DETAILED ACTION
This office action follows a response filed on January 20, 2026. Claims 1, 2, 4-10, 12-14, and 16-19 were amended to correct matters of form. Claims 1-19 are pending.
Claim Objections
Claim 14 is objected to because of the following informalities: In line 3, please replace “Triphenylcarbenium” with “triphenylcarbenium”.
Claim 14 is objected to because of the following informalities: In lines 3-5, please replace the lengthened underscore mark with a single space (three occurrences).
Double Patenting
Claims 1-8 and 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-13 of U.S. Patent No. 12,540,206. Although the claims at issue are not identical, they are not patentably distinct from each other. Patent claims are drawn to an ethylene-1-octene copolymer having a density of 870 to 890 kg/m3, MFR2 of 0.5 to 8.0 g/10 min, a MFR21/MFR2 of 25 to 40, Mw/Mn of 2.6 to 3.3, a vinyl content of 3.5 to 6.5 vinyl groups per 100,000 carbon atoms, a vinylidene content of 10.0 to 20.0 per 100,000 carbon atoms, a vinylene content of 7.0 to 14.0 groups per 100,000 carbon atoms, and a trisubstituted vinylene content of 16.0 to 27.0 trisubstituted vinylene groups per 100,000 carbon atoms. Since MFR21 is larger in magnitude than MFR10, one of ordinary skill in the art would have found it obvious that a ratio of MFR10/MFR2 is less than a ratio MFR21/MFR2, such that MFR21/MFR2 of the ethylene-1-octene copolymer lies within the range set forth in instant claims.
Claims 1-8 and 16-19 are directed to an invention not patentably distinct from claims 1-6 and 9-13 of commonly assigned U.S. Patent No. 12,540,206 for the same reasons set forth in preceding paragraph 3.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application U.S. Patent No. 12,540,206, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-8 and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-13 of copending Application No. 18/021,591. Although the claims at issue are not identical, they are not patentably distinct from each other. Copending claims are drawn to an ethylene-1-octene copolymer having a density of 890 to 915 kg/m3, MFR2 of 0.5 to 8.0 g/10 min, a MFR21/MFR2 of 30 to 45, Mw/Mn of 2.5 to 3.0, a vinyl content of 4.0 to 8.0 vinyl groups per 100,000 carbon atoms, a vinylidene content of 9.0 to 14 per 100,000 carbon atoms, a vinylene content of 10.0 to 146.0 groups per 100,000 carbon atoms, and a trisubstituted vinylene content of 15.0 to 24.0 trisubstituted vinylene groups per 100,000 carbon atoms. Since MFR21 is larger in magnitude than MFR10, one of ordinary skill in the art would have found it obvious that a ratio of MFR10/MFR2 is less than a ratio MFR21/MFR2, such that MFR21/MFR2 of the ethylene-1-octene copolymer lies within the range set forth in instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 and 16-19 are directed to an invention not patentably distinct from claims 1-6 and 10-13 of commonly assigned Application No. 18/021,591 for the same reasons set forth in preceding paragraph 5.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned Application No. 18/021,591, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Terminal Disclaimer
The terminal disclaimers filed on January 20, 2026 disclaiming the terminal portion of any patent granted on this application have been reviewed and have NOT been accepted. The Applicant cited on the terminal disclaimers does not match the Applicant cited on the Application Data Sheet. Please resubmit terminal disclaimers in the response to this office action. No fee is required.
Response to Arguments
The rejections of claims under 35 U.S.C. 112(b), set forth in paragraphs 37-42 of the previous office action dated September 25, 2025, have been withdrawn in view of claim amendments.
The provisional nonstatutory double patenting rejection of claims as being unpatentable over claims of copending Application No. 18/021,408, set forth in paragraph 44 of the previous office action, has been withdrawn and replaced with a nonstatutory double patenting rejection over claims of U.S. Patent No. 12,540,206. At the time of writing the previous office action, allowed claims in the copending application had not been published. Please ensure that a terminal disclaimer reflects this change. See also paragraph 7, supra.
The double patenting rejection of claims as being unpatentable over claims of commonly assigned patent US 12,540,206, set forth in paragraph 45 of the previous office action has been maintained. Applicant has not provided a statement of common ownership under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i).
The provisional nonstatutory double patenting rejection of claims as being unpatentable over claims of copending Application No. 18/021,591, set forth in paragraph 46 of the previous office action, has been maintained. The terminal disclaimer associated with this Application has been disqualified. See paragraph 7.
The double patenting rejection of claims as being unpatentable over claims of commonly assigned Application No. 18/021,591, set forth in paragraph 47 of the previous office action has been maintained. Applicant has not provided a statement of common ownership under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i).
Claims are not in condition for allowance. For purposes of completing PTO-326, status of claims 9-15 is listed as “objected to”.
Conclusion
THIS ACTION IS MADE FINAL. 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 Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 March 9, 2026