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 .
The amendment filed 5/12/26 overcomes the rejection set forth over Hosaka alone in the office action mailed 1/12/26, but does not overcome the rejection set forth over Sugano and Hosaka, which is maintained below. Newly added claims 8-12 are also rejection over Sugano and Hosaka.
Claim Rejections - 35 USC § 103
Claims 1 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano (U.S. PG Pub. No. 2016/0009836) in view of Hosaka (U.S. PG Pub. No. 2015/0166693).
In paragraph 1 Sugano discloses a method that produces a propylene-based block copolymer having favorable properties by utilizing a polymerization catalyst. In paragraphs 22-24 Sugano discloses that the catalyst is a solid catalyst that includes titanium, magnesium, a halogen, and an ether carbonate, all as recited in claim 1, where the ether carbonate has the structure recited in amended claim 1, as well as an organoaluminum compound as recited in claim 4, and an external electron donor compound as recited in claim 5. In paragraph 70 Sugano discloses that the ether carbonates recited in claim 8 are suitable ether carbonates, and discloses that 2-ethoxyethyl methyl carbonate, 2-ethoxyethyl ethyl carbonate, and 2-ethoxyethyl propyl carbonate, as recited in claim 8, are particularly preferred ether carbonates.
In paragraph 71 Sugano discloses that the solid catalyst can comprise an electron donor compound other than the ether carbonate (“component (A)” of Sugano), which can be an organic acid ester compound. In paragraph 72 Sugano discloses that the organic acid ester can be a succinic diester, as recited in claim 1. In paragraph 76 Sugano discloses that the ratio of the ether carbonate (A) to the electron donor compound ranges from 0.2 to 5, overlapping the range recited in claim 1. In paragraphs 1, 18-20, and 130-139 Sugano discloses a method of olefin polymerization utilizing the catalyst, meeting the method limitations of claims 6-7.
Sugano does not require the inclusion of any additional compounds in the solid catalyst component disclosed in paragraph 22 of Sugano and therefore meets the “consisting of” language of both amended claim 1 and newly added claims 11-12.
The differences between Sugano and the currently presented claims are:
i) Sugano does not disclose specific suitable succinic diesters.
ii) The ratio of ether carbonate to organic acid ester overlaps the claimed range rather than falling within it.
With respect to i), Hosaka, as discussed in paragraph 3 above, discloses similar solid catalysts, and teaches in paragraph 99 Hosaka that succinic acid diesters meeting the limitations of the succinic diester (B) of amended claim 1 for the case where both R3 and R4 are hydrogen and R5 and R6 are both ethyl or both butyl, for the case where one of R3 and R4 is hydrogen and the other is methyl and R5 and R6 both ethyl, and for the case where both R3 and R4 are isopropyl and R5 and R6 are both ethyl are suitable internal electron donors for the solid catalyst. Hosaka specifically discloses diethyl succinate, dibutyl succinate, diethyl 2,3-diisopropylsuccinate, all as recited in claims 9-10.
It would have been obvious to one of ordinary skill in the art to include the specific succinic acid diesters of Hosaka as the succinic diester of Sugano, since Hosaka teaches that they are suitable succinic acid diester internal electron donors for a similar solid catalyst for olefin polymerization.
With respect to ii), See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” Claims 1 and 4-12 are therefore rendered obvious by Sugano in view of Hosaka.
Response to Arguments
Applicant's arguments filed 5/12/26 have been fully considered but they are not persuasive. Applicant argues that the fact that a claimed species or subgenus is encompassed by a prior art genus is not sufficient by itself to establish a prima facie case of obviousness. The examiner maintains the position taken on this point in the office action mailed 10/1/25. The cited portions of the cited references disclose compounds meeting the limitations of the claimed ether carbonate and succinic acid diester compounds rather than genuses encompassing a narrower subgenus of the claimed compounds. If applicant is simply referring to the fact that Sugano and Hosaka may disclose alternative embodiments, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). Applicant’s argument on this point is therefore not persuasive.
Applicant also alleges that the examples provided in the specification demonstrate that the claimed solid catalyst component leads to unexpectedly superior results. While the claims have been narrowed, the issues identified in the office action mailed 10/1/25 still remain, and have not been addressed in the current response. In order to demonstrate unexpected results, applicant must provide a comparison with the closest prior art. See MPEP 716.02(e). The comparative examples in Table 1, described in paragraphs 132-133 on pages 77-78 of the specification, do not appear to comprise both the ether carbonate and succinic acid diester in the exemplified catalysts. However, Sugano, as discussed in the rejection, discloses catalysts comprising both the claimed ether carbonate and an additional electron donor which can be a succinic diester. Hosaka, as discussed in previous office actions, discloses a catalyst comprising a mixture of internal electron donors, where the mixture of internal electron donors can comprise both an aromatic dicarboxylic diester and an ether carbonate, and the aromatic dicarboxylic diester can be the claimed succinic acid diester. Sugano and Hosaka are therefore both closer prior art than the comparative examples supplied by applicant.
The burden is on applicant to establish that results are unexpected and significant. See MPEP 716.02(b). The data provided in Table 1 does not indicate that the inventive examples (Examples 1-3) are superior to the comparative examples (Comparative Examples 1-2) in any specific property. The discussion in the specification and applicant’s remarks indicates that the alleged unexpected result is a combination of properties, but there is no disclosure in the specification or discussion in the remarks as to precisely what combination of properties qualifies as an unexpected and significant result.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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, PREM SINGH can be reached at 571-272-6381. 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.
/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771
Prosecution Insights