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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
The grounds of rejection set forth below for claims 1-5, 8-10, 12-16, 23, 32, 34-37, 39-48 are the same as those set forth in the previous Office action mailed on Feb. 26, 2026. For this reason, the present action is properly made final.
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 or in the alternative in view of Brandt):
Applicant argues (middle of p. 15 of Remarks) that Mitra's lack of disclosure of techniques for forming EPDM "is precisely the deficiency" of the rejections.
This argument is unpersuasive because it does not explain why Mitra's lack of disclosure of techniques for forming EPDM would amount to a deficiency of the rejections.
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 (bottom of p. 15 of Remarks) that Mitra does not disclose that the claimed catalysts would be suitable for polymerization of EPDM. Applicant further notes (top of p. 16 of Remarks) that Brand describes catalysts that may be used to produce EPDM.
The argued portion of Brandt discloses that "[c]ommercial EP(D)M polymerization processes employ vanadium or titanium catalysts" (top of p. 668). V and Ti are Group 4 and Group 5 metals, respectively; and each of the cited US Patents relied upon in the double patenting rejections encompass the use of catalysts of group 4 and 5 metals.
All else aside, in light of the argued portion of Brandt, one of ordinary skill in the art would have had a reasonable expectation of success to use vanadium or titanium catalysts to make EPDM. Thus, at the very least, one of ordinary skill in the art would have had a reasonable expectation of success to use the V or Ti catalysts within the scope of the cited US Patents.
Of course, one of ordinary skill in the art additionally has knowledge of the whole of prior art drawn to the synthesis of EPDM and the concomitant catalysts. The well-known ability of dienes to copolymerize with both ethylene and alpha-olefins would have provided one of ordinary skill in the art with a sufficient and reasonable expectation of success for the copolymerization of a diene with the comonomers recited in the cited US Patents, e.g. the ethylene and alpha-olefins that are recited in the claims of US '654.
Obviousness requires a reasonable expectation of success, but it does not require absolute predictability of success. MPEP 2143.02.
Applicant further argues (top of p. 16 of Remarks) that Brandt does not motivate one of ordinary skill in the art to utilize the claimed catalysts.
This argument is unpersuasive because it is an argument against a reference individually where the rejections are based on combinations of references. MPEP 2145(IV). In the present case, the rejections rely upon the cited US Patents (not Brandt) for their disclosures of the pertinent catalysts. The rejection does not rely upon Brandt for a motivation to use the claimed catalysts.
Applicant further argues (id.) that "Brandt describes diene monomers can interact differently with catalyst systems, potentially causing catalyst poisoning or deactivation". The examiner does not find in Brandt the argued disclosure about diene monomers causing poisoning or deactivation.
Applicant argues (top of p. 17) that the desirable properties of EPDM do not establish obviousness, and Applicant argues that the rejection does not explain why "the specific catalysts" of the claims would result in these properties.
The argument is unpersuasive because it does not rebut a position taken in the rejection. The rejections rely upon disclosures (in the alternative) in Mitra and Brandt regarding the properties of EPDM (resistance to oxygen, ozone, heat, and UV; and utility for various applications) which would motivate the production of EPDM in order to produce a material having such properties. The rejection does not make an assertion, and the applied references do not appear to include any disclosure, regarding any catalysts that would be necessary produce these properties.
The examiner maintains that the desirable properties and utilities of EPDM that are disclosed by Mitra and Brandt do motivate one of ordinary skill in the art to copolymerize a diene such as 5-ethylidene-2-norbornene or dicyclopentadiene with the comonomers of the cited US Patents to make EPDM having such properties.
Applicant argues (id.) that Brandt does not offer guidance as to the selection of a catalyst. This argument is unpersuasive because it is an argument against the reference individually where the rejections are based on combinations of references. MPEP 2145(IV). In the present case, the rejections rely upon the claims of the cited US Patents for disclosures of the pertinent catalysts, and the rejections do not rely upon Brandt for the argued guidance as to the selection of a catalyst.
The double patenting rejections that were set forth in the preceding Office action have been maintained above in paragraphs 5-59.
Conclusion
This action is properly final because the claims are rejected on the same grounds as set forth in the previous Office Action mailed on Feb. 26, 2026. Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). See MPEP § 706.07(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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, Arrie (Lanee) Reuther can be reached at (571) 270-7026. 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.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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