DETAILED ACTION
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 .
Election/Restrictions
Claims 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/5/25.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 uses the designation “↑” in the chemical composition of Claim 8, but this designation is unclear. It will be treated as a bond for examination purposes.
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No.: 19/319000 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘000 overlaps Claim 1 of the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No.: 12012475 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 3 and 4 together of ‘475 overlaps Claim 1 of the current Claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peifer (US Pat.: 5705578) and evidenced by Wang et al. “Advances in High-Temperature Non-Metallocene Catalysts. . “, attached.
Peifer describes a method of making a metallocene catalyst (title) for use in the polymerization of olefins (abstract). The metallocene contains a ligand that has an alkyne functionality (col. 2, lines 42-43). The method of making the metallocene involves combining a metallocene and an aluminoxane in the presence of a “suitable liquid” (col. 5, lines 9-13). The aluminoxane can be considered the activator of Claim 1. The “suitable liquid” of Peifer can be considered the “productivity-increasing organic compound” of Claim 1.
The “suitable liquid” can include an aromatic liquid solvent (col. 5, lines 15-16), which can be a benzene or an ethyl benzene (col. 5, lines 15-16).
The metallocene can have the formula:
R(Z)(Z)MeQk (col. 2, lines 51-52).
R can have a alkynyl attached (col. 2, lines 63-66).
Each Z can be one of: cyclopentadienyl, Indenyl, Tetrahydroindenyl, Octahydrofluorenyl or Benzofluorenyl (col. 2, lines 52-56).
Me can be a metal in groups IVB, VB and VIB (col. 2, lines 57-59).
Each Q can be the same or different and can be one of: hydrogen, halogen or organoradicals (col. 2, lines 59-61).
In the discussions, the alkynyl group (col. 3, lines 10-13) can be attached to an R group, which can have the composition listed in column 4, relevant examples include: phenylethynyl (col. 4, line 23), butylethynyl (col. 4, lines 38-39 and 40).
As to the precursor and the product both being non-metallocene, a non-metallocene is a compound that does not contain a cyclopentadienyl ring (see Wang). Therefore, although Peifer states that the catalyst is a metallocene, from the formula, some of the embodiments include non-metallocenes. Therefore, although Peifer does not specifically state that the product formed is a non-metallocene, since some embodiments use a non-metallocene and the precursors are the same and combined in the same way, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the product made is the same.
Furthermore, since the product made is described in the pre-amble, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the process described would produce the same composition. Further, the courts have held that “A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone”. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
The aluminoxane can be considered the activator. As to the amount of suitable liquid, Peifer explains that the amount of the liquid employed should be enough to dissolve the product of the reaction between the metallocene and the aluminoxane (col. 5, line 17-20). This can be considered an amount “effective for the activator and the productivity-increasing organic compound to chemically convert” the metallocene into the product.
As to the “effective amount” feature, since Peifer describes producing the desired catalyst product (abstract), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of activator and productivity-increasing organic compound used is an effective amount.
As to Claim 4, Peifer states that the R group attached to the C ≡ C can include a large number of compounds (see col. 4, lines 1-50). One example can include 1-3((n-butylethynyl) fluorenyl)2-(indenyl)ethane zirconium (col. 4, lines 40-41). Another example includes: 1,2-bis-(2,7-di(phenylethynyl)(fluorenyl) ethane zirconium dichloride (col. 4, lines 23-24).
As to Claim 6, Peifer describes combining the composition (the metallocene) with an organoaluminoxane (col. 2, lines 17-19) in a liquid (col. 2, lines 18-20), which can be one of those listed in col. 5, lines 15-18), such as toluene. After reacting the components, the solid catalyst is formed (col. 5, lines 32-35) and the solid catalyst is then dehydrated (col. 5, lines 48-53), which can be considered a step of removing the solvent from the reaction. Further, the solvent can be considered inert since it does not contribute to the product.
Claim(s) 2, 3, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peifer and evidenced by Wang as applied to claim 1 above, and further in view of Follestad (US Pat.: 6995219).
Peifer teaches the polymer catalyst (abstract and col. 1, lines 5-10) using a cyclic component (see above), but the reference does not disclose that what each R component is in the cyclic compound.
Follestad describes an olefin polymerization catalyst (abstract, “multisite catalyst”) that can comprise an adjuvant (abstract), a metal:ƞ-ligand complex (col. 3, lines 55-57). The ƞ-ligand may be: CpYm (see formula I) or CpAMQqXn (formula III) or the compound in formula IV (see col. 11, line 40).
The Cp or CpA compound can be one of those listed in col. 12, lines 10-65 to col. 13, lines 1-40). The R in each of these may include fluoroalkyls (col. 14, lines 44-46). The Rs can independently include alkyls (col. 15, lines 1-2, hydrogen (col. 15, line 6), but can also include a fluorine or a chlorine (col. 15, lines 10-13).
Therefore, since any of the Rs can include a halide and/or a hydrogen or alkyl, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that R5 or R3 can be halogens, while the others can include hydrogen since that is within the considered embodiments of the reference.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the precatalyst of Follestad with the precatalyst of Peifer and evidenced by Wang because Follstad explains that some of R groups in the cyclic compound can individually include fluoroalkyl, alkyl, hydrogen, fluorine or chloride to produce a reasonable expectation of success.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peifer and evidenced by Wang as applied to claim 1 above, and further in view of Matsushita (US Pub.: 2015/0011701).
Peifer and evidenced by Wang do not disclose the order described in Claim 7.
Matsushita describes a polymerization catalyst (para. 76-80) using a metallocene complex (para. 80). When making the catalyst, Matsushita teaches combining an aluminoxane composition (para. 106, 107, 108) with a metallocene complex and all the compositions prior to adding the toluene solvent (para. 106).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the order to addition of the components, to include adding the metallocene with the aluminoxane prior to adding the solvent, as taught by Matsushita for use with the process of making the polymer catalyst of Peifer and evidenced by Wang because adjusting the order to addition is known to produce the same product that would have the same predictable expectations of success.
Claim(s) 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peifer and evidenced by Wang as applied to claim 1 above, and further in view of Savatsky (US Pat.: 9221937).
The references describe use of cyclic compounds with several possible variations, but they do not describe the specific compound of Claims 8 and 9.
Savatsky teaches a polymerization catalyst (abstract), which is made by a ring or ring systems (col. 7, lines 26-30) with a metal atom (col. 7, lines 48-50, see formula II in col. 9, lines 40-45). The catalyst can include a metallocene with the formula Vb, Vc, Vd, Ve and Vf (see col. 12). Additionally, Savatsky explains that the catalyst can include an additional Group 15 component (col. 18, lines 49-53), which has the formulas: XIIa-XIIf, one of which has the formula:
PNG
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538
372
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Greyscale
M can be Zirconium (col. 21, lines 54-56), which is a group 4 element.
X in the above formula can be one of: fluorine, chlorine, bromine (col. 21, lines 60-63).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the polymer catalyst composition of Savatsky for use with the catalyst composition of Peifer and evidenced by Wang because the compound of Savatsky would lead to predictable catalytic results.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peifer and evidenced by Wang as applied to claim 1 above, and further in view of Liu (CN 1317503).
The references do not describe the ratios used in the generation of the polymer catalyst.
Liu describes a catalyst used for polymerization (title). The reference describes employing a metallocene catalyst by combining it with an aluminoxane toluene solution in a ratio of metallocene: aluminoxane:tolune solution in an amount of 5,000:100-1:1 (see point 2 on page 2) at elevated temperature and mixed (see point 2, on page 2).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a ratio of metallocene: aluminoxane:tolune solution in an amount of 5,000:100-1:1, as taught by Liu for use with the process of Peifer and evidenced by Wang because use of this ratio range would lead to predictable and expected results.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Peifer teaches use of the solvents, such as toluene (see above), but does not describe or suggest use of the solvents listed in Claim 5.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 January 7, 2026