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 .
Applicants’ Preliminary Amendment, filed on June 27, 2024, has been made of record and entered. The Specification has been amended to add a cross-reference to related applications.
No claims have been canceled or added; claims 1-8 are presently pending in this application.
Specification
The disclosure is objected to because of the following informalities:
The Specification is objected to for lacking definition for (a) the acronym “TOF”; see, for example, paragraph [0012] of Applicants’ Specification, and (b) “-Cy”; see, for example, paragraph [0011] of Applicants’ Specification.
In paragraph [0011] of Applicants’ Specification, it appears that “PNP-R2” should be amended to recite “PNP-R2”.
Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities:
In claim 4, it appears that “PNP-R2” should be amended to recite “PNP-R2”.
Appropriate correction is required.
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 4, 5, and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 is indefinite for lacking definition for “-Cy”. Claim 5 is included in this rejection, as it depends from claim 4 and does not cure the deficiencies therein.
Claim 7 is indefinite for lacking definition for the acronym “TOF”.
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.
Claim Rejections - 35 USC § 103
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 1-4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over “A Bioinspired Multicomponent Catalytic System for Converting Carbon Dioxide into Methanol Autocatalytically,” by Thomas M. Rayder et al. (hereinafter “Rayder et al.”).
Regarding claims 1-4, Rayder et al. teach a multicomponent catalyst system comprising a transition metal complex encapsulated in a metal-organic framework, wherein the metal-organic framework is exemplified by UiO-66, and the transition metal complex is exemplified by (tBuPNP)Ru(CO)HCl and (tBuPNN)Ru(CO)HCl (“phosphinamine ligand”, “salt”, “Bis(diaryl/dialkylphosphino)amine ligand”). See Table 1, Figure 3A, and pages 1745, 1746, 1748, and the Supplemental Information of Rayder et al., where Catalysts “1@UiO-66” and “2@UiO-66” correspond to Applicants’ catalyst.
Regarding claims 7 and 8, is it considered that because Rayder et al. teach a catalyst structurally reading upon that instantly claimed, the skilled artisan would have been motivated to reasonably expect said catalyst to exhibit a comparable reactivity at a TOF higher than 40000 (mol ethylene)/(mol Ni-h) as well as a comparable selectivity of greater than 99% 1-butene product, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01(II).
Rayder et al. do not teach or suggest the limitations of Applicants’ claims regarding the catalyst being “for ethylene dimerization”, as recited in claim 1. However, the limitation “for ethylene dimerization” is considered a statement of intended use.
Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Rayder et al. disclose a catalyst corresponding to that instantly claimed, it is clear that the catalyst disclosed in Rayder et al. would be capable of performing the intended use, i.e., for ethylene dimerization, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Allowable Subject Matter
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Neither Rayder et al. nor the cited references of record teach or suggest the limitations of these claims, regarding the presence of nickel (Ni) or a nickel salt in the catalyst.
Exemplary prior art includes:
Breuil et al. (U. S. Patent Publication No. 2016/0369798), which teaches a catalytic composition comprising a nickel precursor and a diphosphinamine ligand (paragraphs [0009]-[0021]), but does not teach or suggest the presence of a metal-organic framework. Additionally, the diphosphinamine ligands disclosed in this reference teach away from the ligands recited in Applicants’ claims 3-5.
Breuil et al. (U. S. Patent Publication No. 2016/0152647), which teaches a nickel-based complex having the formula
PNG
media_image1.png
414
698
media_image1.png
Greyscale
,
where R1 and R’1 may be identical or different, and may or may not be linked, are selected from non-aromatic groups, R2 and R’2 may be identical or different, and may or may not be linked, are selected from aromatic groups, R3 may be hydrogen; see paragraphs [0008]-[0018]. Like Breuil et al. ‘798 above, this reference does not teach or suggest the presence of a metal-organic framework; additionally, the diphosphinamine ligands disclosed in this reference teach away from the ligands recited in Applicants’ claims 3-5.
Li et al. (CN 115703850), which teaches a [P,N,P] type non-metallocene catalyst, having the general formula
PNG
media_image2.png
422
611
media_image2.png
Greyscale
,
wherein R1, R2 and R3 are respectively and independently selected from C1-C20 alkyl, C3-C20 cycloalkyl, C6-C40 aryl, C6-C40 halogenated aryl, C1-C20 alkoxy, C3-C20 naphthenic oxygen, C6-C40 aryloxy or C6-C40 N-heteroaryl; x is halogen, an alkyl group with 1 to 15 carbon atoms, a cycloalkyl group with 3 to 15 carbon atoms or a heteroaryl group with 5 to 20 carbon atoms; m represents transition metal and is selected from one of IIIB, IVB, VB, VIB and VIII; n is a positive integer greater than or equal to 1 and less than or equal to 3; m is a positive integer equal to or less than 5; and m is not less than n.
Li et al. do not teach or suggest the presence of a metal-organic framework. Additionally, this reference was published on February 17, 2023, which is after the effectively filed and provisional filing dates of the instant application (December 28, 2022, and December 29, 2021, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung, can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Patricia L. Hailey/Primary Examiner, Art Unit 1732 September 21, 2026
