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 .
Claim Rejections – 35 U.S.C. § 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 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 and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CN 108864337 A (herein “Gao”). The attached computer-generated English translation of Gao is referred to herein.
As to claims 1, 3, and 7: Gao describes a method (see Example 12 in ¶¶ [0190]-[0194] of the translation) comprising charging ethylene and norbornene to a reactor, polymerizing them in the presence of a metallocene (see catalyst A1 in ¶ [0193] of the translation and the structure in ¶ [0082] of the original document) and diethylzinc (see DEZ). The metallocene comprises a Cp* ligand and an oxygen atom bonded to titanium and to an sp2 carbon.
As to claim 2: The cited metallocene corresponds to the presently recited formulas (a1) and (a1a) (see the structure in ¶ [0082] of the original document).
As to claims 4-5: The cited method further includes methylaluminoxane (see ¶ [0193] of the translation).
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 6 and 8 are rejected under 35 U.S.C. § 103 as being unpatentable over Gao.
The discussion set forth above regarding Gao is incorporated here by reference. As set forth above, Gao describes a method according to base claims 1 and 7.
The cited method of Gao includes diethylzinc. Gao further discloses (see ¶¶ [0063]-[0064] of the translation) that the chain shuttling agent may be selected from a list including diethylzinc as well as triisopropylaluminum and triisobutylaluminum, among others.
Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B).
In the present case, Gao describes a method (Example 12) which differs from the claimed method by the substitution of triisopropylaluminum or triisobutylaluminum for diethylzinc. As evidenced by the discussion above, the substituted components triisopropylaluminum or triisobutylaluminum and their function as chain shuttling agents are disclosed by Gao. One of ordinary skill in the art could have substituted triisopropylaluminum or triisobutylaluminum for diethylzinc in the cited method of Gao by simple substitution and mixing of the reagents according to the procedure of the example. The results of the substitution (an alternative chain shuttling agent) would have been predictable.
In light of this discussion, it is apparent that the presently claimed invention is arrived at by simple substitution of one known element for another to obtain predictable results. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have substituted triisopropylaluminum or triisobutylaluminum for diethylzinc in Gao’s method of Example 12, thereby arriving at the presently claimed invention.
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claim 6 is 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.
Claim 6 recites an alkylzinc compound that has “at least one branched alkyl group bonded to a Zn atom and having 2 to 8 carbon atoms”. The claim does not set forth with reasonable clarity the scope of a branched alkyl group that has only 2 carbon atoms.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending application serial no. 18/029,786 in view of Gao.
As to claims 1 and 6-8: US ‘786 claims an article that is made by a process comprising polymerizing norbornene and ethylene in a vessel (see claim 1 of US ‘786), and this necessarily entails charging the monomers to the vessel. The monomers are polymerized in the presence of a metallocene catalyst comprising a cyclopentadienyl ligand and an oxygen atom bonded to titanium and to an sp2 carbon (see the chemical formulas in claim 3 of US ‘786).
US ‘786 does not claim the presently recited alkylmetal compound.
Gao describes a method of polymerizing olefins in which block polymers can be prepared under the action of a chain shuttling agent (see ¶ [0012] of the translation). The chain shuttling agent may be selected from a list including diethylzinc as well as triisopropylaluminum and triisobutylaluminum, among others (see ¶¶ [0063]-[0064] of the translation).
In light of Gao, one of ordinary skill in the art would have been motivated to include a chain shuttling agent such as diethylzinc, triisopropylaluminum, or triisobutylaluminum in the process of US ‘786 in order to provide access to block polymers. It would have been obvious to one of ordinary skill in the art to have included a chain shuttling agent such as diethylzinc, triisopropylaluminum, or triisobutylaluminum in the process of US ‘786.
The further limitations of present claims 2-5 and 9 are adequately set forth in claim 3-4, 7, and 9 of US ‘786.
This is a provisional nonstatutory double patenting rejection.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending application serial no. 18/247,420 in view of Klosin.
As to claims 1 and 6-8: US ‘420 claims a method comprising charging norbornene and ethylene into a vessel (see claim 1 of US ‘420) and polymerizing them in the presence of a metallocene catalyst comprising a cyclopentadienyl ligand and a nitrogen atom bonded to titanium, zirconium, or hafnium, and to an sp2 carbon (see the chemical formula in claim 1 of US ‘420).
US ‘420 does not claim the presently recited alkylmetal compound.
Gao describes a method of polymerizing olefins in which block polymers can be prepared under the action of a chain shuttling agent (see ¶ [0012] of the translation). The chain shuttling agent may be selected from a list including diethylzinc as well as triisopropylaluminum and triisobutylaluminum, among others (see ¶¶ [0063]-[0064] of the translation).
In light of Gao, one of ordinary skill in the art would have been motivated to include a chain shuttling agent such as diethylzinc, triisopropylaluminum, or triisobutylaluminum in the method of US ‘420 in order to provide access to block polymers. It would have been obvious to one of ordinary skill in the art to have included a chain shuttling agent such as diethylzinc, triisopropylaluminum, or triisobutylaluminum in the process of US ‘420.
The further limitations of claims 2-5 and 9 are adequately set forth in claims 1, 4, and 6 of US ‘420.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764