DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/410,773 application filed 11 January 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-25 are pending and have been fully considered.
Claim Objections
Claim 20 is objected to because of the following informalities: compounds with n-alkyl or t-alkyl groups (or related such as n-alkylphenyl or t-alkylphenyl groups ) should be written properly. Thus, for example, 2-npropylphenyl should be written as “2-propylphenyl” or “2-n-propylphenyl” and 2-tbutylphenyl should be written as “2-t-butylphenyl” or “2-tert-butylphenyl.” Appropriate correction is required.
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 18 and 19 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.
Regarding the aforesaid claims, it appears that when b= a – 1, the ligand(s) are not perfluorinated since perfluorinated compounds are organofluorine compound that lacks C-H bonds. For example, consider formula (1c) in claim 18. Since 4 ≤ a ≤ 20, then if a = 4, b may be 3; if a = 5, then b may be 4, etc. However, the CaFb moiety is an alkyl moiety in which, if perfluorinated, all the hydrogen atoms are replaced by fluorine. Thus, for example, -C4 alkyl is -C4H9 or, more generally, CxH2x+1. However, in the recitation of the claims, if a = 4, then b may be = 3 or C4F3. This implies 6 hydrogen atoms attached to the carbon atoms and, the CaFb moiety is not perfluorinated. However, claim 1 requires each Z, to which the CaFb moiety corresponds, is a perfluorinated tag. Additionally, with respect to claim 18, if n = 0, then there is no perfluorinated ligand. Thus, n must be an element of the integers such that n ≥ 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. See discussion above; when b = a – 1, the requirement that “Z is a perfluorinated tag” in instant claim 1 is expanded to “Z is a perfluorinated tag or not a perfluorinated tag,” thereby broadening the scope of claims 18 and 19 instead of further limiting the subject matter. The same issue applies to claim 18 when n = 0 because it expands the subject matter of the perfluorinated ligand to include non-perfluorinated ligands. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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.
Claim(s) 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lipovská et al in the Journal of Fluorine Chemistry (2016, vol 191, pp 14-22).
Lipovská et al discloses the following reaction scheme 5:
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wherein, in compound 5, the Ru corresponds to the d-block element; the moiety including the imidazolidine ring corresponds to the perfluorinated ligand, wherein the aforementioned imidazolidine ring corresponds to NHC; the two trimethylbenzyl rings corresponds to an aromatic L; the C2 alkyl groups correspond to the spacer Y group; and the -C6F13 moiety corresponds to the perfluorinated tag Z. The dichloromethane, CH2Cl2, at room temperature (rt), corresponds to the solvent (the normal boiling point of CH2Cl2 is about 40o C); and either the -Cl2 or the 1-ethenyl-2-propan-2-yloxybenzyl ligand corresponds to the co-ligand (ii) of the claim.
Allowable Subject Matter
Claims 1-17 and 20-24 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art does not appear to anticipate or render obvious the steps of instant claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
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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.
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
5 August 2026
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