DETAILED ACTION
This office action follows a response filed on December 23, 2025. Claims 1 and 4-8 were amended, and new claims 9 and 10 were added. Claims 1-10 are pending.
Claim Objections
Claim 9 is objected to because of the following informalities: In line 1, please replace “The catalysts” with “The catalyst”.
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.
Claims 1-7, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 7, 9, and 10 of U.S. Patent No. 12,428,503. Although the claims at issue are not identical, they are not patentably distinct from each other.
Patent claims are drawn to substantially the same method for producing a catalyst for polymerization of an olefin comprising contacting a solid catalyst component (A) comprising magnesium, titanium, halogen, and an internal electron donating compound and an organoaluminum compound (B) with each other, wherein at least one selected from the solid catalyst component (A) or the organoaluminum compound (B) is previously subjected to contact treatment with a hydrocarbon compound having one or more vinyl groups. While patent claims do not recite the identity of an internal electron donating compound, one gleans from the disclosure that the internal electron donating compound is 2-ethoxyethyl-1-ethyl carbonate (EEECA).
Applicant’s attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F. 2d 1017, 157 USPQ 370 (CCPA 1986). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619,622 (CCPA 1970).
Response to Arguments
The rejection of claim 4 under 35 U.S.C. 112(b), set forth in paragraph 8 of the previous office action dated August 25, 2025, has been withdrawn in view of claim amendment.
The rejections of claims under 35 U.S.C. 102(a)(1) as being anticipated by Kataoka et al. (JP 7-173213), Kataoka et al. (JP 10-36430), Kamimura et al. (US 9,353,198), and Kamimura et al. (JP 2015-193787), set forth in paragraphs 10-13 of the previous office action, have been overcome by amendment.
Allowable Subject Matter
Subject of claims is patentably distinct over the references listed in the accompanying PTO-892. Hosaka et al. (US 9,587,050, US 9,593,188, US 9670,294), Umebayashi et al. (US 11,236,189), and Sugano et al. (US 10,457,755), and Konno et al. (US 12,331,138) teach use of 2-ethoxyethyl ethyl carbonate or 2-ethoxyethyl methyl carbonate as an internal election donor for preparation of a solid catalyst component.
Coalter et al. (US 8,263,520, US 8,633,126), Sainani et al. (US 10,160,816), and Zhang et al. (CN 107344973, C 107344977, CN 107344979, CN 1034497980) teaches use of a decarbonate compound as internal electron donor for preparation of a solid catalyst component.
All references teach contacting the solid catalyst component with an organoaluminum compound to make a polymerization catalyst. None of cited references teaches claimed process wherein at least one selected from w solid catalyst component or an organoaluminum compound is previously subjected to contact treatment with a hydrocarbon compound having one or more vinyl groups.
For purposes of filling out PTO-892, status of claim 8 is listed as “objected to”.
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 Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIP A LEE/Primary Examiner, Art Unit 1762 February 25, 2026