DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 10, 2026 has been entered.
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 1, 3, 5-8, and 10-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not teach that the high-crystalline region ratio can be 10%-30%, as stated in the advisory action. There is support for the ratio being 10% or less, but the range that is above 10% and 30% or less is not disclosed
Claims 1, 3, 5-8, and 10-14 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 the high-crystalline region ratio being 10%, does not reasonably provide enablement for the high-crystalline region ratio being above 10% to 30%. 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 polyethylene of claim 1 is limited by measured properties of the ethylene homopolymer, such as the high-crystalline region ratio on a temperature rising elution fractionation graph, which is defined as the percentage value obtained by dividing a graph area of the high-crystalline region at an elution temperature of 105 °C or higher by a total graph area. The nature of the invention is an ethylene homopolymer and a method of making the polymer with metallocene compounds. The polymer itself is not defined by specific structural features but by physical/chemical properties. The state of the prior art is such that polyethylenes are known to be made with similar metallocene compounds (see Kim et al. and Park et al.), but the claimed physical/chemical properties are not necessarily measured by the prior art in the same way as claimed. It would be outside the scope of the level of one of ordinary skill in the art to produce a ethylene homopolymer having the same properties as claimed and enabled in the specification, yet having a high-crystalline region ratio outside the range disclosed in the specification, i.e. above 10% to 30% since a person having ordinary skill in the art would assume that changing variables to increase the high-crystalline region ratio would change the other claimed properties as well. Therefore, there would need to be a large quantity of experimentation performed to reach an ethylene homopolymer having the properties of claim 1, if it is even possible. The inventors do not provide direction for having the high-crystalline region ratio in the range of above 10%-30% since it is new matter and none of the working examples disclose the ratio in this range.
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 8 and 10-13 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.
In claim 8, the amended structures of chemical formula 1-1 and chemical formula 1-3 are so blurry that the letters representing moieties, the subscripts, and superscripts of the moieties are unclear. It is not known which “R” is R1-R8, R’ or R’’, what the subscripts of the “X” moieties are, and it appears some of the moieties may be “B”, “S” or “P”.
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.
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, 3, 5-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2016/0280822) in view of Park et al. (EP 3 372 620).
Regarding claims 1 and 5: Kim et al. teaches a polyethylene (para. 19) having a MFR5 measured at 190 °C and 5 kg is 0.1-5 (para. 29), and a melt flow ratio MFR 21.6/MFR5 of 10-200 (para. 34), which overlap with the claimed ranges. Kim et al. teaches a MFR2.16 of 0.1-5 (para. 19). In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping properties and would have been motivated to do so since Kim et al. teaches they are acceptable to achieve the disclosed invention.
Not disclosed is an ethylene homopolymer. However, Park et al. teaches a homopolymer (para. 75). Kim et al. and Park et al. are analogous art since they are both concerned with the same field of endeavor, namely methods of making polyethylene with more than one metallocene catalyst. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use a homopolymer of ethylene as in Park et al. and would have been motivated to do so when the properties of a homopolymer of polyethylene were desired.
Not disclosed is the claimed density. However, Park et al. teaches a density of 0.930 to 0.960 g/cm3 (para. 81). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to make the polyethylene of Kim et al. with the density of Park et al. and would have been motivated to do so based on the desired product that the polyethylene is to become.
While Kim et al. does not teach the high-crystalline region ratio of 10% as claimed, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Kim et al. teaches the basic method of making the polyethylene (see method claims below) and therefore a person having ordinary skill in the art would expect the properties of those compositions to be substantially similar.
Regarding claim 3: Kim et al. teaches a MFR2.16 of 0.1-5 (para. 19).
Regarding claim 6: Kim et al. teaches a molecular weight distribution of 2-30 (para. 16).
Regarding claim 7: Kim et al. teaches the weight average molecular weight is 10,000-400,000 (para. 15).
Regarding claim 8: Kim et al. teaches a process for preparing the polyethylene comprising polymerizing ethylene with two metallocene compounds (para. 40). One compound has the structure
PNG
media_image1.png
184
418
media_image1.png
Greyscale
(page 10), which reads on the claimed chemical formula 1-1 where M1 is Zr, X1 and X2 are chlorine, two substituents are connected with each other to form an aromatic ring, and one of R1 to R8 is –(CH2)n-OR where R is a C4 branched alkyl and n is 6. The other metallocene can be
PNG
media_image2.png
438
418
media_image2.png
Greyscale
(page 9), which overlaps the claimed chemical formula 2, other than a missing methyl group attached between the nitrogen atom and the aryl group. However, a prima facie case of obviousness exists when chemical compounds have very close structural similarities and similar utilities (MPEP 2144.09 I).
Not disclosed is a C1-6 haloalkyl moiety. However, Park et al. teaches the catalyst
PNG
media_image3.png
392
422
media_image3.png
Greyscale
(para. 45). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the catalyst with the perfluoroalkyl groups and would have been motivated to do so since it is an electron withdrawing group.
Kim et al. does not teach the weight ratio of the metallocene compounds. However, Park et al. teaches a similar process where the amount of the metallocene catalysts are optimized for the properties needed (para. 46). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to optimize the ratio of metallocenes in Kim et al. as in Park et al. and would have been motivated to do so in order to achieve the desired properties.
Regarding claim 10: Kim et al. teaches
PNG
media_image4.png
204
396
media_image4.png
Greyscale
(pg. 10).
Regarding claim 11: Kim et al. teaches the metallocene with one moiety having the structure
PNG
media_image5.png
210
332
media_image5.png
Greyscale
and the other moiety have the structure
PNG
media_image6.png
178
300
media_image6.png
Greyscale
(para. 49).
Regarding claim 12: Kim et al. teaches the basic claimed process as set forth above. Not disclosed is a C1-6 haloalkyl moiety. However, Park et al. teaches the catalyst
PNG
media_image3.png
392
422
media_image3.png
Greyscale
(para. 45). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the catalyst with the perfluoroalkyl groups and would have been motivated to do so since it is an electron withdrawing group.
Regarding claim 13: Kim et al. teaches hydrogen gas input from 55-177 ppm (table 1), which overlaps the claimed range.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2016/0280822) in view of Park et al. (EP 3 372 620) as applied to claim 1 set forth above and in view of Laakso et al. (WO 2008/027757).
Regarding claim 14: Kim et al. teaches the basic claimed polyethylene as set forth above. Not disclosed is the chlorinated polyethylene or the latent properties. However, Laakso et al. teaches a chlorinated polyethylene (pg. 3 lines 30-35) having a Mooney viscosity of 51.7-73.5 (table 11) and a heat of fusion of less than 0.2 cal/gram (claim 20), which is 0.84 J/g. While the hardness is not disclosed, this is a latent property of the polymer. Kim et al. and Laakso et al. are analogous art since they are both concerned with the same field of endeavor, namely polyethylene compositions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to chlorinate the polyethylene of Kim et al. as in Park et al. to arrive at the claimed properties and would have been motivated to do so to reduce flammability.
Response to Arguments
Applicant's arguments filed January 17, 2026 have been fully considered but they are not persuasive.
A) Applicant’s argument that Park et al. does not teach the first metallocene compound of claim 8 since now it is non-bridged is not persuasive. This feature is disclosed by Kim et al. Further, Park et al. teaches that it is known in the art to optimize the ratio of the metallocene catalysts when making the polymers in order to achieve a product with the properties desired. Therefore, even though Park et al. teaches a bridged compound and Kim et al. teaches a non-bridged compound, the metallocene compounds are so structurally similar that a person having ordinary skill in the art would recognize from the teaching of Park et al. that the ratio of the compounds can be changed in order to achieve the desired properties.
B) Applicant’s argument that Kim et al. does not teach the haloalkyl substituent is not persuasive since Park et al. teaches this feature.
C) Applicant’s argument that unexpected results are shown in the present specification is not persuasive. The evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d)). In this case, the scope of the claims is any ethylene homopolymer having the listed properties. However, the inventive examples are only directed to three polyethylenes using one specific metallocene catalyst, the only variation being three different hydrogen input amounts. Therefore, the three working examples are not commensurate in scope with the breadth of claim 1.
D) Applicant’s argument that the high-crystallinity region is not an inherent property is not persuasive. While the references do not directly teach the property, since all of the components are present in the composition, and the process of making the polymer is substantially similar to the process in the prior art, it is implicit that the composition would have the property. If it is applicants’ position that this would not be the case: (1) evidence would need to be presented to support applicants’ position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain a composition with the property. Specifically, the specification does not teach how to form an ethylene homopolymer with the crystallinity ratio of greater than 10% to 30%.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767