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 .
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.
Election/Restrictions
As set forth in the prior Office action, claims 18 and 19 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1 July 2025.
New claim 31 is drawn to the catalyst system of claim 1, wherein the first and second catalysts are the same catalyst compound. This combination is not commensurate with the elected species, wherein the first catalyst compound is dimethylsilandiyl(4-(3', 5'-di-tert-butyl- 4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2 and the second catalyst compound is dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)(cyclododecylamido)Ti(CH3)2, which is different from the first catalyst compound. Accordingly, claim 31 is withdrawn from further consideration.
Claims 8, 24-28, and 31 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species. Applicant timely traversed the restriction (election) requirement in the reply filed on 1 July 2025.
Claim Amendments
Applicant’s amendments to claims 1-2, 4, 12-16, and 26-27 are acknowledged and accepted. The prior objection to claim 16 and rejection of claim 4 as an improper Markush grouping are withdrawn.
New claims 29-34 are acknowledged. Claim 31 is withdrawn for the reasons described above; claims 29-30 and 32-34 have been considered below.
Claim Rejections - 35 USC § 102
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, 2, 4-5, 12, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Min et al. (WO 2020/101373 A1), as evidenced by Tian et al. (US 2013/0230718 A1), Spaleck et al. (Organometallics 1994, 13, 954-963), and Kaminsky et al. (Macromol. Symp. 2003, 195, 39-44). The provided English machine translation of Min (WO 2020/0101373 A1) is used in the analysis below.
[AltContent: textbox ([img-media_image1.png] [img-media_image2.png]
Fig. 1A Fig. 1B)]Regarding claim 1, Min discloses a catalyst system ([0014]) comprising a support (silica, specifically XPO-2412; [248]), a first catalyst compound (Fig. 1A, below, from [142] of original WIPO Pub.), and a second catalyst compound (Fig. 1B, from [171] of original WIPO Pub.), where each catalysts compound is supported on the support (a carrier co-supporting the first and second transition metal compounds; [0014]).
The XPO-2412 support used by Min has a surface are of ~474 m2/g, as evidenced by Tian (p. 7, Table 1), which is greater than 400 m2/g, as required by the instant claim. Min also discloses that the first catalyst is capable of producing crystalline polypropylene ([0083] and [0123]), and Spaleck provides evidence that the specific first catalyst compound used in this embodiment is capable of producing polypropylene with a melting point (Tm) of 155 °C (catalyst 7a, Scheme 1 and Table 5), which is greater than the Tm of 100°C required by the instant claim.
Kaminsky provides evidence that the second catalyst compound of Min, [Me2Si(NtBu)(Me4Cp)]TiCl2, is capable of producing a vulcanizable elastomer in a second polymerization reaction (constrained geometry catalysts ([Me2Si(NtBu)(Me4Cp)]TiCl2) were used to copolymerize ethene and 1,3-butadiene…the high amount of 9-29% of vinyl groups offers the possibility of an easy vulcanization; abstract).
Regarding claim 2, Min discloses the catalyst system of claim 1, where the first catalyst compound (shown in Fig 1A) is a bridging C2 metallocene and the second catalyst compound is a constrained geometry catalyst (shown in Fig 1B).
Regarding claim 4, Min discloses the catalyst system of claim 1, where the second catalyst compound, shown in Fig 1B, meets the structural limitations required by the instant claim. In particular, the catalyst corresponds to formula (II) where Cp is a substituted cyclopentadienyl (tetramethylcyclopentadienyl); M is a group 4 transition metal (titanium); G is a heteroatom group represented by NR*1, where R* is a branched C4 hydrocarbyl (tert-butyl); X is the leaving group chloride; m=1, n=1, q=2, and the oxidation state of the transition metal is m+n+q=4.
Regarding claim 5, Min discloses the catalyst system of claim 4, where J is N and R* is tert-butyl, an isomer of butyl, and where Cp is tetramethylcyclopentadienyl, as shown in Fig. 1B.
Regarding claim 12, Min discloses the catalyst system of claim 1, where the second catalyst compound is that shown in Fig 1B and where this catalyst matches a structure recited in the Markush group of claim 12 (row 2, column 1).
Regarding claim 16, Min teaches the catalyst system of claim 1, where the molar ratio of the first catalyst compound to the second catalyst compound is 1:4 (Supported catalyst 7; [0253] and Table 2 in original WIPO pub.; translation provided below).
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782
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Regarding claim 17, Min teaches the catalyst system of claim 1, where the support material comprises XPO-2412 ([0248]) which has a surface area calculated using the BET method of ~474 m2/g, as evidenced by Tian ([0070] and p. 7, Table 1), and meets the limitation of a surface area from 400 m2/g to 800 m2/g, as required by the instant 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.
Claims 4-5 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Min et al. (WO 2020101373 A1), as evidenced by Tian et al. (US 2013/0230718 A1) and Spaleck et al. (Organometallics 1994, 13, 954-963). The provided English machine translation of Min (WO 20200101373 A1) is used in the analysis below.
Regarding claims 4 and 12-13, Min discloses the catalyst system of claim 1 with the embodiment described in the analysis of claim 1 above, but also teaches that the second catalyst can be selected from the broader group of structures depicted by Fig. 2B (copied from the original WIPO publication at [43]), where the substitution is defined by [0044]-[0050] of the provided machine translation.
[AltContent: textbox ([img-media_image4.png]
Fig. 2B)]
The species elected for the second catalyst, dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)(cyclododecylamido)Ti(CH3)2, corresponds to the one defined by instant claim 4 where Cp is tetramethylcyclopentadienyl (a substituted cyclopentadienyl); M is titanium (a group 4 transition metal); G the heteroatom groups represented by NR*1, where R* is cyclododecyl (a cyclic C12 hydrocarbyl); and X is methyl (a leaving group per instant specification [0203]; where, m=1, n=1, q=2 and the oxidation state of the transition metal is 4. This same catalyst is disclosed by Min, when in Fig 2B: M4 is titanium (a group 4 transition element; [0045]), A3 is silicon (a group 14 element; [0047]); Q7-8 are methyl (C1 alkyl; [0046]); R34-39 are methyl (C1 alkyl; [0048] and [0050]); and R40 is cyclododecyl ([0048] and [0061]). This second catalyst compound also meets the further limitations of claims 12 and 13.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the second catalyst being dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)(cyclododecylamido)Ti(CH3)2 by selecting M4 as titanium (a group 4 transition element), A3 as silicon (a group 14 element), Q7-8 as methyl (C1 alkyl), R34-39 as methyl (C1 alkyl), and R40 as cyclododecyl (a cycloalkyl) from the list of alternatives suggested by Min. One of ordinary skill in the art would have been motivated to do so because Min teaches this as an alternative to the catalyst described more fully and depicted in Fig 1B above (original WIPO publication [171]).
It is noted that like the second catalyst compound of Fig. 1B, the second catalyst compound of dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)-(cyclododecylamido)Ti(CH3)2 will also be capable of forming a vulcanizable elastomer, as it is identical to the elected species for the second catalyst compound of the instant invention (p. 127-134 of the instant specification). Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 5, Min teaches the catalyst system of claim 4, where J is N and R* is cyclododecyl (R40 is C12 cycloalkyl; Fig. 1B and Min [0048] and [0061]), and where Cp is tetramethylcyclopentadienyl (R34-37 are C1 alkyl; Fig 1B and Min [0048]).
Claims 3, 10 ,14-15, 29-30, and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Min et al. (WO 2020101373 A1), as evidenced by Tian et al. (US 2013/0230718 A1) and Spaleck et al. (Organometallics 1994, 13, 954-963), as applied to claim 1 above, and further in view of Hagadorn et al. (US 2017/0342175 A1). The provided English machine translation of Min (WO 20200101373 A1) is used in the analysis below.
Regarding claims 3, 10, 14 and 15, Min discloses the catalyst system of claim 1, as analyzed above, and further discloses that the first catalyst compound may be selected from a group that includes compounds defined by the structure shown below in Fig 3A (copied from original WIPO publication at [16]), where the substitution is defined in [0018]-[0024] of the provided machine translation.
[AltContent: textbox ([img-media_image5.png]
Fig. 3A)]
The elected species for the first catalyst, dimethylsilandiyl(4-(3', 5'-di-tert-butyl-4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2, meets the further limitations of claims 3, 10, 14, and 15, and fits within the compounds described by Min according to the following assignments:
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200
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336
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Claim 3 Drawing
Assignment
Min Drawing
([26])
Assignment and [ref]
M1
zirconium
M1
zirconium (group 4 transition metal) [0018] and [0059]
R1, R2
chlorine (halogen)
Q1, Q2
chlorine (halogen group) [0019] and [0060]
R4, R6, R7, R8, R10, R11, R12, R13
hydrogen
R2, R8, R10, R11, R12
hydrogen [0021]
R9
hexyl (linear alkyl)
R7
hexyl (C6 alkyl) [0021]
R3
methyl (linear alkyl)
R1
methyl (C1 alkyl) [0021]
R5
3,5-di-tert-butyl-4-methoxy-phenyl (substituted hydrocarbyl)
R3, R4
combined with each other to form an aryl ring and containing 3,5-di-tert-butyl-4-methoxy-phenyl (an alkyl aryl substituted with an ether group) [0021]-[0022]
R14
phenyl (C6 aryl)
R9
o-biphenyl (aryl) [0021]
R15, R16, R17, R18
hydrogen
R19
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88
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where, M2 is silicon and R20/R21 is methyl (C1 alkyl)
A1
silicon (group 14 element) [0020] and [0077]
R5, R6
methyl (C1 alkyl) [0024]
While the disclosure of Min includes the elected species for the first catalyst, it is only one possibility among a very large set of compounds.
However, Hagadorn also discloses the same dimethylsilandiyl(4-(3', 5'-di-tert-butyl-4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2 polypropylene catalyst, written as Me2Si(4-oPh2-2-nC6-Ind)(2-Me-4-(3′,5′-tBu2-4′-OMe-Ph)-Ind)ZrCl2 ([0094]), and teaches that there is a need for new and improved catalyst systems to achieve specific polymer properties [0019].
Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the specific catalyst compound taught by Hagadorn as the first catalyst in the system of Min. One of ordinary skill in the art would have been motivated to do so because Min teaches that catalysts of this general structure are appropriate in their system, and Hagadorn teaches that this catalyst in particular may provide improved or varied polymer properties.
Regarding claims 29-30 and 32-34, Min discloses the catalyst system of claim 1, as analyzed above. Min also teaches that the second catalyst can be selected from the broad group of structures depicted by Fig. 2B above (copied from the original WIPO publication at [43]), where the substitution is defined by [0044]-[0050] of the provided machine translation.
One of these compounds disclosed by Min for the second catalyst is identical to the elected species for the second catalyst compound, dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)(cyclododecylamido)Ti(CH3)2, and is represented by Fig. 2B where: M4 is titanium (a group 4 transition element; [0045]), A3 is silicon (a group 14 element; [0047]); Q7-8 are methyl (C1 alkyl; [0046]); R34-39 are methyl (C1 alkyl; [0048] and [0050]); and R40 is cyclododecyl ([0048] and [0061]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select as the second catalyst compound dimethylsilandiyl(2,3,4,5-tetramethylcyclopentadienyl)(cyclododecylamido)Ti(CH3)2 from the list of alternatives suggested by Min. One of ordinary skill in the art would have been motivated to do so because Min teaches this as an alternative to the catalyst described and depicted in Fig 1B above (original WIPO publication [171]).
Min further discloses that the first catalyst compound may be selected from a group that includes compounds defined by the structure shown in Fig 3A above (copied from original WIPO publication at [16]), where the substitution is defined in [0018]-[0024] of the provided machine translation. One compound in this class is dimethylsilandiyl(4-(3', 5'-di-tert-butyl-4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2, which is identical to the elected species for the first catalyst compound. This structure fits within the compounds described by Min according to the assignments in the table above. Therefore, Min teaches the elected species for the first catalyst, though it is only one possibility among a very large set of compounds.
However, Hagadorn also discloses the same dimethylsilandiyl(4-(3', 5'-di-tert-butyl-4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2 polypropylene catalyst, written as Me2Si(4-oPh2-2-nC6-Ind)(2-Me-4-(3′,5′-tBu2-4′-OMe-Ph)-Ind)ZrCl2 ([0094]), and teaches that there is a need for new and improved catalyst systems, such as this one, to achieve specific polymer properties [0019].
Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the specific catalyst compound taught by Hagadorn as the first catalyst in the system of Min. One of ordinary skill in the art would have been motivated to do so because Min teaches that catalysts of this general structure are appropriate in their system, and Hagadorn teaches that this catalyst in particular may provide improved or varied polymer properties.
Each of claims 29-30 and 32-34 are defined by further limits on what the first catalyst compound and the second catalyst compound are “capable of.” 1
Both the first catalyst compound and the second catalyst compound that correspond to the elected species are taught by the prior art, and each of these compounds will have all of the capabilities required by claims 29-30 and 32-34, as revealed by the instant specification (p. 127-134), as “[p]roducts of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Because the prior art teaches the same first and second catalyst compounds as instantly disclosed, these compounds will have the same properties, including the same capability to carry out the reactions described by claims 29-30 and 32-34.
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, 2, 4-5, 12-13, and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No US 10,822,434 B2 in view of Min (WO 2020101373 A1) and as evidenced by Tian et al. (US 2013/0230718 A1).
Regarding claim 1, claim 14 of the ‘434 patent teaches a catalyst system comprised of a support, a first catalyst and a second catalyst compound. The instant specification provides evidence that the first catalysts claimed in the ‘434 patent are compounds capable of producing olefin polymer having a Tm of 100°C or more in a first polymerization reaction and that the second catalyst compounds of the ‘434 patent are capable of producing a vulcanizable elastomer or vulcanizable plastomer in a second polymerization reaction. The claims do not specifically teach the surface area of the support, but they do teach the use of silica.
However, Min teaches a similar catalyst system and specifically teaches the use of XPO-2412 as the silica support, a support with a surface area of ~474 m2/g, as evidenced by Tian (p. 7, Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teaching of claim 14 of the ‘434 patent to include the specific silica support taught by Min. One of ordinary skill would have found it obvious to do so because they would be combining the general teaching to use a silica support taught by the ‘434 patent with the specific support taught for a related system by Min. This would represent the simple combination of prior art elements according to known methods with predictable results. MPEP 2143(I)A.
Regarding instant claims 2, 4, 5, 12, 13, claim 1 of the ‘434 patent, upon which claim 14 depends, recites structures for the first and second catalyst that teach each of the additional limitations of these claims.
Regarding instant claim 16, Min further teaches the use of the first and second catalysts in a 1:4 ratio (Table 2). It would have therefore been obvious to use this ratio in the related system disclosed by the ‘434 patent as one would be combining prior art according with predictable results.
Regarding instant claim 17, the ‘434 patent as modified by Min teaches the use of XPO-2418 as the support, which has a surface area calculated using the BET method of ~474 m2/g, as evidenced by Tian ([0070] and Table 7), meeting the limitations of a surface area between 400 m2/g and 800 m2/g.
Claims 3, 10, 14-15, 29-30, and 32-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No US 10,822,434 B2 in view of Min (WO 2020101373 A1), as evidenced by Tian et al. (US 2013/0230718 A1), and further in view of Hagadorn et al. (US 2017/0342175 A1). The provided English machine translation of Min (WO 20200101373 A1) is used in the analysis below.
Regarding claims 3, 10, and 14-15, modified claim 14 of the ‘434 patent teaches all the limitations of instant claim 1, as well as a broad class of compounds that define the first catalyst and include structures that could meet the limitations of the instant claims, but do so only broadly.
However, Hagadorn also discloses related polymerization catalysts including dimethylsilandiyl(4-(3', 5'-di-tert-butyl-4'-methoxy-phenyl)-2-methylindenyl)(4-o-biphenyl-2-hexyl-indenyl)ZrCl2 polypropylene catalyst, written by Hagadorn as Me2Si(4-oPh2-2-nC6-Ind)(2-Me-4-(3′,5′-tBu2-4′-OMe-Ph)-Ind)ZrCl2 ([0094]), and teaches that there is a need for new and improved catalyst systems to achieve specific polymer properties [0019].
Therefore, it would have been obvious, to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the specific catalyst taught by Hagadorn as the first catalyst in the system of claim 14. One of ordinary skill in the art would have been motivated to do so because the ‘434 patent teaches that catalysts of this general structure are appropriate in their system, and Hagadorn teaches that this catalyst in particular may provide improved or varied polymer properties. This catalyst meets all the additional limitations of claims 3, 10, and 14-15.
Regarding claims 29-30 and 32-34, modified claim 14 of the ‘434 patent teaches the same catalyst compounds as the instant invention, as analyzed above.
“Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Because the ‘434 patent, as modified by Min and Hagedorn, teaches the same the same first and second catalyst compounds as instantly disclosed, these compounds will have the same properties, including the same capability to carry out the reactions described by claims 29-30 and 32-34.
Response to Arguments
Applicant's arguments filed 27 October 2025 with respect to the rejections under 35 USC § 102 and 35 USC § 103 have been fully considered but they are not persuasive.
In particular, Applicant’s arguments with respect to the rejections under 35 USC § 102 are not persuasive because while Min is silent on the capability of their catalysts to generate vulcanizable elastomers or plastomers, this capability is inherent in the catalyst compounds they disclose, as evidenced by Kaminsky and analyzed above. Therefore, the prior rejections are maintained.
Furthermore, the catalyst compounds taught by Min, alone or in combination with Hagadorn, are identical to the catalyst compounds instantly claimed. All further limitations in the instant claims are directed to reactions which the catalyst compounds are “capable of”.
“Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Because the prior art teaches the same first and second catalyst compounds as instantly disclosed, these compounds will have all the same properties, including the same capability to carry out the reactions required by the instant claims.
Applicant’s arguments regarding the double patenting rejections, pages 19-21, are also not persuasive.
Applicant argues that claim 1 of the ‘434 patent does not teach the capabilities of the first and second catalyst recited in the instant claims. However, the ‘434 patent recites catalyst compounds which will necessarily have the capabilities required by the instant claims. Therefore, the double patenting rejections are maintained.
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
1 Claim 30 places additional limits on the reaction zones in which the catalyst must be capable of performing a given reaction, but these limitations are still limitations on the capabilities of the catalyst compounds themselves.