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 .
DETAILED ACTION
Claims 1-12 of D. Shin et al., US 18/041,016 (Dec. 13, 2021) are pending and under examination. Claims 1-9, 11 and 12 are in condition for allowance. Claim 10 is rejected.
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.
Pursuant to 35 U.S.C. 112, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claim 10 Is Indefinite Because it is Unclear Whether it is Directed to Product or a Method
Claim 10 is rejected pursuant to 35 U.S.C. 112, as indefinite because it is unclear whether this claim is directed to the statutory category of method or composition. Claim 10 is reproduced below.
Claim 10. The catalyst composition for preparing an ethylene-based polymer of claim 8, wherein the cocatalyst is used in an amount of 0.5 to 10,000 moles based on 1 mole of the metal-ligand complex.
The claim 10 preamble recitation of “The catalyst composition . . . of claim 8” indicates the statutory category of composition. However, claim 10 further limits the composition of claim 8 by the recitation of the process step “is used”. A single claim which claims both an apparatus/product and the method steps of using the apparatus/product is indefinite under 35 U.S.C. 112(b). MPEP § 2173.05(p) (citing Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990); In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011)). Further, the claimed invention must be to one of the four statutory categories, processes, machines, manufactures and compositions of matter. MPEP § 2106(I). Here it is unclear whether claim 10 is directed to the statutory category of composition of matter or process or both.
Claim Rejections - 35 USC § 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.
§ 112(d) Rejection of Claim 10
Claim 10 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of claim 8 upon which it depends, or for failing to include all the limitations of the claim upon which it depends for the following reasons. Claim 10 is reproduced below.
Claim 10. The catalyst composition for preparing an ethylene-based polymer of claim 8, wherein the cocatalyst is used in an amount of 0.5 to 10,000 moles based on 1 mole of the metal-ligand complex.
The claim 10 preamble recitation of “The catalyst composition . . . of claim 8” indicates the statutory category of composition. However, claim 10 does not recite any language further limiting the composition of claim 8. Claim 10 therefore fails to further limit the subject matter of base claim 8.
Subject Matter Free of the Art of Record
Claims 1-12 are free of the art of record. The closes art of record is S. Ewart et al., WO 2016/014749 (2016) (“Ewart”) under a § 103 analysis. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities, which entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. MPEP § 2144.09(I). The lead compound obviousness analysis requires initial motivation to select a prior art compound and thereafter still further motivation to make the specific structural modifications thereto so as to arrive at a claimed compound. See MPEP § 2143(B) (discussing “lead compound cases” in Examples 9-11 with respect to pharmaceutical applications). However, the MPEP warns against applying the lead compound analysis rigidly in view of the flexible approach stated in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) see also, MPEP § 2143(B), Example 11 (citing Altana Pharma AG v. Teva Pharm. USA, Inc., 566 F.3d 999, 91 USPQ2d 1018 (Fed. Cir. 2009) a ‘restrictive view of the lead compound test would present a rigid test similar to the teaching-suggestion-motivation test that the Supreme Court explicitly rejected in KSR’).
Ewart discloses process to form an ethylene-based polymer, said process comprising polymerizing ethylene, and optionally at least one comonomer, in the presence of at least one molecular transition metal complex selected from Formula 1:
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where M is titanium, zirconium, or hafnium (which are Group 4 metals), where variables Rx and Ry may be selected from among a listing of alternatives, including halogen, and where Z may be oxygen. Ewart at page 2. Ewart discloses thirty species of Formula 1, none of which comprises a halogen at variables Rx or Ry. Ewart at pages 6-7.
The closest species to the instantly claimed compounds disclosed by Ewart is the following compounds b and c.
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Ewart at page 6. In order to arrive at a claimed compound, one of ordinary skill must insert a -CF2 group into the carbon chain linking the two oxygen atoms of Ewart compound b; that is one of ordinary skill must assign both of Rx and Ry of Ewart general Formula 1 as F.
Here, the claims are not obvious in view of Ewart because this reference does not motivate one of ordinary skill assign both of Rx and Ry of Ewart general Formula 1 as F, for example in Ewart compound species b. Ewart’s teaching that variables Rx or Ry may selected from among a long listing that includes halogen, by itself, and in the absence of any species disclosing a halogen, let alone fluorine at this position, is not sufficient motivation.
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692