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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/2/26 has been entered.
Claim Rejections - 35 USC § 103
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hosaka (U.S. PG Pub. No. 2015/0166693).
In paragraph 1 Hosaka discloses a method for producing a solid catalyst component for olefin polymerization, an olefin polymerization catalyst, and a method for producing an olefin copolymer. In paragraphs 17-20 (aspects 1-5) Hosaka discloses that the method for producing the solid catalyst comprises reacting a magnesium compound and titanium halide with a series of three internal electron donor compounds, and in aspect 6 of claim 20 Hosaka discloses an olefin polymerization catalyst prepared by the method. The resulting catalyst of Hosaka will comprise magnesium, titanium, and a halogen, all as recited in claim 1, as well as the three internal electron donors. The first internal electron donor of Hosaka is an aromatic dicarboxylic acid ester, which is not recited in claim 1, but the open-ended “comprising” language of the claims allows for the solid catalyst to comprise additional unrecited components including the aromatic dicarboxylic acid ester. Claim 1 has been further amended to exclude a phthalic acid ester, but formula (1) in paragraph 50 of Hosaka and paragraphs 61-62 of Hosaka also disclose esters of alkylphthalic acids or halophthalic acids; the current specification does not define phthalic acid esters in a way that would also encompass esters of phthalic acid derivatives such as those of Hosaka.
In paragraph 218 and Table 1, Hosaka discloses a combination of internal electron donor compounds where the second internal electron donor is an aromatic dicarboxylic acid diester and the third internal electron donor is an ether carbonate. In paragraphs 94-95 and 99 Hosaka discloses that the polycarboxylic ester that can be used as the second internal electron donor can also be a succinic diester, and discloses specific suitable and preferred dialkyl succinates. The solid catalyst of Hosaka can therefore comprise a combination of a succinic acid diester and an ether carbonate, as recited in claim 1.
In paragraph 119 Hosaka discloses that the ether carbonate can have the structure recited in amended claim 1, noting that Hosaka also discloses in paragraph 184 that the compounds useful as the third internal electron donor are the compounds disclosed as useful as the second internal electron donor.
In paragraph 99 Hosaka discloses suitable succinic acid diesters meeting the limitations of the succinic acid diesters 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.
In aspect 6 of the reference’s claim 20 and paragraphs 236-253, Hosaka discloses that the catalyst can further comprise an organoaluminum compound meeting the limitations of claim 4, and an external electron donor as recited in claim 5.
In aspect 8 of paragraph 20 and paragraphs 254-269 Hosaka discloses a method for producing an olefin polymer in the presence of the catalyst, meeting the method limitations of claims 6-7.
The difference between Hosaka and the currently presented claims is that Hosaka does not specifically disclose the mole ratio of the ether carbonate compound to the succinic acid diester when they are used in combination.
In aspect 4 of paragraph 20, and paragraph 192, Hosaka discloses that the molar quantity of the third internal electron donor is preferably equal to or smaller than the molar quantity of the second internal electron donor. When the third internal electron donor is the ether carbonate and the second internal electron donor is the succinic acid diester, as discussed above, the molar ratio of the ether carbonate to the succinic acid diester is therefore 1.00 or less, strongly encompassing the range recited in claim 1. 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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1 and 4-7 are therefore rendered obvious by Hosaka.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sugano (U.S. PG Pub. No. 2016/0009836) in view of Hosaka.
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 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.
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.
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 4-7 are therefore rendered obvious by Sugano in view of Hosaka.
Response to Arguments
Applicant's arguments filed 12/1/25 have been fully considered but they are not persuasive. Applicant argues that the claims have been amended to exclude phthalic diesters (“phthalic acid esters” as recited in the claim), allegedly overcoming the Hosaka reference. However, as discussed in paragraph 3 above, Hosaka also discloses esters of alkyl-substituted and halogen-substituted phthalic acid derivatives; there is no definition of “phthalic acid esters” in the current application that would lead one of ordinary skill in the art to interpret “phthalic acid esters” as also encompassing esters of phthalic acid derivatives. Applicant’s argument is therefore unpersuasive regarding the rejection over Hosaka alone.
Even if the amendment did overcome the rejection set forth over Hosaka alone, it would not overcome the rejection over Sugano in view of Hosaka, since Sugano does not teach the inclusion of phthalic acid esters, and in fact teaches in the examples that a solid catalyst prepared using dibutyl phthalate (Comparative Example 1) leads to inferior results, and Hosaka is cited only to teach specific suitable succinic diesters for a solid catalyst for olefin polymerization.
Conclusion
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771