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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 19-32 and 36-38, in the reply filed on Dec. 31, 2025 is acknowledged. The traversal is on the ground that lack of unity must be established a priori rather than a posteriori. This argument is unpersuasive because it is incorrect. See MPEP 1850(II). Applicant further traverses on the ground that the cited reference to Welch does not disclose certain features related to polymerization processes. This argument is unpersuasive because these features related to polymerization processes are not part of the common technical feature among the groups of inventions.
The requirement is still deemed proper and is therefore made FINAL.
Claims 33-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on Dec. 31, 2025.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 19-23, 25-32, and 36-38 are rejected under 35 U.S.C. § 103 as being unpatentable over US Patent No. 5,248,746 (herein “Shimokawa”) in view of US Patent No. 10,968,294 B2 (herein “Corberan”).
As to claims 19 and 37-38: Shimokawa describes solution polymerization (see col. 5, ll. 10-18) of vinyl monomers such as isobutene (see col. 4, ll. 42-51) in the presence of a catalyst comprising a Lewis acid such as aluminum, titanium, tin, and boron halides and an electron donor including trihydrocarbyl phosphine oxides, trihydrocarbyl phosphites, and trihydrocarbyl phosphates according to the presently recited formulas (I) and (Ia) (see col. 4, ll. 29-41). The process produces polymers having a narrower molecular weight distribution than the prior art (see col. 5, l. 39-40).
The present application includes a disclosure of the same Lewis acids (Spec. p. 12, ll. 4-12, 20-21, 26-27, and 32-33) that are disclosed in Shimokawa; and the present application includes a disclosure of the same trihydrocarbyl phosphine oxides and trihydrocarbyl phosphites that are disclosed in Shimokawa. For this reason, there is a reasonable basis to conclude that a complex formed from the cited Lewis acids and electron donors of Shimokawa would have the same melting point as those presently recited. Case law holds that when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. MPEP 2112.01(I)-(II).
Shimokawa does not disclose the presently recited complexes comprising an organic compound (II).
Corberan describes a process for preparing high-reactivity isobutene homo- or copolymers having a content of terminal vinylidene double bonds of at least 70 mol% (see the abstract). The process includes aluminum halide-donor complexes in which the donor is a mixture of ether compounds (see the abstract and col. 5, ll. 38-46).
In light of Corberan, one of ordinary skill in the art would have been motivated to used such mixtures of ether compounds in combination with the donor compounds of Shimokawa’s complexes in order to preparing isobutene homo- or copolymers having a combination of high-reactivity (terminal vinylidene double bonds) and narrow molecular weight. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed Shimokawa’s process by using Corberan’s mixtures of ether compounds in combination with the phosphorus-containing donor compounds of Shimokawa’s complexes.
As to claims 20-22: Shimokawa discloses electron donors including trihydrocarbyl phosphine oxides such as trioctylphosphine oxide, triphenylphosphine oxide, and others (see col. 4, ll. 29-32).
As to claim 23: Shimokawa discloses Lewis acid such as AlCl3 (see col. 4, l. 23).
As to claim 25: Shimokawa further discloses examples of complexes in which the molar ratio of Lewis acid to phosphorus compounds according to the presently recited formula (I) is 1:0.1 (see col. 6, ll. 15-20 and col. 7, ll. 1-5).
As to claims 26-27: Corberan describes ether compounds including diethyl ether, di-n-butyl ether, and others (see col. 5, ll. 32-46).
As to claim 28: Shimokawa further discloses that the Lewis acid is used in an amount of 1 to 100 times by mole the functional group concentration in the initiator compound, and the vinyl monomer is used in an amount of 5 to 10,000 or 20 to 5,000 times by mole the functional group concentration in the initiator compound (see col. 4, l. 61 to col. 5, l. 5). In combination, these ranges of ratios overlap the presently recited range of ratios of Lewis acid to isobutene.
As to claim 29: Shimokawa further discloses initiator compounds that are organic halogen compounds having a halogen bonded to an sp3 carbon (see col. 3, ll. 43-56).
As to claim 30: Shimokawa further discloses initiator compounds 2-chloro-2-phenylpropane and t-butyl chloride, among others (see col. 3, ll. 43-56).
As to claim 31: Shimokawa further discloses that the vinyl monomer is used in an amount of 5 to 10,000 or 20 to 5,000 times by mole the functional group concentration in the initiator compound (see col. 4, l. 61 to col. 5, l. 5), and these ranges of ratios overlap the presently recited range of ratios of initiator to isobutene.
As to claim 32: Shimokawa further discloses that the polymerization is conducted at -120 to 50, preferably -100 to 20 °C (see col. 5, ll. 19-21), and these ranges overlap the presently recited range of temperatures.
As to claim 36: Shimokawa further discloses examples of isobutene polymers having number average molecular weights within the presently recited ranges (see Table 1).
Claim Rejections – 35 U.S.C. § 112(b)
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 29 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 29 refers to the process of claim 19 and subsequently recites “an additional mono- or polyfunctional initiator”. Base claim 19 does not recite an initiator. The reference to an additional initiator in claim 29 does not set forth with reasonable clarity whether the claim requires at least one initiator or else more than one initiator.
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 38 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claim 38 depends upon independent claim 19. Independent claim 19 recites an organic compound (II) comprising at least one oxygen or nitrogen atom with at least one lone electron pair, and the claim also recites that the compound (II) comprises at least one dihydrocarbyl ether according to a chemical formula.
Claim 38 refers to the process of claim 19 and subsequently recites a limitation regarding compound (II). Claim 38 recites that “the at least one organic compound (II) is selected from the consisting of organic compounds with at least one ether function, organic compounds with at least one carboxylic ester function, organic compounds with at least one aldehyde function, organic compounds with at least one keto function, and organic compounds with at least one nitrogen containing heterocyclic ring.”
Each of the features directed to esters, aldehydes, ketone, and heterocyclic groups does not fall within the scope of the chemical formula for the dihydrocarbyl ethers that is recited in base claim 19. These features therefore do not specify a further limitation of the subject matter claimed in base claim 19.
Allowable Subject Matter
Claim 24 is objected to as being dependent upon a rejected base claim, but it would be allowable if written in independent form.
Conclusion
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.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764