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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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 1-2 and 4-11 are necessitated by Applicant’s amendment filed on Feb. 4, 2025. In particular, independent claim 1 has been amended to recite Condition A and Condition B in the alternative. Therefore, claim 1 and claims 2 and 4-11 which ultimately depend on amended claim 1 are now different in scope from what they were at the time of the preceding Office action. For this reason, 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. § 102
Claims 1-2, 4-6, and 8-11 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US Patent No. 6,451,946 B1 (herein “Oi”).
As to claims 1 and 4: Oi describes transparent molded articles that are obtained by molding a copolymer (see the abstract). Oi describes an example of such a copolymer (see Example 1) that is made by copolymerizing ethylene and norbornene at a pressure of 0.8 MPa.
The catalyst of Oi’s Example 1 satisfies present Condition A; and is according to present Formulas (a1), (a1a), and (a1c).
As to claim 2: The present claim is drawn to an aspect of Condition B which is recited in base claim 1 in the alternative. Condition B is therefore an optional feature of the claims, and claim 2 stands anticipated by Oi on the ground set forth above with respect to base claim 1.
As to claim 5: The present claims is drawn to an aspect of the process by which the recited copolymer is prepared, and thus the claim is drafted as a product-by-process. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production. MPEP 2113. The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process.
In the present case, the structural aspects of the claimed article (transparency and the comonomer units) are explicitly taught by Oi, and no criticality of the presently recited process conditions to the structure of the copolymer has been demonstrated. For these reasons, the claim stands properly anticipated by Oi, notwithstanding any difference in the method by which Oi’s copolymer is made.
As to claim 6: The copolymer of Oi’s Example 1 has a glass transition temperature of 35 °C (see col. 24, l. 61).
As to claims 8-9: Oi further discloses a borate cocatalyst (see col. 24, l. 50).
As to claim 10: Oi’s copolymer is made in the presence of the hydrocarbon solvent toluene.
As to claim 11: Oi further discloses that the articles can contain known additives such as antioxidants (see col. 23, ll. 20-21).
Claim Rejections – 35 U.S.C. § 103
Claims 1-2, 5, and 7-11 are rejected under 35 U.S.C. § 103 as being unpatentable over CN 113248638 A (herein “Huang”) in view of US Patent No. 6,451,946 B1 (herein “Oi”). The attached computer-generated English translation of Huang is referred to herein.
As to claims 1-2 and 5: Huang describes a process (see Example 8 ¶ [0060] of the translation) of polymerizing norbornene and ethylene at a pressure of 0.8 MPa and a temperature of 135 °C in the presence of a catalyst that satisfies the present Conditions A and B (see formula (8) on p.14 of the original).
Huang does not disclose a molded article of the cited copolymer.
Oi describes transparent molded articles that are obtained by molding a copolymer of ethylene and a cyclic olefin (see the abstract). Oi discloses that the copolymer and molded article thereof are transparent (see the abstract) and that the copolymer can be used for molded articles such as films, sheets, or containers (see col. 22, ll. 60-62).
One of ordinary skill in the art would have been motivated by ordinary creativity to use Huang’s copolymer for purposes for which they would have a reasonable expectation they would be suitable. In light of Oi’s disclosure of the same type of copolymer and its use to make transparent articles such as films, sheets, or containers, one of ordinary skill in the art would have had a reasonable expectation that Huang’s copolymer would be similarly useful for making transparent articles such as films, sheets, or containers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made transparent articles such as films, sheets, or containers using the copolymer of Huang’s Example 8.
As to claim 7: Huang does not disclose the presence or absence of a polyethylene-like impurity in the cited copolymer. Because Huang’s copolymer is made with the same monomers and a catalyst, pressure, and temperature according to the present claims, there is a reasonable basis to conclude that it would have the same composition, including the lack of a polyethylene-like impurity.
As to claims 8-9: The present claims are drawn to aspects of the catalyst that is used to make the copolymer from which the claimed article is made. The claims are thus drafted as a product-by-process. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production. MPEP 2113. The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process.
Because no criticality of the presently recited catalyst features to the structure of the copolymer has been demonstrated, the claims stand properly suggested by Huang and Oi, notwithstanding any difference in the catalyst with which Huang’s copolymer is made.
As to claim 10: Huang’s copolymer is made in the presence of the hydrocarbon solvent xylene.
As to claim 11: Huang does not disclose an antioxidant.
Oi discloses that the molded article described therein can contain known additives such as antioxidants (see col. 23, ll. 20-21).
In light of Oi, one of ordinary skill in the art would have been motivated to include an antioxidant in articles made from Huang’s copolymer in order to improve their resistance to oxidation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included an antioxidant in articles made from Huang’s copolymer.
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 and 4-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,795,256 B2 in view of US Patent No. 6,451,946 B1 (herein “Oi”). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-2 and 4: US ‘256 claims a method comprising polymerizing ethylene and norbornene with a catalyst that satisfies the features recited in Conditions A and B (see claim 1 of US ‘256). US ‘256 does not claim a transparent article made therefrom or the presently recited polymerization pressure of claim 1.
Oi describes transparent molded articles that are obtained by molding a copolymer of ethylene and a cyclic olefin (see the abstract). Oi discloses that the copolymer and molded article thereof are transparent (see the abstract) and that the copolymer can be used for molded articles such as films, sheets, or containers (see col. 22, ll. 60-62). Oi further describes an example of such a copolymer (see Example 1) that is made by copolymerizing ethylene and norbornene at a pressure of 0.8 MPa.
One of ordinary skill in the art would have been motivated by ordinary creativity to use the copolymers made by the method claimed by US ‘256 for purposes for which they would have a reasonable expectation they would be suitable. In light of Oi’s disclosure of the same type of copolymer and its use to make transparent articles such as films, sheets, or containers, one of ordinary skill in the art would have had a reasonable expectation that the copolymers made by the method claimed by US ‘256 would be similarly useful for making transparent articles such as films, sheets, or containers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made transparent articles such as films, sheets, or containers using the copolymers made by the method claimed by US ‘256.
As to claim 5: The present claim is drawn to an aspect of the polymerization process to make the copolymer from which the claimed article is made. The claim is thus drafted as a product-by-process. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production. MPEP 2113. The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process.
Because no criticality of the presently recited temperature feature to the structure of the copolymer has been demonstrated, the claims stand properly suggested by US ‘256 and Oi, notwithstanding any difference in the temperature at which the copolymer of US ‘256 is made.
As to claim 6: US ‘256 does not claim the glass transition temperature of the copolymer.
Oi discloses that the copolymers described therein are useful for molded articles such as films, sheets, or containers (see col. 22, ll. 60-62) and that the articles are excellent in flexibility (see col. 23, ll. 4-6). Oi discloses an example of a copolymer (Example 1) that has a glass transition temperature of 35 °C (see col. 24, l. 61).
In light of Oi, one of ordinary skill in the art would have been motivated to make the copolymers claimed by US ‘256 using the monomer composition described in Oi’s Example 1 in order to produce a copolymer having a glass transition temperature of 35 °C and that would be flexible for use in molded articles such as films. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the copolymers claimed by US ‘256 so as to have a glass transition temperature of 35 °C.
As to claim 11: US ‘256 does not disclose an antioxidant.
Oi discloses that the molded article described therein can contain known additives such as antioxidants (see col. 23, ll. 20-21).
In light of Oi, one of ordinary skill in the art would have been motivated to include an antioxidant in articles made from the copolymers claimed by US ‘256 in order to improve their resistance to oxidation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included an antioxidant in articles made from the copolymers claimed by US ‘256.
The further limitations of present claims 7-10 are adequately set forth in claims 4-7 of US ‘256.
Response to Arguments
Applicant's arguments filed Feb. 4, 2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Regarding the rejection under 35 U.S.C. § 102 over Oi: Applicant argues (p. 9 of Remarks) that there is criticality to the Condition B that is recited in independent claim 1. Applicant points (p. 10 of Remarks) to the present examples and notes that Comparative Example 1 has yellowness index and haze values that are different from those of the inventive examples.
This argument is unpersuasive firstly because claim 1 has been amended such that it no longer requires Condition B. In light of this broadening amendment of claim 1, the position regarding a product-by-process analysis that was set forth in the rejection of claim 1 in the preceding Office action has been withdrawn, as it is no longer necessary to address the limitations of amended (broadened) claim 1.
The argument is unpersuasive secondly because present Comparative Example 1 is drawn to a catalyst that differs from one that is employed in the cited example of Oi. The argued comparative example is thus not representative of the portion of Oi’s disclosure that is relied upon in the rejection, and the argued comparative example does not identify a distinction between the claimed articles and those described by Oi.
Applicant further argues (p. 10 of Remarks) that the rejection under 35 U.S.C. § 103 and the double patenting rejection are traversed for the same reasons set forth with respect to Oi. These arguments do not distinctly and specifically point out the supposed errors in the rejections, and these rejections have been 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 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.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764