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 .
DETAILED ACTION
This Office action is responsive to Applicant's Response to Restriction
Requirement filed September 14, 2026. As filed, claims 1-15 are pending.
Priority
This application, filed 12/14/2023 is a National Stage entry of PCT/KR2023/002972 , International Filing Date: 03/03/2023 claims foreign priority to 10-2022-0031621, filed 03/14/2022.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Response to Restriction
Applicant's election of Group I, claims 1-8, drawn to compounds of formula 1, in the reply filed 9/14/2026 is acknowledged.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
In response to a further requirement for the election of a single disclosed species, Applicants further elected the compound of Formula 2-5:
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wherein in Formula 1,R1 to R4 are each independently tripropylsilyl group,
R5 is a substituent represented by Formula 2; X1 and X are -CH2-,X2 and X4 are each independently -(CR6R7)n-, wherein R6 and R7 are each independently hydrogen, and n is 1, X3 is -(CR6R7)n, wherein R6 is hydrogen, R7 is a phenyl group, and n is 1, and
* is a part bonded to N of Formula 1.
Applicants' elected species have been found not allowable due to the following rejections.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-8 are examined on the merits herein.
Claim Objections
Claim 1 is objected for reciting improper Markush language: the recitation in claim 1for definition of variables of Markush formula “represented by any one” and “selected from” should be changed to “selected from the group consisting of”.
See MPEP 803.02. “A Markush-type claim recites alternatives in a format such as "selected from the group consisting of A, B and C."Similarly for claims 2-4, 7, 8 the recitation “are each independently” or “represented” should be changed to “selected from the group consisting of”.
Appropriate correction is required.
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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. Catalysts 2021, 11, 1122 (cited by Applicants in IDS).
The article by Lee teaches a series of bis(phosphine) ligands iPrN(PAr2)2 where the Ar contains a bulky -SiR3 substituent (Ar = -C6H4-p-Si(nBu)3 (1), -C6H4-p-Si(1-hexyl)3 (2), -C6H4-p-Si(1-octyl)3 (3), -C6H4-p-Si(2-ethylhexyl)3 (4), -C6H4-p-Si(3,7-dimethyloctyl)3 (5)) and ligands of formula 6-8 (scheme 2, page 1122, experimental) reproduced below:
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The compound 6 disclosed by the prior art corresponds to Formula 1 ,R1 to R4 are each independently trialkylsilyl group,R5 is a substituent represented by Formula 2; X1 and X are -CH2-,X2 and X4 are each independently -(CR6R7)n-, wherein R6 and R7 are each independently hydrogen, and n is 1, X3 is -(CR6R7)n, wherein R6 and R7 is hydrogen, and n is 1.
The differences between the prior art and the claims at issue is that the article by Lee does not provide examples of compounds species wherein as required by formula (1) variable R5 is cycloalkyl and R1-R4 trialkylsilyl is C1-4 . Most of the species in the have R5 cyclohexyl and R1-R4 are each trialkylsilyl in which alkyl is C8 ( compound 6) which are not instantly claimed or and R1-R4 are each trialkylsilyl in which alkyl is C4 and R5 is alkyl of aryl (compound 7).
A prima facie case of obviousness based on structure exists if the prior art suggests to one of ordinary skill in the art to make the substitution or modification. In re Tabor, 502 F.2d 775 (CCPA 1974). It has been held several times that structurally similar compounds are obvious over one another. See, e.g., In re Payne, 606 F.2d 303, (CCPA 1979) (An obviousness rejection based on similarity in chemical structure and function entails motivation of one skilled in the art to make the claimed compound with an expectation that compounds similar in structure will have similar properties. When prior art compounds essentially "bracket" the instantly claimed compound, one of ordinary skill in the art would clearly be motivated to make the claimed compound.).
MPEP 2141 provides that exemplary rationales that may support a conclusion of
obviousness include (E) " Obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
In the instant application, before the effective filing date of the claimed invention based on structural similarity, one of ordinary skill in the art would have an expectation of success in making and using the claimed compounds because of the structural similarity between the prior art and the instantly claimed compounds and a suggestion to try various combination of variables on the core structure (i.e. R5 as cylcloalkyl and R1-R4 as tributylsilyl in the instant application). In the interest of generating additional compounds, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have already been demonstrated to have ligand for catalyst activity.
Therefore, the prior art relied upon, and knowledge generally available in the art before the effective filing date provide suggestion that would have motivated the skilled artisan to make the structural modification from a known substrate which is routine in the chemical art when developing a lead compound, and have reasonable expectation of success in arriving at instant invention.
Therefore, based on structural similarity, the instant compounds are found to be prima facie obvious over the compound of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1.Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-12 of copending Application No. 19106754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims generically overlap with applicants’ instantly claimed invention and the ‘754 application provides in claims the compound of formula of formula 2-3, 2-4, 2-5, 2-6, 6-3, 6-4, etc. which teach instantly claimed compound of formula 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2.Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, of copending Application No. 18023903 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims generically overlap with applicants’ instantly claimed invention and the ‘903 application provides in claims the compound of formula 1 which overlaps with instantly claimed compound of formula 1 and teach claimed elected species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3.Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, of copending Application No. 18728250 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims generically overlap with applicants’ instantly claimed invention and the ‘250 application provides in claims the compound of formula 1 which overlaps with instantly claimed compound of formula 1 and teach claimed elected species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-8 are rejected. Claims 9-15 are withdrawn from consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
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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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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