5DETAILED ACTION
This communication responds to the application filed May 16, 2023, and the amended claim set and Response to Restriction Requirement filed December 29, 2025. Claims 1-21 are currently pending.
Non-elected claims 16-21 are WITHDRAWN.
Elected claims 15-21 are REJECTED for the reasons set forth below.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, in the reply filed on December 29 is acknowledged. Claims 1-15 are under active examination.
Priority
This application is the national stage entry of PCT/EP2021/082511, filed November 22, 2021, which claims priority to EP 20209235.9, filed November 23, 2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1 and 15 are objected to because of the following informalities:
Regarding claim 1, to avoid confusion regarding the Markush group, the word “or” in the limitation defining the co-catalyst should be changed to “and” (“… MAO, DMAO, MMAO, SMAO, and ammonium salts or trityl salts …”). In addition, the word “and” should be inserted between trihexyl aluminum and trioctyl aluminum (“…trihexyl aluminum, and trioctyl aluminum, and …”)
Regarding claim 15, the second period should be deleted.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 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:
PNG
media_image1.png
264
478
media_image1.png
Greyscale
(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:
PNG
media_image2.png
270
387
media_image2.png
Greyscale
(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 claim 2, 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%.
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 14, as discussed above, Bouyahyi teaches that after polymerization, the polymer is precipitated from solution and/or filtered.
Conclusion
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.
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, Joseph Del Sole can be reached at 571-272-1130. 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.
CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763