (I), wherein X=BF4-, a=m=1, R1=R2=H, except R3, R4=CMe2CH2CMe3 with one additional methylene group (emphasis added).
Although Archer et al. does not specifically disclose the claimed compounds such as per applicant claims 1 as per applicant and 1,3-bis(2,4,4-trimethylpentan-2-yl)-1H-imidazol-3-ium tetrafluoroborate as per applicant claim 12, the embodiment disclosed by Archer et al. have overall appearances that are basically the same as the instant claims. They are all have the core structure of a imidazolium groups and tetrafluoroborate counter anions. The only structure difference between the claimed compounds such as 1,3-bis(2,4,4-trimethylpentan-2-yl)-1H-imidazol-3-ium tetrafluoroborate of claim 12 and the ligand 13 of Archer et al. are that the prior art compound has one additional CH2 group inserted between the dimethylmethylene and tert-butyl group as the arrows indicated above.
The prior art ligand compound 13 taught by Archer et al. is a true homologs of the claimed compounds including 1,3-bis(2,4,4-trimethylpentan-2-yl)-1H-imidazol-3-ium tetrafluoroborate, the similarity between the chemical structures is sufficiently close that one on ordinary skill in the arts would have been motivated to make the claimed compounds in searching for new ligand compounds. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made See MPEP 2144.09 I-III.
Regarding claims 2-3, as discussed above, the ligand compound 13 taught by Archer et al. has at least of R5 as being Me, X is BF- and m is 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738