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 .
Status of the Application
Claims 1, 3, 5-11 and 13-19 are pending.
Election/Restrictions
Applicant's election with traverse of the species of copper, in the reply filed on 05/15/2026 is acknowledged. The election was made with traverse.
The traversal is on the ground(s) that all metals after Al in the electrochemical series will be able to act as a catalyst and Unity of invention was found at the international stage of this application. This is not found persuasive as the catalyst in the instant claims is not limited to metals but their compounds and combination thereof. As a result, an undue burden would be placed on the Examiner to search applicant's process with thousands of catalysts. Further, there is no unity of invention, please see the rejection as set forth below.
The requirement is still deemed proper and is therefore made FINAL.
Since the elected species reads on claims 1, 3, 5-11 and 13-17, these claims are under current examination. Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claims 1, 3, 5-11 and 13-17 are under current examination.
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, 5-11 and 13-17 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 pre-AIA the applicant regards as the invention.
Claims 1, 3, 5-11 and 13-17 are indefinite as:
Claim 1 recites catalyst and metal M in improper Markush format. Applicant is suggested to use proper Markush format, such as “selected from a group consisting of”.
Claims 6, 7, 8, 10, 11 recites alternatives in improper Markush format. Applicant is suggested to use proper Markush format, such as “selected from a group consisting of”.
Since the dependent claims doesn’t cure the above deficiencies, these claims are also indefinite.
Appropriate correction required.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-8, 10, 11, 14, 16, 17 and elected species are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Matsuo (US 20200048282 A1) as evidenced by Komada (US 6143690).
Matsuo discloses a process for making trimethylaluminum comprising reacting methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride (paragraph 0040, 0078-0085 and claims) with metal M, with example of Mg (making Al-Mg alloy using Mg in situ in presence of solvent, such as n-dodecane, n-decane, toluene, followed by using same slurry in solvent of preparation (paragraphs 0072-0075)), in presence of regulated flow of methyl chloride according to temperature in a SUS reaction vessel (a stainless-steel vessel (please see evidence Komada (US 6143690)), which comprises metals, such as Fe and copper) (reads on catalyst of the instant claims as the metal of the reaction vessel is included according to the instant specification as catalyst)
according the instant specification:
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(entire prior art, especially abstract, 0014, 0016, 0027-0052, 0057-0059, 0069-0085, 0099-0107, 0120, 0150-0152, Examples 1-10).
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The cited prior art further teaches making alkyl aluminum halide in situ in presence of an additive or a reaction initiator selected from iodine, bromine or alkylaluminum compound (0027-0052, 0099-0107 and claims). The cited prior art discloses introducing methyl chloride after methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride has reacted with a portion of metal M.
Since the cited prior art reads on all the limitations of the instant claims 1, 5-8, 10, 11, 14, 16 and 17, these claims are anticipated.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3, 5-11 and 13-17 and elected species are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo (US 20200048282 A1) as evidenced by Komada (US 6143690).
Determining the scope and contents of the prior art
Matsuo discloses a process for making trimethylaluminum comprising reacting methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride (paragraph 0040, 0078-0085 and claims) with metal M, with example of Mg (making Al-Mg alloy using Mg in situ in presence of solvent, such as n-dodecane, n-decane, toluene, followed by using same slurry in solvent of preparation (paragraphs 0072-0075)), in presence of regulated flow of methyl chloride according to temperature in a SUS reaction vessel (a stainless-steel vessel (please see evidence Komada (US 6143690)), which comprises metals, such as Fe and copper) (reads on catalyst of the instant claims as the metal of the reaction vessel is included according to the instant specification as catalyst)
according the instant specification:
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(entire prior art, especially abstract, 0014, 0016, 0027-0052, 0057-0059, 0069-0085, 0099-0107, 0120, 0150-0152, Examples 1-10).
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636
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The cited prior art further teaches making alkyl aluminum halide in situ in presence of an additive or a reaction initiator selected from iodine, bromine or alkylaluminum compound (0027-0052, 0099-0107 and claims). The cited prior art discloses introducing methyl chloride after methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride has reacted with a portion of metal M.
Ascertaining the differences between the prior art and the claims at issue
Matsuo discloses a process for making trimethylaluminum comprising reacting methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride with metal M, with example of Mg (making Al-Mg alloy using Mg in situ in presence of solvent, such as n-dodecane, n-decane, toluene, followed by using same slurry in solvent of preparation), in presence of regulated flow of methyl chloride according to temperature in a SUS reaction vessel. The cited prior also teaches same step as in claim 3, however the cited prior is silent about calculation of portion of metal M reacted in the step and its ratio to total M required for reaction. The cited prior also teaches carrying out the reaction with a positive pressure of methyl chloride with metal M between 0.4Mpa (400kpa)-5kpa, thus overlapping with range in the instant claims 13 and 15 of 1atm (~101.2kpa-130kpa). The cited prior teaches same catalyst as in the instant claims in the form of material used in the SUS reactor. However, the cited prior art is silent about weight ratio of catalyst to elemental Al.
Resolving the level of ordinary skill in the pertinent art
With regard to the difference of calculation of M reacted to methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride before introduction of methyl chloride-Since the cited prior art teaches same reaction step, reaction condition and reactant, the portion of M consumed in cited prior art step is expected to be the same as in the instant claim. Thus, the cited prior art meets limitation of the instant claims.
With regard to the difference of carrying out the reaction with a positive pressure of methyl chloride with metal M in range1atm (~101.2kpa)-130kpa, the cited prior art teaches range between 0.4Mpa (400kpa)-5kpa, thus overlapping with range in the instant claims. Generally, however, differences in concentration, pressure, temperature, and the like, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or pressure, temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
With regards to the difference of weight ratio of catalyst to elemental Al, the cited prior teaches same catalyst as in the instant claims in the form of material used in the SUS reactor. Although the cited prior art is silent about weight ratio of catalyst from the reactor that is used in the reaction, the weight ratio of catalyst from SUS reactor participating in the reaction under same reaction condition is expected to be same whether or not realized by the cited prior art. Further, differences in concentration, pressure, temperature, and the like, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or pressure, temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Thus, the cited prior art meets limitation of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Matsuo discloses a process for making trimethylaluminum comprising reacting methyl aluminum dichloride, or sesquimethyl Al chloride or dimethyl aluminum chloride with metal M, with example of Mg (making Al-Mg alloy using Mg in situ in presence of solvent, such as n-dodecane, n-decane, toluene, followed by using same slurry in solvent of preparation), in presence of regulated flow of methyl chloride according to temperature in a SUS reaction vessel.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that the pressure may be varied during the reaction and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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