DETAILED ACTION
This communication responds to the Amendment filed May 26, 2026. Claims 1-19, 23, and 24 are currently pending. Claims 16-19 are withdrawn. Claims 1-15, 23, and 24 are under examination.
The objection to claim 1 set forth in the Office Action dated April 9, 2026 is MAINTAINED.
Claims 1-15, 23, and 24 are REJECTED for the reasons set forth below. The rejections of claims 1-5 and 7-15 set forth in the April 9 Office Action are maintained, but are set forth in full below. A new rejection of amended claim 6 is set forth below. New claims 23 and 24 are also rejected.
This action is final.
Claim Objections
Claim 1 is objected to because of the following informality:
Regarding claim 1, as stated in the April 9 Office Action, the language defining the scavenger compounds is potentially confusing. The language “selected from the group” implies that Applicant intends the group to be a Markush group, whereas the conjunction “or” implies that the group is an open group. Further, the conjunction “and” (as opposed to “or”) is more grammatically correct. The examiner asks Applicant to amend.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Bouyahyi et al. (EP 3 034 545) in view of Konze et al. (US 2012/0088894).
Regarding claims 1, 3-5, and 15, Bouyahyi teaches a co-polymerization process in which two types of monomers – an olefin monomer and a protected functionalized monomer – are polymerized in solution by contacting the monomers with a catalyst system. (paras. [0148]-[0168], [0171], [0263].) Exemplar monomers are propylene and 10-undecen-1-ol that is protected by TIBAL. (Ex. @ para. [0340].) The catalyst system comprises a metal catalyst and co-catalyst. (para. [0171].) Suitable catalysts include the following catalyst:
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(para. [0243].) The co-catalyst is preferably some type of MAO. (paras. [0245]-[0248].) After polymerization, the protected functionalized groups are deprotected by contact with water or other hydrolyzing agents, such as alcohols. (paras. [0267]-[0268].)
Regarding claim 15 specifically, Bouyahyi also teaches that the olefin monomer may preferably be ethylene and propylene (see paras. [0151]-[0152]), resulting in a terpolymer
The difference between Bouyahyi and the present claims is that, although Bouyahyi teaches that a polyvalent aryloxyether catalyst may be used in the copolymerization process, Bouyahyi does not teach the specific catalysts recited in claim 1. However, these catalysts are known in the art. For example, Konze teaches a process for the solution polymerization of olefins in the presence of a polyvalent aryloxyether catalyst such as the following:
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(Abstract; para. [0255].) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the catalyst of Konze into the process of Bouyahyi with the reasonable expectation of producing a functionalized copolymer because Bouyahyi teaches that such catalysts are useful in doing so. (See MPEP 2143(I)(A).)
Regarding claims 2 and 14, Bouyahyi teaches that, after polymerization, the polymer is precipitated from solution and/or filtered. (Exs. @ paras. [0339], [0340].) The residues of the protecting species should remain in solution. Thus, the polymer and protecting species residues should be separated.
Regarding claim 6, Bouyahyi teaches an exemplar process in which 45.5 mmol olefin monomer and 1.36 mmol functionalized olefin are copolymerized. (Ex. @ para. [0339]). Thus, the amount of functionalized olefin is 2.9 mol%, which is outside the claimed range. However, given that the amount of functionalized olefin determines the number of grafted chains (see Abstract), the amount of functionalized olefin would be considered a result effective variable. Accordingly, one of ordinary skill would have optimized, by routine experimentation, the amount of functionalized olefin to reach the desired amount of grafted side chains, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding claims 7 and 10, Bouyahyi teaches that the olefin monomer may be a combination of ethylene and propylene. (paras. [0151]-[0152].) Bouyahyi is silent as to the relative amounts of ethylene and propylene. However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).)
In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of ethylene and propylene to produce a copolymer with the desired properties, especially crystallinity.
Regarding claims 8 and 9, as discussed above, Bouyahyi teaches an exemplar process in which 45.5 mmol olefin and 1.36 mmol functionalized olefin, or 97.1 mol% olefin and 2.9 mol% functionalized olefin, are copolymerized. (Ex. @ [0339].) Bouyahyi further teaches that a propylene/10-undecen-1-ol copolymer is preferred. (Ex. @ para. [0340].) Applying the preferred amounts to the preferred propylene/10-undecen-1-ol copolymer, the propylene is present in the amount of 89 wt.%.
Regarding claim 9 specifically, Bouyahyi teaches that ethylene is also a preferred monomer. (para. [0151].) If ethylene is substituted in place of the propylene in the propylene/10-undecen-1-ol copolymer, the ethylene is present in the amount of 85 wt.%.
Regarding claims 11-13, as discussed above, Bouyahyi teaches that the deprotection step is accomplished via contact of the copolymer with water or other hydrolyzing agents, including alcohols. Water may act as a Bronsted acid or base, and alcohols are generally weakly acidic.
Regarding claim 24, the recited polymerization temperature range is outside the disclosed range of Bouyahyi (50-125°C). Generally, temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (See MPEP 2144.05(II)(A) (citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).)
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Bouyahyi et al. (EP 3 034 545) in view of Konze et al. (US 2012/0088894) as applied to claim 1 above, and further in view of Oswald et al. (WO 2012/064630).
Regarding claim 23, Bouyahyi, as modified by Konze, teaches all of the limitations of claim 1. (See paragraph 9 above, which is incorporated by reference herein.)
The difference between Bouyahyi and claim 23 is that, although Bouyahyi teaches that a polyvalent aryloxyether catalyst may be used in the copolymerization process, neither Bouyahyi nor Konze teach a hafnium complex of a polyvalent aryloxyether. However, these catalysts are known in the art. For example, Oswald teaches a process for the polymerization of olefins in the presence of a polyvalent aryloxyether catalyst such as the following:
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(Abstract; pp. 1, 3.) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the catalyst of Oswald into the process of Bouyahyi with the reasonable expectation of producing a functionalized copolymer because Bouyahyi teaches that such catalysts are useful in doing so. (See MPEP 2143(I)(A).)
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant makes two arguments:
Applicant: A person of ordinary skill would not incorporate the catalyst complex of Konze into the process of Bouyahyi because the preferred polymerization temperatures of each – 100°C for Bouyahyi and 130°C for Konze – are too dissimilar. (Remarks, pp. 13-14.)
Office: The Office disagrees. First, as Applicant concedes, the disclosed temperature ranges (50-125°C for Bouyahyi and 120-250°C for Konze) overlap. A person of ordinary skill is not limited by only the examples of the prior art references. Further, as discussed in the April 9 Office Action and above, Bouyahyi teaches the general structure of the catalyst of Konze. Therefore, a person of ordinary skill would have the expectation that the catalyst of Konze could be used in the process of Bouyahyi, no matter the temperature.
Applicant: Bouyahyi does not teach a deashing step after polymerization. (Remarks, p. 14.)
Office: The Office disagrees. The deashing step is interpreted to be a step in which ash and other residues or impurities are separated from the polymer product to increase the polymer’s purity. The precipitation/filtration step of Bouyahyi accomplishes that.
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 CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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