DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The new grounds of rejection set forth below for claims 1 and 3-10 are necessitated by Applicant’s amendment filed on Dec. 4, 2025. In particular, independent claim 1 has been amended to contain a different scope of catalyst compounds. Therefore, claim 1 and claims 3-9 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. Claim 10 is newly presented. For these reasons, the present action is properly made final.
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. § 112(b)
Claims 1 and 3-10 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.
Independent claim 1 recites a chemical formula (a1) which includes moieties (X). The claim does not set forth the scope of the moieties (X). The claim therefore does not set forth the scope of the claimed methods with reasonable clarity. Claims 3-10 are dependent upon independent claim 1, and they are indefinite for the same reason.
Claim Rejections – 35 U.S.C. § 103
Claims 1 and 3-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Chemical Communications 2006, 25, 2659-2661 (herein “Nomura”) in view of CN 108864337 A (herein “Gao”). A computer-generated English translation of Gao is attached to the Office action mailed on Sep. 8, 2025 and is referred to herein.
As to claims 1, 3, and 6-8: Nomura describes methods (see Runs 10-16 in Table 1) for producing a copolymer comprising units of norbornene and ethylene (see above the Table). The method (see section 1.2 of the Supplementary Information) includes charging the monomers into a polymerization vessel and polymerizing them in the presence of a metallocene catalyst according to the presently recited chemical formulas (see catalyst 4 in Scheme 1).
Nomura does not disclose 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, 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 Nomura in order to provide access to block polymers. It would have been obvious to one of ordinary skill in the art to have included diethylzinc, triisopropylaluminum, or triisobutylaluminum as a chain shuttling agent in the process of Nomura.
As to claims 4-5 and 10: Nomura’s polymerization further includes the aluminoxane MAO (see Table 1).
As to claim 9: Because the method suggested by the combination of Nomura and Gao includes the same monomers and the same catalyst system as the presently claimed method, there is a reasonable basis to conclude that the method suggested by the combination of Nomura and Gao would produce the same polymer as does the presently claimed method, including the characteristic that it possesses an amount of polyethylene-like impurity within the scope of the presently recited testing conditions.
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 and 3-10 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, and the scope of the metallocene catalysts recited in US ‘786 overlaps the presently recited chemical formula (a1) (see the chemical formulas (a1a) and (a1d) 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, 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 3-5 and 9-10 are adequately set forth in claims 3-4, 7, and 9 of US ‘786.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-10 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 Gao.
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). The monomers are polymerized in the presence of a metallocene catalyst, and the scope of the metallocene catalysts recited in US ‘786 overlaps the presently recited chemical formula (a1) (see the chemical formulas (a1) and (a1a) 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, 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 9-10 are adequately set forth in claims 1, 4, and 6 of US ‘420.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments filed Dec. 4, 2025 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejections under 35 U.S.C. §§ 102 and 103 over Gao; and the rejection of claim 6 under 35 U.S.C. § 112(b) that were set forth in the preceding Office action have been withdrawn in light of the amendments of claims 1 and 6.
In light of the amendments of claim 1, new grounds of rejections have been set forth above under 35 U.S.C. §§ 103 and 112(b).
Applicant does not present a substantive rebuttal of the double patenting rejections. The double patenting rejections have been recast above to reflect the current scope of the claims, but they are otherwise the same as those set forth previously.
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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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