DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Feb. 17, 2026 has been entered.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double patenting rejections over five U.S. Patents are set forth below.
Claims 1-5, 8-10, 12-16, 23, 32, 34-37, and 39-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-50 of U.S. Patent No. 11,203,654 B2 in view of Applied Surface Science 2006, 252, 6280-6288 (herein “Mitra”), or in the alternative, over claims 1-50 of U.S. Patent No. 11,203,654 B2 in view of Ullmann's Encyclopedia of Industrial Chemistry (herein “Brandt”).
As to claims 1 and 46: US ‘654 claims processes of producing an ethylene based polymer (see claim 36 of US ‘654), a propylene based polymer (see claim 41 of US ‘654), or an ethylene alpha-olefin copolymer (see claim 44 of US ‘654) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 26 of US ‘654). US ‘654 does not claim a diene monomer as is presently recited.
Mitra discloses several aspects of EPDM rubbers. Mitra discloses that EPDM is known for resistance to oxygen, ozone, heat and UV and are useful for several outdoor applications including the building, construction, engineering and automotive sectors (see the beginning of p. 6281). Mitra discloses that one of the most important grades of EPDM is with 5-ethylidene-2-norborene (ENB) as a diene (id.).
In light of Mitra, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘654 to make EPDM (that is, by copolymerizing ethylene, propylene, and 5-ethylidene-2-norbornene) to make a polymer that is useful for outdoor applications. It would have been obvious to one of ordinary skill in the art to have performed the processes claimed by US ‘654 to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-25, 27-35, 37-40, 42-43, and 45-50 of US ‘654; and the further limitations of present claim 47 is adequately set forth in Table 1 of Mitra (see the weight percentages of ENB).
In the alternative, as to claims 1 and 46-47: US ‘654 claims processes of producing an ethylene based polymer (see claim 36 of US ‘654), a propylene based polymer (see claim 41 of US ‘654), or an ethylene alpha-olefin copolymer (see claim 44 of US ‘654) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 26 of US ‘654). US ‘654 does not claim a diene monomer as is presently recited.
Brandt discloses several aspects of EPDM (see section 2.2). Brandt discloses that EPDM contain small quantities (less than 12 wt%) of a nonconjugated diene (see section 2.2.1 on p. 665); that as diene content increases, strain properties improve, compression set improves, cure rate increases, and heat aging resistance declines (id.); and that the diene type influences compound properties as follows: ethylidenenorbornene (ENB) gives the fastest cure rate; dicyclopentadiene (DCPD) the best processability; and 1,4-hexadiene (HD) the best heat resistance (see section 2.2.1 on p. 666). Brandt discloses several applications of EPDM (see Table 7 on p. 666).
In light of Brandt, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘654 to make EPDM (that is, by copolymerizing ethylene, propylene, and a diene such as 5-ethylidene-2-norbornene, dicyclopentadiene, or 1,4-hexadiene) to make a polymer that has the desired balance of strain properties, compression set, cure rate, and heat aging resistance, and that is suitable for the applications described in Brandt. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘654 including copolymerizing a diene monomer to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-25, 27-35, 37-40, 42-43, and 45-50 of US ‘654.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-50 of U.S. Patent No. 11,203,654 B2 in view of Mitra, or in the alternative, over claims 1-50 of U.S. Patent No. 11,203,654 B2 in view of Brandt, both as set forth above, and further in view of U.S. Patent No. 6,329,477 B1 (herein “Harrington”).
The discussion set forth above regarding US ‘654, Mitra, and Brandt is incorporated here by reference. As set forth above, US ‘654 and Mitra, or in the alternative US ‘654 and Brandt, suggest a process according to present base claim 46. US ‘654, Mitra, and Brandt do not disclose the presently recited step of purifying 5-ethylidene-2-norbornene over beds of alumina.
Harrington describes methods of making EPDM composition (see the abstract). Harrington discloses polymerization in which the monomers were purified over beds of alumina and mole sieves (see col. 13, ll. 28-35). In light of Harrington, one of ordinary skill in the art would have been motivated to perform the process suggested by US ‘654 and Mitra, or in the alternative by US ‘654 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves in order to avoid any potential interference with the polymerization reaction arising from impurities in the monomers. It would have been obvious to one of ordinary skill in the art to have performed the process suggested by US ‘654 and Mitra, or in the alternative by US ‘654 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves.
Claims 1-5, 8-10, 12-16, 23, 32, 34-37, and 39-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,214,634 B2 in view of Mitra, or in the alternative, over claims 1-48 of U.S. Patent No. 11,214,634 B2 in view of Brandt.
As to claims 1 and 46: US ‘634 claims processes of producing an ethylene based polymer (see claim 37 of US ‘634), a propylene based polymer (see claim 40 of US ‘634), or an ethylene alpha-olefin copolymer (see claim 43 of US ‘634) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 27 of US ‘634). US ‘634 does not claim a diene monomer as is presently recited.
Mitra discloses several aspects of EPDM rubbers. Mitra discloses that EPDM is known for resistance to oxygen, ozone, heat and UV and are useful for several outdoor applications including the building, construction, engineering and automotive sectors (see the beginning of p. 6281). Mitra discloses that one of the most important grades of EPDM is with 5-ethylidene-2-norborene (ENB) as a diene (id.).
In light of Mitra, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘634 to make EPDM (that is, by copolymerizing ethylene, propylene, and 5-ethylidene-2-norbornene) to make a polymer that is useful for outdoor applications. It would have been obvious to one of ordinary skill in the art to have performed the processes claimed by US ‘634 to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-26, 28-36, 38-39, 41-42, and 44-48 of US ‘634; and the further limitations of present claim 47 is adequately set forth in Table 1 of Mitra (see the weight percentages of ENB).
In the alternative, as to claims 1 and 46-47: US ‘634 claims processes of producing an ethylene based polymer (see claim 37 of US ‘634), a propylene based polymer (see claim 40 of US ‘634), or an ethylene alpha-olefin copolymer (see claim 43 of US ‘634) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 27 of US ‘634). US ‘634 does not claim a diene monomer as is presently recited.
Brandt discloses several aspects of EPDM (see section 2.2). Brandt discloses that EPDM contain small quantities (less than 12 wt%) of a nonconjugated diene (see section 2.2.1 on p. 665); that as diene content increases, strain properties improve, compression set improves, cure rate increases, and heat aging resistance declines (id.); and that the diene type influences compound properties as follows: ethylidenenorbornene (ENB) gives the fastest cure rate; dicyclopentadiene (DCPD) the best processability; and 1,4-hexadiene (HD) the best heat resistance (see section 2.2.1 on p. 666). Brandt discloses several applications of EPDM (see Table 7 on p. 666).
In light of Brandt, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘634 to make EPDM (that is, by copolymerizing ethylene, propylene, and a diene such as 5-ethylidene-2-norbornene, dicyclopentadiene, or 1,4-hexadiene) to make a polymer that has the desired balance of strain properties, compression set, cure rate, and heat aging resistance, and that is suitable for the applications described in Brandt. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘634 including copolymerizing a diene monomer to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-26, 28-36, 38-39, 41-42, and 44-48 of US ‘634.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,214,634 B2 in view of Mitra, or in the alternative, over claims 1-48 of U.S. Patent No. 11,214,634 B2 in view of Brandt, both as set forth above, and further in view of Harrington.
The discussion set forth above regarding US ‘634, Mitra, and Brandt is incorporated here by reference. As set forth above, US ‘634 and Mitra, or in the alternative US ‘634 and Brandt, suggest a process according to present base claim 46. US ‘634, Mitra, and Brandt do not disclose the presently recited step of purifying 5-ethylidene-2-norbornene over beds of alumina.
Harrington describes methods of making EPDM composition (see the abstract). Harrington discloses polymerization in which the monomers were purified over beds of alumina and mole sieves (see col. 13, ll. 28-35). In light of Harrington, one of ordinary skill in the art would have been motivated to perform the process suggested by US ‘634 and Mitra, or in the alternative by US ‘634 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves in order to avoid any potential interference with the polymerization reaction arising from impurities in the monomers. It would have been obvious to one of ordinary skill in the art to have performed the process suggested by US ‘634 and Mitra, or in the alternative by US ‘634 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves.
Claims 1-5, 8-10, 12-16, 23, 32, 34-37, and 39-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 11,225,539 B2 in view of Mitra, or in the alternative, over claims 1-36 of U.S. Patent No. 11,225,539 B2 in view of Brandt.
As to claims 1 and 46: US ‘539 claims a process to polymerize olefins comprising C2 to C40 alpha olefins (see claim 35 of US ‘539) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 23 of US ‘539). US ‘539 does not claim a diene monomer as is presently recited.
Mitra discloses several aspects of EPDM rubbers. Mitra discloses that EPDM is known for resistance to oxygen, ozone, heat and UV and are useful for several outdoor applications including the building, construction, engineering and automotive sectors (see the beginning of p. 6281). Mitra discloses that one of the most important grades of EPDM is with 5-ethylidene-2-norborene (ENB) as a diene (id.).
In light of Mitra, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘539 to make EPDM (that is, by copolymerizing ethylene, propylene, and 5-ethylidene-2-norbornene) to make a polymer that is useful for outdoor applications. It would have been obvious to one of ordinary skill in the art to have performed the processes claimed by US ‘539 to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-22, 24-34, and 36 of US ‘539; and the further limitations of present claim 47 is adequately set forth in Table 1 of Mitra (see the weight percentages of ENB).
In the alternative, as to claims 1 and 46-47: US ‘539 claims a process to polymerize olefins comprising C2 to C40 alpha olefins (see claim 35 of US ‘539) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 23 of US ‘539). US ‘539 does not claim a diene monomer as is presently recited.
Brandt discloses several aspects of EPDM (see section 2.2). Brandt discloses that EPDM contain small quantities (less than 12 wt%) of a nonconjugated diene (see section 2.2.1 on p. 665); that as diene content increases, strain properties improve, compression set improves, cure rate increases, and heat aging resistance declines (id.); and that the diene type influences compound properties as follows: ethylidenenorbornene (ENB) gives the fastest cure rate; dicyclopentadiene (DCPD) the best processability; and 1,4-hexadiene (HD) the best heat resistance (see section 2.2.1 on p. 666). Brandt discloses several applications of EPDM (see Table 7 on p. 666).
In light of Brandt, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘539 to make EPDM (that is, by copolymerizing ethylene, propylene, and a diene such as 5-ethylidene-2-norbornene, dicyclopentadiene, or 1,4-hexadiene) to make a polymer that has the desired balance of strain properties, compression set, cure rate, and heat aging resistance, and that is suitable for the applications described in Brandt. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘539 including copolymerizing a diene monomer to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-22, 24-34, and 36 of US ‘539.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-36 of U.S. Patent No. 11,225,539 B2 in view of Mitra, or in the alternative, over claims 1-36 of U.S. Patent No. 11,225,539 B2 in view of Brandt, both as set forth above, and further in view of 6,329,477 B1 Harrington.
The discussion set forth above regarding US ‘539, Mitra, and Brandt is incorporated here by reference. As set forth above, US ‘539 and Mitra, or in the alternative US ‘539 and Brandt, suggest a process according to present base claim 46. US ‘539, Mitra, and Brandt do not disclose the presently recited step of purifying 5-ethylidene-2-norbornene over beds of alumina.
Harrington describes methods of making EPDM composition (see the abstract). Harrington discloses polymerization in which the monomers were purified over beds of alumina and mole sieves (see col. 13, ll. 28-35). In light of Harrington, one of ordinary skill in the art would have been motivated to perform the process suggested by US ‘539 and Mitra, or in the alternative by US ‘539 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves in order to avoid any potential interference with the polymerization reaction arising from impurities in the monomers. It would have been obvious to one of ordinary skill in the art to have performed the process suggested by US ‘539 and Mitra, or in the alternative by US ‘539 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves.
Claims 1-5, 8-10, 12-16, 23, 32, 34-37, and 39-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,248,070 B2 in view of Mitra, or in the alternative, over claims 1-48 of U.S. Patent No. 11,248,070 B2 in view of Brandt.
As to claims 1 and 46: US ‘070 claims processes of producing an ethylene based polymer (see claim 43 of US ‘070), a propylene based polymer (see claim 40 of US ‘070), or a propylene alpha-olefin copolymer (see claim 46 of US ‘070) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 27 of US ‘070). US ‘070 does not claim a diene monomer as is presently recited.
Mitra discloses several aspects of EPDM rubbers. Mitra discloses that EPDM is known for resistance to oxygen, ozone, heat and UV and are useful for several outdoor applications including the building, construction, engineering and automotive sectors (see the beginning of p. 6281). Mitra discloses that one of the most important grades of EPDM is with 5-ethylidene-2-norborene (ENB) as a diene (id.).
In light of Mitra, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘070 to make EPDM (that is, by copolymerizing ethylene, propylene, and 5-ethylidene-2-norbornene) to make a polymer that is useful for outdoor applications. It would have been obvious to one of ordinary skill in the art to have performed the processes claimed by US ‘070 to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-26, 28-39, 41-42, 44-45, and 47-48 of US ‘070; and the further limitations of present claim 47 is adequately set forth in Table 1 of Mitra (see the weight percentages of ENB).
In the alternative, as to claims 1 and 46-47: US ‘070 claims processes of producing an ethylene based polymer (see claim 43 of US ‘070), a propylene based polymer (see claim 40 of US ‘070), or a propylene alpha-olefin copolymer (see claim 46 of US ‘070) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 27 of US ‘070). US ‘070 does not claim a diene monomer as is presently recited.
Brandt discloses several aspects of EPDM (see section 2.2). Brandt discloses that EPDM contain small quantities (less than 12 wt%) of a nonconjugated diene (see section 2.2.1 on p. 665); that as diene content increases, strain properties improve, compression set improves, cure rate increases, and heat aging resistance declines (id.); and that the diene type influences compound properties as follows: ethylidenenorbornene (ENB) gives the fastest cure rate; dicyclopentadiene (DCPD) the best processability; and 1,4-hexadiene (HD) the best heat resistance (see section 2.2.1 on p. 666). Brandt discloses several applications of EPDM (see Table 7 on p. 666).
In light of Brandt, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘070 to make EPDM (that is, by copolymerizing ethylene, propylene, and a diene such as 5-ethylidene-2-norbornene, dicyclopentadiene, or 1,4-hexadiene) to make a polymer that has the desired balance of strain properties, compression set, cure rate, and heat aging resistance, and that is suitable for the applications described in Brandt. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘070 including copolymerizing a diene monomer to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-26, 28-39, 41-42, 44-45, and 47-48 of US ‘070.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 11,248,070 B2 in view of Mitra, or in the alternative, over claims 1-48 of U.S. Patent No. 11,248,070 B2 in view of Brandt, both as set forth above, and further in view of Harrington.
The discussion set forth above regarding US ‘070, Mitra, and Brandt is incorporated here by reference. As set forth above, US ‘070 and Mitra, or in the alternative US ‘070 and Brandt, suggest a process according to present base claim 46. US ‘070, Mitra, and Brandt do not disclose the presently recited step of purifying 5-ethylidene-2-norbornene over beds of alumina.
Harrington describes methods of making EPDM composition (see the abstract). Harrington discloses polymerization in which the monomers were purified over beds of alumina and mole sieves (see col. 13, ll. 28-35). In light of Harrington, one of ordinary skill in the art would have been motivated to perform the process suggested by US ‘070 and Mitra, or in the alternative by US ‘070 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves in order to avoid any potential interference with the polymerization reaction arising from impurities in the monomers. It would have been obvious to one of ordinary skill in the art to have performed the process suggested by US ‘070 and Mitra, or in the alternative by US ‘070 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves.
Claims 1-5, 8-10, 12-16, 23, 32, 34-37, and 39-47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,254,763 B2 in view of Mitra, or in the alternative, over claims 1-35 of U.S. Patent No. 11,254,763 B2 in view of Brandt.
As to claims 1 and 46: US ‘763 claims a process to polymerize olefins comprising C2 to C40 alpha olefins (see claim 35 of US ‘763) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 23 of US ‘763). US ‘763 does not claim a diene monomer as is presently recited.
Mitra discloses several aspects of EPDM rubbers. Mitra discloses that EPDM is known for resistance to oxygen, ozone, heat and UV and are useful for several outdoor applications including the building, construction, engineering and automotive sectors (see the beginning of p. 6281). Mitra discloses that one of the most important grades of EPDM is with 5-ethylidene-2-norborene (ENB) as a diene (id.).
In light of Mitra, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘763 to make EPDM (that is, by copolymerizing ethylene, propylene, and 5-ethylidene-2-norbornene) to make a polymer that is useful for outdoor applications. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘763 to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-22 and 24-35 of US ‘763; and the further limitations of present claim 47 is adequately set forth in Table 1 of Mitra (see the weight percentages of ENB).
In the alternative, as to claims 1 and 46-47: US ‘763 claims a process to polymerize olefins comprising C2 to C40 alpha olefins (see claim 35 of US ‘763) using a catalyst system according to the presently recited chemical formulas (see claims 1 and 23 of US ‘763). US ‘763 does not claim a diene monomer as is presently recited.
Brandt discloses several aspects of EPDM (see section 2.2). Brandt discloses that EPDM contain small quantities (less than 12 wt%) of a nonconjugated diene (see section 2.2.1 on p. 665); that as diene content increases, strain properties improve, compression set improves, cure rate increases, and heat aging resistance declines (id.); and that the diene type influences compound properties as follows: ethylidenenorbornene (ENB) gives the fastest cure rate; dicyclopentadiene (DCPD) the best processability; and 1,4-hexadiene (HD) the best heat resistance (see section 2.2.1 on p. 666). Brandt discloses several applications of EPDM (see Table 7 on p. 666).
In light of Brandt, one of ordinary skill in the art would have been motivated to perform the processes claimed by US ‘070 to make EPDM (that is, by copolymerizing ethylene, propylene, and a diene such as 5-ethylidene-2-norbornene, dicyclopentadiene, or 1,4-hexadiene) to make a polymer that has the desired balance of strain properties, compression set, cure rate, and heat aging resistance, and that is suitable for the applications described in Brandt. It would have been obvious to one of ordinary skill in the art to have perform the processes claimed by US ‘763 including copolymerizing a diene monomer to make EPDM. The further limitations of present claims 2-5, 8-10, 12-16, 23, 32, 34-37, 39-45 are adequately set forth in claims 1-22 and 24-35 of US ‘763.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 11,254,763 B2 in view of Mitra, or in the alternative, over claims 1-35 of U.S. Patent No. 11,254,763 B2 in view of Brandt, both as set forth above, and further in view of Harrington.
The discussion set forth above regarding US ‘763, Mitra, and Brandt is incorporated here by reference. As set forth above, US ‘763 and Mitra, or in the alternative US ‘763 and Brandt, suggest a process according to present base claim 46. US ‘763, Mitra, and Brandt do not disclose the presently recited step of purifying 5-ethylidene-2-norbornene over beds of alumina.
Harrington describes methods of making EPDM composition (see the abstract). Harrington discloses polymerization in which the monomers were purified over beds of alumina and mole sieves (see col. 13, ll. 28-35). In light of Harrington, one of ordinary skill in the art would have been motivated to perform the process suggested by US ‘763 and Mitra, or in the alternative by US ‘763 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves in order to avoid any potential interference with the polymerization reaction arising from impurities in the monomers. It would have been obvious to one of ordinary skill in the art to have performed the process suggested by US ‘763 and Mitra, or in the alternative by US ‘763 and Brandt, by including a step of purifying the monomers over beds of alumina and mole sieves.
Response to Arguments
Applicant’s arguments filed Feb. 17, 2026 have been fully considered, but they are not persuasive.
Regarding the five double patenting rejections (over US Patents Nos. 11,203,654 B2, 11,214,634 B2, 11,225,539 B2, 11,248,070 B2, and 11,254,763 B2 in view of Mitra): Applicant argues (bridging pp. 16-17 of Remarks) that the secondary reference to Mitra does not disclose techniques for forming EPDM polymers. This argument is unpersuasive because it does not explain why Mitra’s lack of a disclosure of techniques for forming EPDM would amount to a deficiency of the rejection.
Nonetheless, to the extent that Applicant may have intended to argue that one of ordinary skill in the art would not have known how to make EPDM, this argument is unpersuasive because polymerization techniques are well-known in the art (for instance, polymerization processes are claimed in each of the cited reference patents; see claims 36, 41, and 44 of US ‘654; claims 37, 40, and 43 of US ‘634; claim 35 of US ‘539; claims 40, 43, and 46 of US ‘070; and claim 35 of US ‘763), and the copolymerization of a diene monomer such as ENB is readily apparent from the disclosure of Mitra (e.g. Section 1, Scheme 1, and Table 1). Furthermore, the synthesis of EPDM by copolymerizing dienes such as ENB with ethylene and propylene is well-known in the art, as evidenced by Brandt.
Applicant further argues (top of p. 17 of Remarks) that Mitra does not disclose a catalyst used to make EPDM. This argument is unpersuasive because it is an argument against the references individually, whereas the rejections are based upon a combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. MPEP 2145(IV). In the present case, the rejections refer to the reference patents for a disclosure of the pertinent catalysts.
Applicant further argues (id.) that there is no motivation without impermissible hindsight to modify the reference patents.
With regard to the allegation of hindsight analysis, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." MPEP 2145(X)(A).
Applicant’s argument is unpersuasive because it does not point to any portion of the rejection that relies upon knowledge gleaned only from Applicant’s own disclosure, and Applicant does not point to any portion of the rejection that was not within the level of ordinary skill in the art.
Applicant further argues (top of p. 18 of Remarks) that the “apparent reliance on the specification” of the reference patents is improper. This argument is unpersuasive because it does not identify any portion of the rejections that rely upon the specifications of the reference patents.
The double patenting rejections that were set forth previously have been repeated above. In addition, further rejections of the newly presented claim 48 and further rejections over Brandt have been set forth above.
Conclusion
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764