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 Claims
Claims 1-6, 9, 13, 18-25, 27-28, and 30-31 are pending.
Claims 18-25, 27-28, and 30-31 are withdrawn.
Priority
Applicant’s claim for benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a national stage entry of and claims priority to PCT/US2022/073501 filed on 7/7/2022 and further claims priority to PRO application number 63/220,126, filed 7/09/2021.
Information Disclosure Statement
All references from IDS(s) received on 2/12/2024 have been considered unless marked with a strikethrough.
Elections/Restrictions
Applicant’s election of Group I with traverse in the reply filed on 7/29/2026 is acknowledged.
Applicant’s election of M: aluminum, R3: o-phenylenediamine, PL: THF, R1: 1,1-ethylphenylpropane, and R2:methyl, with traverse in the reply filed on 7/29/2026 is acknowledged.
The Examiner believes this is an accurate representation of the structure:
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The grounds for traversal are the Applicant argues that the claims are linked by a common inventive concept and share a common special technical feature. Further, the Applicant argues that the art cited by the Examiner fails to teach a hydrocarbyl group comprising a branched alkyl-aryl. The Examiner points to a secondary reference, included in the rejection below, that would be obvious to substitute such group. Therefore, unity is broken.
Claims 18-25, 27-28, and 30-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected methods of using, there being no allowable generic or linking claim.
No anticipatory art was found of the elected species, so the Examiner expanded the species pursuant to MPEP 803.02. The expanded species is described in the rejection. No anticipatory art was found, however is rejected in an obviousness-type 103 rejection below.
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 (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 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, 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 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 1-6, 9, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Coates, G. et al. (US9376413B1, pub. 2016; “Coates”) in further view Sookraj, S. et al. (US10590099B1, pub. March 2020; “Sookraj”).
This rejection applies to the expanded specie. The Expanded specie substitutes instant R1 from the elected specie with 2,2-methylphenylethane, as recited in instant claim 3. The structure is seen below.
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Coates teaches compound catalysts for use in carbonylation of epoxides for formation of lactones with an overlapping genus structure with instant Formula I. Coates teaches a structural example similar to the expanded specie.
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Coates teaches an aromatic ring in the instant -R3 position, which meets the limitations of instant claim 2, where -R3 can be a hydrogen, methyl, C2-10 alkyl group or in combination form a six-membered ring that is optionally a substituted aromatic ring.
Coates fails to teach a structural example where instant R1 is a branched alkyl-aryl, such as 2,2-methylphenylethane, and instant R2 is methyl.
Sookraj teaches compound catalysts for use in carbonylation of epoxides for formation of lactones with an overlapping genus structure with instant Formula I. Sookraj teaches embodiments that would lead to the expanded specie, such as:
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, where R4a is g:
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(Page 18, Column 32), R3a is 2,2-methylphenylethane, as represented by the following example:
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(Page 19, Column 34), and R1a is methyl, as represented by the following example:
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(Page 20, Column 35).
Sookraj fails to teach an explicit structural example of the combination of embodiments.
However, it would be obvious to a person skilled in the art to extract the structure taught by Coates and substitute instant R1 is a branched alkyl-aryl, such as 2,2-methylphenylethane, and instant R2 is methyl, as taught by Sookraj.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down inGraham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement
to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a
reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same
field or a different one based on design incentives or other market forces if the variations are
predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of
ordinary skill to modify the prior art reference or to combine prior art reference teachings to
arrive at the claimed invention.
Applying KSR example rationale (B), it would have been prima facie obvious to extract the structure taught by Coates and substitute instant R1 is a branched alkyl-aryl, such as 2,2-methylphenylethane, and instant R2 is methyl, as taught by Sookraj. A person skilled in the art would be motivated to do so because both compounds are used as catalysts in the carbonylation of epoxides. Therefore, claims 1-6, 9, 13 would be obvious to a person skilled in the art at the time.
Conclusion
Claims 1-6, 9, 13 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLA MARIA BAUER whose telephone number is (703)756-1269. The examiner can normally be reached Monday-Friday 7:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
