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 Application
Claims 1, 5-7, 10-28 and 30-33 are pending. Claims 20-28 and 31-33 are withdrawn. Claims 1, 5-7, 10-19 and 30 are presented for examination.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 5-7, 10-19 and 30 have been considered but are moot because the new ground of rejection does not rely on any section of a reference cited in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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.
1. Claim(s) 1, 6 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matteson et al. (“Haloboranes”).
Regarding claims 1, 6 and 7, Matteson teaches a boron containing precursor which is (di-isopropylamino)dichloroborane (see compound 12 in Scheme 6 on page 187). Matteson teaches all the critical limitations of claims 1, 6 and 7; therefore, Matteson anticipates the claims.
2. Claim(s) 1, 5, 10, 12, 13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maringgele et al. (“Sterically Encumbered Monomeric Sec.Amino-(Halogeno)Hydroboranes and the Corresponding Dihalogeno- and Dihydroborane Precursors”).
I. Regarding claims 1 and 5, Maringgele teaches a boron containing precursor having the structure of Formula (I) where X is Cl, n is 1, R1 is a C1 alkyl group, and R2 is a C10 aryl group (see compound 2a, Table 1). Matteson teaches all the critical limitations of claims 1 and 5; therefore, Matteson anticipates the claims.
II. Regarding claims 10, 12, 13 and 15, Maringgele teaches a composition comprising: a boron precursor which has a structure where X is Cl, n is 1 and R1 and R2 are linked together to form a ring, wherein R1 and R2 are C3 to C6 alkyls and are not the same (see compound 16a, page 719) which has a boiling point of 87 ºC and note that this is formed in a solvent of carbon tetrachloride which has a boiling point of 77 ºC (see General Procedures on page 725). Maringgele teaches all the limitations of claims 10, 12, 13 and 15; therefore, Maringgele anticipates the claims.
3. Claim(s) 10, 14 and 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brotherton et al. (“Tetra-(amino)-diborons”).
Regarding claims 10, 14 and 16-19, Brotherton teaches a composition comprising: bis(dimethylamino)bromoborane (bp of 20-28 ºC) in a solvent of pentane (bp of 36 ºC), see the Experimental section. Brotherton teaches all the critical limitations of claims 10, 14 and 16-19; therefore, Brotherton anticipates the claims.
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.
4. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brotherton in view of Matteson.
Regarding claim 11, Brotherton teaches all the limitations of claim 10 (see above), wherein the composition comprises bis(dimethylamino)bromoborane (bp of 20-28 ºC) in a solvent, but fails to teach the solvent selected from the group as claimed in claim 11. However, Matteson teaches that diethyl ether (bp of 34.6 ºC) can be used as a solvent for amino(halo)boranes like dimethyl aminodichloroborane (Scheme 6). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Brotherton’s composition by substituting diethyl ether for pentane. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that pentane and diethyl ether have similar boiling points and Matteson teaches the use of diethyl ether for solvating similar haloboranes), and the predictable result of providing a composition.
5. Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brotherton.
Regarding claim 30, Brotherton teaches all the limitations of claim 10 (see above), including the compound being bis(dimethylamino)bromoborane (see above), but fails to teach the specific compounds as recited in claim 30. However, bis(ethylmethylamino)bromoborane is simply a homolog of bis(dimethylamino)bromoborane by the inclusion of an additional CH2 unit. The compounds are so similar as to expect identical properties in the composition. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Brotherton’s composition by substituting bis(ethylmethylamino)bromoborane for bis(dimethylamino)bromoborane. Note that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.). Furthermore, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c).
Conclusion
Claims 1, 5-7, 10-28 and 30-33 are pending.
Claims 20-28 and 31-33 are withdrawn.
Claims 1, 5-7, 10-19 and 30 are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 8, 2026Primary Examiner, Art Unit 1717
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