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.
New Examiner
This application has been transferred to a new examiner, Nicholas Piro of Art Unit 1738, who can be reached at 571-272-6344.
Response to Arguments
Applicant’s arguments, filed 10 June 2026, with respect to claims 1, 4, 5, 7, and 15-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
Claim 17 recites a further limitation on “the alpha-olefin”. The only recitation of an alpha-olefin in claim 17 of claim 1 is in the preamble to claim 1, where the transition metal compound is described as “for preparing polyethylene copolymerized with an alpha-olefin,” which represents an intended use. Claim 1 goes on to place limitations on the transition metal compound based upon “an ethylene copolymerization catalyst activity” but there is no requirement in the body of the claim that this be a catalyst activity with respect to a reaction between ethylene and the alpha-olefin of the preamble. Therefore, the further limitation of claim 17 is interpreted as a limitation on the intended use, and not as a limitation on the reactant in the copolymerization reaction for which the transition metal compound displays the recited levels of activity.
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 1 and 15-18 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 1 recites the limitation "the catalyst" in line 2 of page 2 of the claims filed 10 June 2026. There is insufficient antecedent basis for this limitation in the claim.
Claims 15-18 depend upon claim 1 and are likewise rejected.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 15-18 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lambic et al. (WO 2021/0344459 A1; published 25 February 2021; effectively filed 22 August 2019; foreign document #1 on the IDS filed 1 June 2023).
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome these rejections because a translation of said applications has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
It is additionally noted that while translations of the certified copies may successfully overcome the rejection under 102(a)(1), the rejection under 102(a)(2) would remain, as the effective filing data of Lambic pre-dates the earliest foreign priority claim.
Regarding claim 1, Lambic discloses a transition metal compound for preparing polyethylene copolymerized with ethylene and an alpha-olefin ([0138]-[0140]) represented by the following formula (compound 17 on p. 18):
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180
166
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which is the same compound represented by the formula
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226
162
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in the instant claim and fulfils all the limitations on A, M, R, X, and Q recited in the claim.
The compound taught by Lambic is identical to Synthesis Example 1 of the instant disclosure. Because a chemical composition and its properties are inseparable, 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). The instant specification reveals that the compound disclosed by Lambic has an ethylene copolymerization catalyst activity of 4.5 kg PE/g.cat.hr and that the polyethylene prepared in the presence of the catalyst has a number of short chain branches (SCB) of 4.5 (Table 1), each of which lie in the instantly claimed ranges. Lambic therefore anticipates claim 1.
Regarding claims 15 and 16, Lambic discloses the transition metal compound
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226
162
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, which has an ethylene copolymerization activity of 4.5 kg PE/g.cat.hr, as evidenced by Table 1 of the instant specification. This compound therefore meets the limitations of claims 15 and 16.
Regarding claim 17, Lambic discloses the compound of claim 1, which can be used for preparing polyethylene copolymerized with 1-hexene, as suggested by Lambic ([0139]) and evidenced by the instant specification (p. 69, ¶ 1 and Table 1). It is also noted that it is the reaction between ethylene and 1-hexene that has the activity and generates the polymers with the SCB values recited in the rejection of claim 1. Therefore, even if the claim were interpreted as limiting the activity in the reaction with the recited alpha olefins (see Claim Interpretation), the compound disclosed by Lambic would also anticipate the claim.
Regarding claim 18, Lambic discloses the compound of claim 1, where the polyethylene has a with average molecular weight of 530000 g/mol and a melting point of 123.5°C, as evidenced by Table 1 of the instant specification.
Conclusion
The new grounds of rejection presented in this action were not necessitated by Applicant’s amendments. Accordingly, this action is NOT FINAL.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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