DETAILED ACTION
This communication responds to the application and amended claim set filed May 15, 2023, and the Response to Restriction Requirement filed January 21, 2026. Claims 1-18 are currently pending.
Non-elected claims 13-16 are WITHDRAWN.
Elected claims 1-12, 17, and 18 are REJECTED for the reasons set forth below.
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
Applicant’s election without traverse of Group I, claims 1-12, 17, and 18, in the reply filed on January 21, 2026 is acknowledged.
Priority
This application is the national stage entry of PCT/CN2021/089891, filed April 26, 2021, which claims priority to CN 2020-10352921.X, filed April 28, 20202. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Regarding claim 1, the word “or” in line 5 should be changed to “and” (“… wherein R is selected from alkyl, aryl, akenyl, and hydrogen …”) to avoid a rejection under 35 USC 112 as to whether Applicant intends a closed Markush group.
Regarding claim 8, the phrase “and/or” in line 7 should be changed to “and” (“… wherein the titanium halide is selected from titanium bromide and titanium chloride…”) to avoid a rejection under 35 USC 112 as to whether Applicant intends a closed Markush group.
Appropriate correction is required.
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.
Claims 1-12, 17, and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, it is not clear how the “organic silicon polymer” [RxSiO((4-x)/2]m can be organic when R is hydrogen, or when x is 0. In both cases, there is no organic fragment or constituent part of the polymer.
Claims 4-12, 17, and 18 depend from claim 1 and do not correct claim 1’s deficiencies. Thus, they are indefinite for the reasons claim 1 is indefinite.
Regarding claims 2 and 3, it is not clear how the “organic silicon polymer” [RxSiO((4-x)/2]m can be organic when R is hydrogen. When R is hydrogen, there is no organic fragment or constituent part of the polymer.
Regarding claim 5, the phrase “the organic silicon polymer having a reticular structure” lacks sufficient antecedent basis. The examiner suggests that claim 5 more appropriately depends from claim 4.
Regarding claim 6, the phrase “the organic silicon polymer having a linear structure” lacks sufficient antecedent basis. The examiner suggests that claim 6 more appropriately depends from claim 4.
Regarding claim 7, it is not clear how an organic silicon polymer is formed from a monomer when R is hydrogen, or when y is 0. In both cases, there is no organic fragment or constituent part of the monomer that would result in an organic polymer.
Regarding claims 8-10, 17, and 18, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitations following the phrases are part of the claimed invention. (See MPEP § 2173.05(d).)
Regarding claim 8, it is not clear whether the recited titanium halide reduction with aluminum and magnesium are necessary and produce required components in the claimed catalyst component, or if they are merely descriptive. If required, it is not clear where the aluminum comes from, as an aluminum compound is not necessarily present in the catalyst component of claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7-10, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fottinger et al. (US 2002/0095014), as evidenced by Wacker Silicone Fluids AK (2002).
Regarding claims 1-4, 7, and 8, Fottinger teaches a catalyst system for the polymerization of olefins comprising an inorganic metal oxide support, a magnesium compound, a titanium compound, an electron donor, and a polysiloxane. (Abstract.) A preferred polysiloxane is Wacker Chemie AK 100,000 (see Ex. 2), whose structure is shown below:
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AK 100,000 has an Mn of 74,000 g/mol, which is within the claimed range. (See Wacker Silicone Fluids AK, p. 2.)
Regarding claims 2 and 3 specifically, the examiner interprets the limitations following “preferably” as merely preferential statements and not required limitations.
Regarding claim 7 specifically, claim 7 is interpreted as a product-by-process claim in which patentability is determined by the claimed product, not the process by which the product is made. In this instance, Fottinger teaches the claimed catalyst component.
Regarding claim 5, the examiner interprets the limitation “wherein the number-average molecular weight of the organic silicon polymer having a reticular structure” to mean that if such a polymer is present, the Mn would fall within the recited range. As shown above, the Wacker Chemie AK 100,000 is a linear polymer, and a polymer with a reticular structure is not present. Further, the molecular weight distribution (as well as Mw) of AK 100,000 is unreported. However, given AK 100,000’s uniform flow properties (particularly viscosity over a range of temperatures), it is reasonable to infer that the MWD is narrow, i.e., close to 1, which is within the claimed range.
Regarding claim 9, Fottinger teaches that magnesium halides are preferred magnesium compounds (see para. [0031]), and THF is a preferred internal donor (see Ex. 2).
Regarding claim 10, Fottinger teaches that the spray dried silica gel (SiO2) is the preferred inorganic metal oxide, and that the spray dried silica gel has a preferred particle diameter of 1 to 5 microns (see para. [0027]), which is within the claimed range.
Regarding claims 17 and 18, Fottinger teaches a catalyst system comprising the catalyst component discussed above and a cocatalyst, preferably alkyl aluminum compounds such as TMA and TIBAL. (para. [0055].)
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.
Claims 6, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fottinger et al. (US 2002/0095014).
Regarding claim 6, Fottinger teaches all of the limitations of claim 1. (See paragraph 21 above, which is incorporated herein.) While Fottinger does not teach a particular or preferred polysiloxane with an Mn within the recited range, Fottinger generally teaches linear polysiloxanes with the following structure and q values of 3 to 4000:
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(paras. [0044]-[0045].) When R is CH3 (which is preferred, see para. [0045]), the linear polysiloxanes have an Mn ranging from 222 to 296,000 g/mol, which overlaps the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Fottinger.
Regarding claims 11 and 12, Fottinger teaches that the titanium is present in the amount of 1-10 wt.% (see para. [0049]), but does not provide a clear disclosure as to the relative amounts of the other components. Rather, Fottinger teaches exemplar amounts used in the reactions to form the catalyst component, but does not disclose enough information to determine whether the reactions proceed to completion or which elements are used in excess. However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of catalyst components to balance activity and desirable properties of the resulting polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763