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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 37-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a ruthenium phosphinimine complex having formula I or II, does not reasonably provide enablement for any ruthenium phosphinimine complex. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The claims are directed to methods employing any ruthenium phosphinimine complex for catalyzing olefin metathesis reactions. However, the specification describes only a limited class of ruthenium phosphinimine complexes having specific structural features, particularly those represented by Formula (I) and (II) and variations thereof (see, e.g., Spec. pages 5-6) . The specification further defines substituent groups (R₁–R₄) and ligand environments within this structural framework (Spec. pages 5-6) , and provides specific structural parameters such as Ru–N and Ru–P bond lengths associated with these disclosed complexes (Spec. pages 6-7). However, the specification does not disclose or suggest the full scope of all possible ruthenium phosphinimine complexes encompassed by the claims. In particular, the specification does not provide representative species or structural guidance for alternative ligand architectures beyond those of Formula (I)/(II), nor does it describe broader coordination environments or variations in ligand frameworks outside the disclosed class. Given the structural sensitivity and unpredictability of organometallic catalysts, one of ordinary skill in the art would not recognize that Applicant was in possession of the full scope of all ruthenium phosphinimine complexes capable of catalyzing olefin metathesis at the time of filing. Accordingly, the specification does not reasonably convey possession of the claimed invention.
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 (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 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.
Claim 37 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN102875605A.
CN102875605A discloses ruthenium carbene complexes comprising phosphinimine ligands having structures of the form Ru(=CHAr)Cl₂L(R₁P=NR₂), wherein the phosphinimine ligand (P=NR) is coordinated to the ruthenium center, and the complex further includes an alkylidene ligand and additional ligands coordinated to ruthenium (see CN102875605A, Description and structural formula). CN102875605A further teaches using such ruthenium phosphinimine complexes as catalysts in olefin metathesis reactions, including ring-closing metathesis (RCM), ring-opening metathesis polymerization (ROMP), and related reactions, wherein olefin reactants are contacted with the catalyst to produce metathesis products (see CN102875605A, Description and Examples) .
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.
Claims 1-16 and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over CN102875605A.
CN102875605A teaches ruthenium alkylidene complexes comprising phosphinimine ligands coordinated to a ruthenium center, along with anionic ligands (e.g., halides) and neutral donor ligands, wherein such complexes are used as catalysts for olefin metathesis reactions (see CN102875605A, Description and structural formula) .
However, CN102875605A does not explicitly disclose the specific ligand environment recited in claim 1, including the particular arrangement and substituent scope corresponding to Formula (I) and (II), such as the presence of two phosphine ligands (PR₂) and the full scope of substituent definitions recited in the claims.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ruthenium phosphinimine complexes of CN102875605A to include variations in ligand substituents and donor ligands, including incorporation or substitution of phosphine ligands and variation of substituent groups (R₁–R₄), because ligand identity and substituent variation in ruthenium metathesis catalysts are known to influence catalytic properties and are routinely adjusted to optimize activity, stability, and selectivity. Such modifications represent routine optimization of known catalyst systems using known ligand types and substituent variations within the level of ordinary skill in the art.
Claims 3–9: The recited bond lengths (Ru–N, Ru–P, P–N, Ru–C) are inherent structural properties of the resulting complexes once formed, and it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that such parameters would fall within the claimed ranges (see Spec. ¶¶ [0030]–[0032]) .
Claim 10: It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to omit specific ligands such as N-heterocyclic carbene or phosphine ligands, because ligand identity in ruthenium metathesis catalysts is known to be variable and selectable depending on desired catalyst properties.
Claims 11–16: CN102875605A teaches contacting olefin reactants with ruthenium catalysts to perform metathesis reactions and produce different olefin products (see Description and Examples) , and reaction conditions, conversion, and selectivity would have been routinely optimized by one of ordinary skill in the art.
Claims 38-39
CN102875605A teaches ruthenium phosphinimine complexes used as catalysts in olefin metathesis reactions, wherein olefin reactants are contacted with the catalyst to produce metathesis products (see CN102875605A, Description and Examples) .
However, CN102875605A does not explicitly disclose that the resulting olefin products have a trans (E) or cis (Z) selectivity of at least about 50%, as recited in claims 38–39.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to achieve the recited E- or Z-selectivity of at least about 50%, because product stereoselectivity in olefin metathesis reactions is a result-effective variable that depends on catalyst structure and reaction conditions, including ligand environment, temperature, and reaction parameters. Optimizing such selectivity would have been within the level of ordinary skill in the art through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAM M NGUYEN whose telephone number is (571)272-1452. The examiner can normally be reached Mon - Frid.
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/TAM M NGUYEN/Primary Examiner, Art Unit 1771