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 .
Claims 1-40 are presently pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on July 17, 2026, is acknowledged.
Claims 12-40 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of producing a supported rare earth catalyst (claims 12-23) and to a nonelected method for the borylation of hydrocarbons (claims 24-40), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 17, 2026.
Claims 1-11 are presently under consideration by the Examiner.
Drawings
The drawings are objected to because below Figure 44 therein, “Scheme 45” should be amended to recite “Figure 45”; see paragraph [0055] of Applicants’ Specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 10 is 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 10 is indefinite because “CG” therein is not defined. For examination purposes, “CG” will be interpreted as “a capping group”, as recited in Applicants’ claim 9.
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.
Claim Rejections - 35 USC § 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, 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.
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 1-7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Basset et al. (U. S. Patent Publication No. 2020/0171475).
Regarding claims 1, 2 and 5-7, Basset et al. teach a catalyst comprising a suitable support and an organometallic complex or coordination compound including at least a dehydrogenation metal. In these embodiments, the dehydrogenation metal of the organometallic complex or coordination compound may be grafted to a selected site of the suitable support. Examples of the suitable support include a molecular sieve material including one or more of a zeolite, clays, alumina, silica, porous silica, and mesoporous silica, where exemplary zeolites include faujasite, LTL, ferrierite (FER), mordenite (MOR) (“metal oxide support”; “metal oxide support is a zeolite base…”). The molecular sieve material may exhibit a total pore volume of higher than 60% micropores having pore sizes ranging from about 0.3 nm to about 2 nm (about 3 to 20 Å) and should also have at least about 0.05 mmol/g to about 1.5 mmol/g of Brønsted acid sites (“metal oxide support having Brønsted acid sites”). Examples of the organometallic complex or coordination compound include those containing a metal and a ligand, where lanthanum (La) is an exemplary metal. See paragraphs [0033]-[0035] of Basset et al.
The teaching of “one or more of a zeolite, clays, alumina, silica…” is considered to read upon the claim limitation “silica/alumina” support, as recited in claim 2.
Further regarding claim 1, and also regarding claims 3 and 4, Basset et al teach that the metal of the organometallic complex or coordination compound is grafted to a selected site of the suitable support (“catalyst is bound to the Brønsted acid sites on the metal oxide support”), wherein the selected site (a) may be inside or substantially inside and/or outside or substantially outside the micropores of the support and (b) is preferably a silanol site of a zeolite molecular sieve, wherein the silanol site may have and Si-O-Si or Si-O-Al bond (Si-O-Al is considered equivalent to “Al-O-Si”). Basset et al. further teach the feasibility in active sites being inside the micropores of the suitable support, where Brønsted acids are generally naturally present (“capped silanol groups and micropores within which are the Brønsted acid sites”). See paragraphs [0036] and [0038] of Basset et al.
Regarding claim 11, Basset et al. teach, as stated above, the suitable support material may exhibit a total pore volume of higher than 60% micropores having pore sizes ranging from about 0.3 nm to about 2 nm (about 3 to 20 Å), and that the metal of the organometallic complex or coordination compound is grafted to a selected site of the suitable support, wherein the selected site may be inside or substantially inside and/or outside or substantially outside the micropores of the support. Basset et al. further teach that the organometallic complex or coordination compound may have a molecular diameter ranging from about 0.2 to about 1.5 nm (about 2 to about 15 Å). Basset et al. further teach the feasibility in the selected site being a surface spatially located outside or substantially outside the micropores of the suitable support, as well as controlling or defining the location of the active sites. See paragraphs [0035], [0038], and [0039] of Basset et al. Basset et al. additionally teach that relative diameters (e.g., diameters of the organometallic complex or coordination compound and micropores) may be selected to control and/or define the location of the active sites. For example, selection of an organometallic complex with a diameter that is greater than the pore diameter of the suitable support may further or independently provide control over the location where the metal is grafted to the suitable support. See paragraph [0040] of Basset et al. From these teachings, and given that Basset et al. teach (a) that Brønsted acids are generally naturally present inside the micropores of the suitable support and (b) the feasibility in grafting the metal outside or substantially outside the micropores of the suitable support, the skilled artisan would have been motivated to determine through routine experimentation to select the optimal location for grafting the metal to the selected site of the suitable support, such as a location about 3.5 Å from inside the micropores of the suitable support (where Brønsted acids are generally naturally present).
Basset et al. do not explicitly teach, suggest, or define the aforementioned catalyst as a “supported rare earth-catalyst”, as recited in the instant claims. However, because the catalyst disclosed in Basset et al. structurally reads upon that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the catalyst disclosed in Basset et al. to suitably and effectively function as a supported rare earth-catalyst, absent the showing of convincing evidence to the contrary.
Allowable Subject Matter
Claims 8 and 9 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.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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:
Neither Basset et al. nor the cited references of record teach or suggest the limitations of these claims, regarding the formulae representing the supported rare-earth catalyst.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 September 4, 2026
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