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 .
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.
Status of Claims
Claims 1, 4-5, 7 and 15-18 are currently under examination. Claims 8-14 are withdrawn from consideration. Claims 2-3 and 6 have been cancelled. Claims 1 and 18 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Okumura et al. (WO 2005/058916 A2) with respect to claims 1, 4-5, 7 and 15-18 amended as set forth below.
Amended Grounds of Rejections
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, 4-5, 7 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura et al. (WO 2005/058916 A2).
Regarding claims 1 and 15-16, Okumura et al. teach an organometallic transition metal compounds of the formula (1) (pages 1-2):
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One example of the organometallic transition metal compound taught by Okumura et al. is a zirconium dichloride (1) having a structure as shown below (Example, page 39):
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The zirconium dichloride (1) taught by Okumura et al. corresponds to the instant claimed Chemical Formula 1 as shown above, A=Si, Q1=Q2=Me, M=Zr, X1=X2=Cl, R1=R2=p-iso-propyl-Ph groups, a phenyl substituted four carbon atoms branched alkyl groups, except the iso-propyl group a (four carbon atoms alkyl group) position 2 of the indene structure as pointed above. However, in the general Chemical Formula (1) above, Okumura et al. clearly teach the R5 group can be other C1-40 alkyl group including a methyl group.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the iso-propyl group with methyl group as an alternative alkyl group taught by Okumura et al. and would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Since the reference of Okumura et al. teaches the same transition metal compound as the instant claims, the physical properties of a composition comprising the same transition metal compound (i.e., exhibiting the copolymerization catalyst activity such that the polyethylene prepared in the presence of the catalyst has a number of short chain branches (SCB, content of branches having 2 to 7 carbon atoms per 1000 carbons) from 4.5 or more to 10.0 or less) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Since the reference of Okumura et al. teaches the same transition metal compound as the instant claims, an ethylene copolymerization catalyst activity of a composition comprising the same transition meta compound would expect to be capable of exhibiting the same catalyst activity used for ethylene copolymerization as per applicant claims 1 and 15-16. Therefore, they meet the claims limitations.
The phrase of "for preparing polyethylene copolymerization with ethylene and an alpha-olefin” recites in claim 1 is interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Okumura et al. teach the same composition as the instant claims, the transition metal catalyst would expect to be capable of performing the polyethylene copolymerization as per applicant claim 1. Therefore it meets the claim limitations.
Regarding claims 4-6, as discussed above, the zirconium dichloride (1) taught by Okumura et al. corresponds to the instant claimed Chemical Formula 1-1, wherein R1=R2=p-iso-propyl-Ph groups (R’ is independently selected from hydrogen and iso-propyl group) as the instant claims.
Regarding claim 7, as discussed above, the zirconium dichloride (1) taught by Okumura et al. reads on the instant claimed compound when the iso-propyl group is substituted with a methyl group as shown below:
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Regarding claim 17, as discussed above, the phrase of "for preparing polyethylene copolymerization with ethylene and an alpha-olefin” recites in claim 1 is interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Okumura et al. teach the same composition as the instant claims, the transition metal catalyst would expect to be capable of performing the polyethylene copolymerization of the alpha-olefin as per applicant claim 17. Therefore it meets the claim limitations.
Regarding claim 18, as discussed above, since the reference of Okumura et al. teaches the same transition metal compound as the instant claim and would expect to be capable of performing the polyethylene, the physical properties of the resulting polyethylene copolymer (i.e., an average molecular weight 400000 to 580000 g/mol., melting point from 117-128 oC) would necessarily follow as set forth in MPEP 2112.01(II).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 11/05/2025 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicant argued the Examiner has not provided any basis in fact and/or technical reasoning to reasonably support the determination that the claimed ethylene copolymerization catalyst activity would necessarily flow from any disclosures of Okumura.
The catalyst activity of a transition metal compound for copolymerizing ethylene with an alpha-olefin is caused by the difference between the methyl (Me) and iso-propyl (i-Pr) groups at the 2-position of a indene ligand, which is explained by the stericity around the metal (M), namely, zirconium. In the case of i-Pr, which has a high stericity around the metal, the insertion site becomes smaller, and this makes insertion of the bulky comonomer (e.g., 1-hexene) difficult. This slows down the overall monomer insertion-propagation cycle, ultimately resulting in decreased activity.
Okumura relates to a catalyst with an "iso-propyl (i-Pr)" substituent to improve the tacticity of polymer (PP, not PE) during propylene polymerization. In contrast, the present embodiment provides a catalyst compound having a structure with a "methyl (Me)" substituent to optimize the SCB of a polymer (PE, not PP) and enhance the catalytic activity during copolymerization of ethylene and alpha-olefins.
Additionally, the present specification demonstrated that the polyethylene copolymers in Examples 1-9, in which the transition metal compounds encompassed by Chemical Formula 1 as set forth in claim 1 exhibited (i) the catalyst activity of 4.0 kg PE/g cat hour or more and 40 kg PE/g cat hour or less and (ii) the short chain branch (SCB) content within the claimed range of 4.5 or more to 10.0 or less. See Examples 1 to 9 and Table 1 of the present specification (Remarks, pages 9-12).
The Office respectfully disagrees. As discussion above, Okumura et al. teach an organometallic transition metal compounds of the formula (1) (pages 1-2):
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One example of the organometallic transition metal compound taught by Okumura et al. is a zirconium dichloride (1) having a structure as shown below (Example, page 39):
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The zirconium dichloride (1) taught by Okumura et al. corresponds to the instant claimed Chemical Formula 1 as shown above, A=Si, Q1=Q2=Me, M=Zr, X1=X2=Cl, R1=R2=p-iso-propyl-Ph groups, a phenyl substituted four carbon atoms branched alkyl groups, except the iso-propyl group a (four carbon atoms alkyl group) position 2 of the indene structure as pointed above. However, in the general Chemical Formula (1) above, Okumura et al. clearly teach the R5 group can be other C1-40 alkyl group including a methyl group.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the iso-propyl group with methyl group as an alternative alkyl group taught by Okumura et al. and would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Since the reference of Okumura et al. teaches the same transition metal compound as the instant claims, the physical properties of a composition comprising the same transition metal compound (i.e., exhibiting the copolymerization catalyst activity such that the polyethylene prepared in the presence of the catalyst has a number of short chain branches (SCB, content of branches having 2 to 7 carbon atoms per 1000 carbons) from 4.5 or more to 10.0 or less) would necessarily follow as set forth in MPEP 2112.01(II).
Since the reference of Okumura et al. teaches the same transition metal compound as the instant claims, an ethylene copolymerization catalyst activity of a composition comprising the same transition meta compound would expect to be capable of exhibiting the same catalyst activity used for ethylene copolymerization as per applicant claims 1 and 15-16. Therefore, they meet the claims limitations.
The phrase of "for preparing polyethylene copolymerization with ethylene and an alpha-olefin” recites in claim 1 is interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Okumura et al. teach the same composition as the instant claims, the transition metal catalyst would expect to be capable of performing the polyethylene copolymerization as per applicant claim 1. Therefore it meets the claim limitations.
Also, regarding the instant claim 7, the zirconium dichloride (1) taught by Okumura et al. reads on the instant claimed compound when the iso-propyl group is substituted with a methyl group, as discussed above, as shown below:
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The phrase of "for preparing polyethylene copolymerization with ethylene and an alpha-olefin” recites in claim 1 is interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Okumura et al. teach the same composition as the instant claims, the transition metal catalyst would expect to be capable of performing the polyethylene copolymerization of alpha-olefin as per applicant claims 1 and 15-17. Therefore it meets the claim limitations.
Since the reference of Okumura et al. teaches the same transition metal compound as the instant claim and would expect to be capable of performing the polyethylene, the physical properties of the resulting polyethylene copolymer (i.e., an average molecular weight 400000 to 580000 g/mol., melting point from 117-128 oC, SCB content) would necessarily follow as set forth in MPEP 2112.01(II).
Once the Examiner provides a rationale tending to show that the claimed product (the instant claimed transition metal compound) appears to be the same or similar to that of the prior art, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product, and to show an unobvious different of polyethylene copolymerization and the resulting co-polymer.
Applicant’s arguments against the compound having Chemical Formula (I) taught by Okumura et al. are not found persuasive. Clearly, the above office action was not based only on the compound having Chemical Formula (I).
As discussed above, the Office suggested it would have been obvious to one of ordinary skill in the art at the time the invention was filed to substitute the iso-propyl group with methyl group as an alternative alkyl group taught by Okumura et al. and would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
For example, regarding the instant claim 7, the zirconium dichloride (1) taught by Okumura et al. reads on the instant claimed compound when the iso-propyl group is substituted with a methyl group, as discussed above, as shown below:
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The invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
As such, the rejection of claim 1 as set forth in the office action set forth above, is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).