DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 06/09/2022. With entry of the concurrently filed preliminary amendment, claims 1-15 are currently pending and under examination herein.
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 .
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 06/09/2022, 08/30/2023 and 12/27/2023 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Objection – Specification
The disclosure is objected to because of the following informalities:
Referring to page 47, variable “M” in the phrase “M may be an integer of 2 or more;” should be amended to –m-- (lower case) to match the corresponding subscript in antecedent Chemical Formula 9.
Appropriate correction of the specification is required.
Claim Rejections – 35 U.S.C. 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 1-15 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.
Regarding Claims 1-5 and 15, the term “pellet-type” (all occurrences) creates an indefiniteness issue because the metes and bounds of the term are not ascertainable with reasonable certainty by resort to the antecedent disclosure. Thus, the appending of “-type” to the otherwise definite term “pellet” so extends the scope of the term as to render it objectionably indefinite. See MPEP § 2173.05(b)(III)(E). Amending said claims to recite –form-- in lieu of “-type” (i.e., pellet-form polyethylene) is suggested as a way of addressing the indefiniteness issue.
Claims 6-14 depend ultimately from claim 1 such that the reasoning used to reject the base claim above will be relied upon in rejecting such dependent claims.
Common Ownership Notice
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.
Claim Rejections – 35 U.S.C. 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.
Claims 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2022/0017667 A1) (relying on PCT filing date of 09/28/2020) in view of Cottle et al (US 2021/0009792 A1).
Regarding Claims 1, 2, 5 and 15, reference to Kim et al is drawn to ethylene/1-hexene copolymer having excellent long-term physical properties and processability, and to a pipe [for claim 15] manufactured by using the ethylene/1-hexene copolymer (¶¶ [0010]-[0011]). The ethylene/1-hexene copolymer is generally described as having certain prescribed properties to include a bimodal molecular weight distribution upon GPC analysis and a density of 0.94 g/cm3 to 0.95 g/cm3 (¶¶ [0050], [0061]). In concrete embodiments (see ¶¶ [0198] (Table 1) and [0218] (Table 2), Ex. 1, Ex. 2), Kim et al report the results of preparing ethylene/1-hexene copolymers under conditions as described in Examples 1 and 2 (¶¶ [0189]-[0192]). The described results indicate the prepared copolymers satisfy claimed condition (a2) of claim 1 (density: 0.945, 0.946 g/cc) and claimed conditions (b1) (melt flow ratio, MFRR: 104, 101) and (b2) (polydispersity index, PDI = 12.7, 14.7) of claim 2. However, Kim et al is silent as to remaining claimed conditions (a1) and (a3) – (a5) of claim 1, and does not disclose a pellet-type polyethylene resin composition comprising either of the described ethylene/1-hexene copolymers.
However, while not directly disclosing the aforementioned claimed conditions, Kim et al in Examples 1 and 2 nonetheless describe preparing the respective copolymers by essentially the same method as recited in present claim 5.
Thus, in both examples an ethylene/1-hexene (1-C6) copolymer was prepared under the conditions described in Table 1 of Kim et al using the hybrid supported metallocene catalyst (A) prepared in Preparation Example 1 (¶¶ [0190], [0192]). According to Preparation Example 1, the hybrid supported metallocene catalyst (A) comprises silica as support for a first metallocene compound (prepared in Synthesis Example 1) and a second metallocene compound (prepared in Synthesis Example 2), wherein a molar ratio of the first metallocene compound and the second metallocene compound falls within the claimed range for molar ratio of the first transition metal compound and the second transition metal compound, namely 1:1.3 (¶ [0184]). Further, the first metallocene compound corresponds to Chemical Formula 1 in claim 5 where: M1 is a Group 4 transition metal (viz., Zr); Cp1 and Cp2 are the same cyclopentadienyl unsubstituted with a C1-20 hydrocarbyl group; Ra and Rb are the same C2-20 alkoxyalkyl group; Z1 is halogen (viz., Cl) and n is 1 (¶ [0162]: First Metallocene Compound (1)); and the second metallocene compound corresponds to Chemical Formula 3 in claim 5 where: M3 is Ti; X3 and X4 are halogen (viz., Cl); Cp3 is a ligand represented by Chemical Formula 4c (where R1 to R4 are each hydrogen and R7 and R8 are each a C1-30 hydrocarbyl group (viz., methyl); Z is -NR10- (where R10 is a C1-20 hydrocarbyl group); T is
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where T1 is Si; Y1 is a C1-30 hydrocarbyl group (viz., methyl) and Y2 is a C2-30 hydrocarbyloxyhydrocarbyl group (¶ [0181]: Second Metallocene Compound (2)).
In addition, in both examples the ethylene monomer was supplied at a rate of 10 kg/hr and the 1-hexene (1-C6) comonomer was supplied at a rate of 7.0 ml/min (Ex. 1), or 420 ml/hr. As 1-hexene has a density of 0.678 g/ml (25oC), the 1-C6 supply rate equates to 284.76 g/hr. (420 ml/hr. · 0.678 g/ml), or 0.28476 kg/hr.; hence, the amount of 1-C6 introduced per 100 parts by weight of the ethylene monomer may be expressed as ((0.28476 kg/hr.)/10 kg/hr.) · 100 = 2.8476, a value well within the claimed range for amount of 1-hexene comonomer introduced per 100 parts by weight of the ethylene monomer.
Based on the above analysis, it is clear that the ethylene/1-hexene copolymer of the claimed pellet-type polyethylene composition and the ethylene/1-hexene copolymers described in at least Examples 1 and 2 of Kim et al are prepared by substantially identical methods, thus giving rise to an inference that the undisclosed conditions (a1) and (a3) – (a5) of present claim 1 are inherently satisfied by either of the described copolymers. Where, as here, there is sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Further as to claimed feature of pellet-type polyethylene resin composition, Kim et al describe the ethylene/1-hexene copolymer of their invention as having excellent processability and extrusion property, making it preferably applicable to various pipe applications (¶ [0158]). In undertaking such preferred application, those of ordinary skill would have been moved to compound the copolymer with stabilizing additives in advance of extrusion in order to inhibit degradation phenomena such as oxidative degradation, prior to extrusion and pelletizing of the extrudate. Indeed, in the same field of endeavor, Cottle et al teach to form a bimodal high-density polyethylene composition through compounding with various stabilizing additives, followed by extruding the resulting resin composition in a form of pellets, suitable for use in manufacturing pipes (see ¶¶ [0002], [0058]-[0059], [0092]-[0093]). It would have been obvious to one of ordinary skill in the art at the time of effective filing to utilize the ethylene/1-hexene copolymer of Example 1 or 2 of Kim et al to prepare a resin composition, and then extrude the resin composition in the form of pellets as per Cottle et al, motivated by a reasonable expectation of obtaining pelletized resin displaying equivalent utility in pipe-manufacturing applications.
Regarding Claims 3, 4 and 13, Kim et al in view of Cottle et al render obvious the pellet-type polyethylene resin composition of claim 1 as discussed above. Further, Cottle et al teach a polyethylene composition comprising an antioxidant in an amount of 0.01% by weight to 1% by weight with respect to a total weight of the polyethylene composition. In particular, Cottle et al teach (¶¶ [0091]-[0092]) incorporating in powder particles comprising an ethylene/1-hexene copolymer additives including at least one thermal antioxidant like Irganox 1010 in an amount between 500 and 2500 ppm (i.e., 0.05% by wt. to 0.25% by wt.) [for claim 3]. Irganox 1010 is a well-known phenolic antioxidant, and Cottle et al additionally teach that the additives included at least one acid neutralizer like calcium stearate or zinc stearate in an amount between 500 and 2000 ppm (¶ [0092]). The respective concentration ranges prescribed by Cottle et al for Ca/Zn stearate and Irganox 1010 encompass weight ratios within the claimed range of 1:1 to 1:2 for an organometallic antioxidant and a phenolic antioxidant [for clam 4]. In addition, Cottle et al teach that an antioxidant is introduced in an amount of 0.01% by weight to 1% by weight with respect to a total weight of the resin composition (i.e., between 500 and 2500 ppm Irganox 1010) during preparation of the resin composition including the ethylene/1-hexene copolymer (¶¶ [0091]-[0093]) [for claim 13].
Regarding Claim 6, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. Kim et al further disclose (¶ [0162]) the method wherein M1 is Zr, Cp1 and Cp2 are each cyclopentadienyl unsubstituted with a C1-20 alkyls, Ra and Rb are each C1-6 alkyl substituted with C1-6 alkoxy, and Z1 is each halogen.
Regarding Claim 7, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. Kim et al further disclose (¶ [0162]) the method wherein the first transition metal compound comprises a compound represented by disclosed compound (1), which corresponds to the fifth-recited structural formula in said claim.
Regarding Claims 8 and 9, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. Neither reference discloses the method wherein the first transition metal compound is a compound represented by Chemical Formula 2 in claim 5. However, while claims 8-9 further limit the scope of Chemical Formula 2, neither claim positively requires selection of a compound represented by Chemical Formula 2 as the first transition metal compound. In other words, the claims are open to selection of a compound represented by Chemical Formula 1 as the first transition metal compound, to the exclusion of any compound represented by Chemical Formula 2. In consequence, embodiments within the ambit of each claim are rendered obvious by Kim et al in view of Cottle et al, on the reasoning set forth above with respect to parent claim 5/1.
Regarding Claims 10 and 11, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. Kim et al further disclose (¶ [0162]) the method wherein the compound represented by Chemical Formula 3 comprises a compound represented by disclosed compound (2), which corresponds to the first-recited structural formula in claim 11 and is a species under Chemical Formula 5 in claim 10 (where: M3 is Ti, X3 and X4 are halogen, R7 and R8 are each a C1-10 hydrocarbyl group, R1 to R4 are each hydrogen, T1 is Si, Y1 is a C1-30 hydrocarbyl group and Y2 is a C2-30 hydrocarbyloxyhydrocarbyl group).
Regarding Claim 12, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. Kim et al further disclose a Preparation Example 1 wherein the input amounts of hydrogen and 1-C6 comonomer are 1.73 g/hr. and 7.0 ml/min, respectively, and a supply of ethylene is 10.0 kg/hr. (= 10,000 g/hr.) (¶ [0198] (Table 1): Ex. 1). The input amount of 7.0 ml/min. of 1-C6 equates to 284.76 g/hr. as detailed above with respect to claim 5 (see page 6 supra). Thus, the total weight of the ethylene monomer and the 1-hexene comonomer is 10,285 g/hr. (10,000 g/hr. + 285 g/hr.) and the weight percent of hydrogen with respect to total weight of (monomer + comonomer) is (1.73 (g/hr.)/10,285 (g/hr.)) · 100 = 0.0168 wt. %, which converts to 168 ppm (0.0168 ·10,000), a value well within the claimed range (120 ppm to 2500 ppm) for amount of hydrogen gas introduced with respect to total weight of the ethylene monomer and the 1-hexene comonomer during the polymerization reaction.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al in view of Cottle et al as applied to claim 5 above, and further in view of Helland et al (WO 2013/113797 A1).
Regarding Claim 14, Kim et al in view of Cottle et al render obvious the method of claim 5 as discussed above. While neither reference directly discloses wherein the extrusion is performed at a pellet die temperature of 150oC to 190oC. as claimed, it is nonetheless common practice in the art relating to manufacture of HDPE pipes to extrude a multimodal polyethylene (HDPE) while operating at an extruder temperature profile where the pellet die temperature is 180oC; i.e., 180-200x4-180(die) as taught by Helland et al (see page 47, lines 16-20; see also page 9, lines 1-8 and 23-32). It would have been obvious to one of ordinary skill in the art at the time of effective filing to adopt a pellet die temperature of 180oC as per Helland et al when extruding a polyethylene composition comprising the ethylene/1-hexene copolymer of Example 1 or 2 of Kim et al into a pellet-type polyethylene composition as per Cottle et al, based on a reasonable expectation of obtaining pelletized resins displaying equivalent utility in the pipe applications contemplated by Kim et al (e.g., large-diameter pipes; see ¶ [0158]).
Foreign Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the above rejections because a verified translation of said application 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.
Conclusion
Claims 1-15 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/03-09-26
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