DETAILED ACTION
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 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.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Satoh et al. (US Pat. 6,331,501) as applied to claim 1 above, and further in view of Zhu et al. (US 2005/0164873).
Considering Claim 1: Satoh et al. teaches a solid support prepared by the process comprising obtaining an organomagnesium compound of RMgX (15: 14-23) and reacting an organomagnesium compound of RMgX with a silane compound of the formula Si(OR)mR4-m) in the presence of an ester compound, where the R groups read on the claimed R groups (3:23-4:32), which would inherently result in the claimed reaction product. Satah et al. teaches adding a solvent for the organomagnesium and silane compounds during the reaction (4:51-61; 5:56-64).
Satoh et al. does not teach adding a ketone during the reaction step B. However, Zhu et al. teaches adding an internal electron donor that is preferably a ketone such as acetone, methyl ethyl ketone, methyl isobutyl ketone, acetophenone and benzophenone (¶0031) to a procatalyst during the support formation reaction (¶0023). Satoh et al. and Zhu et al. are analogous art as they are concerned with the same field of endeavor, namely magnesium silicate supports for olefin catalysts. It would have been obvious to a person of ordinary skill in the art to have added the ketone of Zhu et al. as the solvent for the reaction of Satoh et al., and the motivation to do so would have been, as Zhu et al. suggests, to increase the activity of the resulting catalyst (¶0027).
Considering Claim 5: Satoh et al. teaches contacting the support with an electron donating compound (2:60-3:12).
Response to Arguments
Applicant's arguments filed April 2, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Zhu et al. does not teach the claimed ketones as an initiator is not persuasive. Satoh et al. teaches a process comprising an ester internal electron donor that increases the stereoregularity and activity of the polymerization (1:64-2:3). Zhu et al. teaches the claimed ketones, namely acetone, methyl ethyl ketone, methyl isobutyl ketone, acetophenone and benzophenone as being internal electron donors that increase the stereoregularity and activity of the polymerization (¶0027). Zhu et al. also teaches the utility of the ketone as a solvent for the reaction between the organomagnesium and silane compounds. It would have been obvious to a person of ordinary skill in the art to have added the ketone of Zhu et al. as the solvent for the reaction of Satoh et al., and the motivation to do so would have been, as Zhu et al. suggests, to increase the activity of the resulting catalyst (¶0027). The combination of Satoh et al. (which teaches the electron donor being added during the reaction of the organomagnesium and silane compounds) and Zhu et al. (which teaches the claimed species as electron donors, and further teaches their utility as solvents for the reaction of the organomagnesium and silane compounds) render the claimed process obvious.
While neither reference explicitly teaches that the compounds are initiators, this feature is inherent to the compound itself. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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