DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 in the reply filed on January 27, 2026 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: A process claim requires at least one action verb. In line 3, please replace “a copolymerizing step” with “copolymerizing”.
Claim 1 is objected to because of the following informalities: In line 5, please insert “at least one” prior to “olefin monomer”.
Claim 1 is objected to because of the following informalities: In line 8, please insert “at least one” prior to “functionalized olefin monomer”.
Claim 1 is objected to because of the following informalities: In line 8, please replace “the structure” with “a structure”.
Claim 1 is objected to because of the following informalities: In line 13, please replace “an entire number” with “a whole number” or with “an integer”.
Claim 1 is objected to because of the following informalities: In lines 15 and 16, delete “when” prior to definition of integer n.
Claim 1 is objected to because of the following informalities: In line 23, please replace “the main” with “a main”.
Claim 1 is objected to because of the following informalities: On page 5, line 4, please replace “fluorated” with “fluorinated”.
Claim 2 is objected to because of the following informalities: In lines 1 and 2, please replace “the polymerization step” with “copolymerizing”.
Claim 2 is objected to because of the following informalities: In line 2, please replace “perform” with “performed”.
Claim 2 is objected to because of the following informalities: In line 2, please replace “the aluminum” with “an aluminum”.
Claim 4 is objected to because of the following informalities: In line 1, delete “the” which appears after “at least one”.
Claim 4 is objected to because of the following informalities: In line 2, please replace “monomers” with “monomer”.
Claim 5 is objected to because of the following informalities: In line 1, please replace “the amount” with “an amount”.
Claim 5 is objected to because of the following informalities: In line 2, please insert “at least one” prior to “functionalized”.
Claim 5 is objected to because of the following informalities: In line 2, please replace “monomers” with “monomer”.
Claim 5 is objected to because of the following informalities: In line 2, delete “obtained in step b)”.
Claim 5 is objected to because of the following informalities: In line 3, please replace “the total” with “a total”.
Claim 5 is objected to because of the following informalities: In line 3, please replace “the olefin monomers” with “olefin monomer”.
Claim 5 is objected to because of the following informalities: In line 4, please replace “the functionalized olefin monomers” with “functionalized olefin monomer”.
Claim 6 is objected to because of the following informalities: In line 3, please replace “wherein the” with “wherein an”.
Claim 6 is objected to because of the following informalities: In line 4, please replace “and the amount” with “and an amount”.
Claim 6 is objected to because of the following informalities: In line 5, please replace “the total” with “a total”.
Claim 7 is objected to because of the following informalities: In line 1, delete “of the”.
Claim 7 is objected to because of the following informalities: In line 2, please replace “monomers” with “monomer”.
Claim 7 is objected to because of the following informalities: In line 2, please replace “50 wt.%” with “50 wt %”.
Claim 7 is objected to because of the following informalities: In line 2, please replace “respect to the” with “respect to a”.
Claim 7 is objected to because of the following informalities: In line 3, please replace “the olefin monomers” with “olefin monomer”.
Claim 7 is objected to because of the following informalities: In line 3, please replace “the functionalized olefin monomers” with “functionalized olefin monomer”.
Claim 8 is objected to because of the following informalities: In line 1, delete “of the”.
Claim 8 is objected to because of the following informalities: In line 2, please replace “monomers” with “monomer”.
Claim 8 is objected to because of the following informalities: In line 2, please replace “50 wt.%” with “50 wt %”.
Claim 8 is objected to because of the following informalities: In line 2, please replace “respect to the” with “respect to a”.
Claim 8 is objected to because of the following informalities: In line 3, please replace “the olefin monomers” with “olefin monomer”.
Claim 8 is objected to because of the following informalities: In line 3, please replace “the functionalized olefin monomers” with “functionalized olefin monomer”.
Claim 9 is objected to because of the following informalities: In line 1, please insert “monomer” after “first olefin”.
Claim 9 is objected to because of the following informalities: In line 2, please insert “monomer” after “second olefin”.
Claim 9 is objected to because of the following informalities: In line 3, please insert “monomer” after “olefin” (two occurrences).
Claim 10 is objected to because of the following informalities: Claim does not appear to limit the subject of the independent claim. Clearly, the functionalized polyolefin, comprising at least one olefin monomer and at least one functionalized olefin monomer, is a “copolymer”.
Claim 10 is objected to because of the following informalities: In line 2, please replace “obtain,” with “obtained.”.
Claim 12 is objected to because of the following informalities: In line 1, please replace obtainable” with “obtained”.
Claim Rejections - 35 USC § 112
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 12 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 12 is drawn to a functionalized olefin polymer composition obtained by the process of claim 1. Claim 1, however, is drawn to a process to obtain a functionalized polyolefin. It is unclear whether the functionalized olefin polymer of claim 12 is the same embodiment as the functionalized polyolefin of claim 1. Furthermore, the term “functionalized olefin polymer composition” is broader in scope than the term “functionalized polyolefin”. Based on these considerations, it is deemed that claim is 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nozaki et al. (US 8,916,663).
Example 43 in Table 3 of Nozaki et al. discloses a functionalized polyolefin containing units derived from ethylene and units derived from allyl chloride. While the functionalized polyolefin of prior art is prepared in the presence of a palladium-based PO catalyst, instant claim is drawn to a functionalized olefin copolymer composition that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (Angew. Chem. Int. Ed. 2019, 58, 7030-7034).
Entry 1 in Table 1 of Chen et al. discloses a functionalized polyolefin containing units derived from propylene and units derived from N-octenyl-diethylamine. While the functionalized polyolefin of prior art is prepared in the presence of a metallocene catalyst, instant claim is drawn to a functionalized olefin copolymer composition that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jasinska-Walc et al. (WO 2019/122456).
Jasinska-Walc et al. teaches preparation of a functionalized olefin copolymer comprising units derived from at least one type of olefin monomer selected from propylene, 1-butene, or 1-hexene or at least two olefin monomers that are propylene and 1-hexene, and at least one masked functionalized olefin monomer that is a reaction product of a masking agent and a functionalized olefin monomer having a structure represented by Formula (I) wherein X is N and R6 is each independently selected from the group consisting of H and hydrocarbyl containing 1 to 16 carbon atoms, and n = 2.
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One of ordinary skill in the art would have found it obvious to remove the masking agent by quenching with aqueous acid, as shown in examples, to obtain claimed copolymer containing an olefin monomer and a functionalized olefin monomer.
While functionalized olefin copolymers of prior art are prepared in the presence of a metallocene catalyst, instant claim is drawn to a functionalized olefin copolymer composition that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Conclusion
The present invention is drawn to a process for solution copolymerization to obtain a functionalized polyolefin comprising at least the following step: copolymerizing at least one olefin monomer and at least one functionalized olefin monomer in the presence of a catalyst system, wherein the at least one functionalized olefin monomer is represented by a structure according to Formula (I), wherein n = 0, X is F, Cl, Br, I or n = 2, X is N and each of the R7 is independently a hydrocarbyl with 1 to 16 carbon atoms,
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and wherein the catalyst comprises a hafnium or zirconium complex of a polyvalent aryloxy ether and a co-catalyst. See claims for full details.
Subject of instant claims is patentably distinct over cited reference, Jasinska-Walc et al. (WO 2019/122456; US 11,396,565), and over Jasinska-Walc et al. (US 12,384,946), Bouyahyi et al. (US 11,466,109), Bouyahyi et al. (US 11,472,900), and Bouyahyi et al. (US 11,447,585). References teach a process for solution copolymerization to obtain a functionalized polyolefin comprising copolymerizing at least one olefin monomer and at least one masked functionalized olefin monomer. The masked functionalized olefin monomer has a structure different from claimed structure according to Formula (I). Therefore, prior art process is patentably distinct over claimed process.
Claims are not in condition for allowance. For purposes of completing PTO-326, status of claims 3 and 11 is listed as “objected to”.
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 13, 2026