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 .
Claim Status
Claims 1-15, filed and amended on 12/15/2023, are pending.
Priority
The instant application was file on 12/15/2023 and claims benefit of priority to:
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. See filing receipt dated 12/29/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The use of the term “Umicore”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1, 2, 4, 7, 9, and 14 are objected to because of the following informalities:
In the final line of claim 1, the word “and” should be inserted between the two options.
The same change should be made in claims 2, 4, 7, 9, and 14.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 14 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 14 contains the trademark/trade name “Umicore”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe catalysts and, accordingly, the identification/description is indefinite.
Furthermore, the trademark is including within parenthesis, therefore this also appears to be a range within a range limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation “Rh(acac)(CO)2, [(acac-Rh(COD)]”, and the claim also recites “(Umicore…)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Subject Matter free from the Prior Art
Claim 14 is rejected. Claims 1-13 and 15 are objected to. However, the claims appear to be free from the prior art.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to the claimed compounds are those described in i) US 2022/0340511 (published on 10/27/2022) and ii) US 5523453 (published on 6/4/1996).
The first reference teaches compounds of the following formulae (IA) and (IB):
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There compounds are analogous to those of instant formula (I) wherein the cyclohexyl groups have been replaced by phenyl groups and R1 to R4 are tert-butyl (C4 alkyl) or -OMe (C1 alkoxy). There is no teaching or suggestion to modify the disclosed compounds to arrive at those claimed.
The second reference teaches compounds of the following formulae:
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. See claims.
None of the compounds include cyclohexyl substituents on one of the phosphorus atoms. Nor is there any teaching or motivation to modify these compounds to arrive at those claimed.
Therefore, the claimed compounds and process of use appear to be free from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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