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 I claims 1-5 in the reply filed on April 29, 2026 is acknowledged.
The claims 6-12 are withdrawn from consideration.
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 1-5 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 limitations of “n is the number of carbon atoms of a carbon chain” renders the claim 1 indefinite. Appropriate corrections are required.
Claim 1 recites the limitation "n is the number of". There is insufficient antecedent basis for this limitation in the claim. Appropriate corrections are required.
The limitations of “the remainder(s) is(are) selected from one or two of an oxygen atom…” renders the claim 1 unclear and confused because the group bonds to the oxygen atom is missing. Appropriate corrections are required.
Claim 1 recites the limitation "the coupling structure". There is insufficient antecedent basis for this limitation in the claim. Appropriate corrections are required.
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.
The phrases "preferably" recited in claims 2-4 render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Appropriate corrections are required.
The term of “amino structure” recited in claim 4 is unclear and confused because an amino group is an organic functional group.
For the purpose of the examination, the claimed inorganic carrier is interpreted as the organic functional groups (e.g., amino group, alkoxide) modified inorganic carrier.
Appropriate corrections and clarifications are required.
Claim Rejections - 35 USC § 102
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 1-5 are rejected under 35 U.S.C. 102(a)(1) 102 ()(2) as being anticipated by Matlin et al. (Journal of the Chemical Society, Chemical Communications (1984), (12), 798-799).
Regarding claim 1, Matlin et al. teach an silica supported organotin catalyst (2) having the structure as shown below (Scheme 1, page 798):
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As we see above, the silica supported organotin catalyst (2) taught by Matlin et al. corresponds to the instant claimed formula, wherein n=3, R1 as being butyl, R2-3 as being methoxy groups, R as being
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A product-by-process limitation of wherein the supported organotin catalyst is prepared by coupling…” of claim 1 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Regarding claim 2, as discussed above, the silica supported organotin catalyst (2) taught by Matlin et al. corresponds to the instant claimed formula, wherein n=3, R1 as being butyl, R2-3 as being methoxy groups, R as being
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A product-by-process limitation of wherein the supported organotin catalyst is prepared by coupling…” of claim 2 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Regarding claim 3, as discussed above, the silica supported organotin catalyst (2) taught by Matlin et al. is Corasil II silica (Scheme 1, page 798).
Corasil II is known a brand name for silica, specifically silicon dioxide (SiO2), which is a naturally occurring compound of silicon and oxygen found in sand, quartz, and other geological materials having an specifically surface area 200 m2/g.
Regarding claim 4, the silica supported organotin catalyst (2) taught by Matlin et al. is loaded 0.25 mequiv./g of organotin groups which is encompassed by the instant claimed weight ratio of 1 ppm-40%wt (right column lines 1-6 on page 798).
Regarding claim 5, a product-by-process limitation of wherein the supported organotin catalyst is prepared by coupling…” of claim 5 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YUN QIAN/ Primary Examiner, Art Unit 1738
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