DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 2/10/26, claims 1-21 are currently pending in the application, with claims 14-17 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-13, 18-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the following limitation:
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Claim 1 is indefinite because the scope of an interacted catalytic complex having a steric structure lacks clarity. Based on the positively recited components of the catalyst composition, it is unclear which components form the “complex”, the effect of which components contributes to the term “interacted” and as to which specific components contribute to the “steric structure”. In view of the instant specification [0013]-[0017] that teaches suitable initiators and supports, it is unclear what specific structures are encompassed by the catalyst composition of claim 1. For instance, the initiator of claim 1 may be an alkyl halide (ethyl chloride) or an inorganic acid (HCl) ([0017], claim 8), and the support may be alumina or silica ([0014], claim 6). In a catalyst composition comprising a Lewis acid, HCl and silica, it is unclear the effect exerted by which components contributes to the term “interacted” and to the phrase “steric structure”, and which components form the complex. Claims 2-13, 18-21 are subsumed by rejected claim 1 and are therefore in this rejection.
For the purpose of examination, Examiner interprets contacting the positively recited components of claim 1 as being capable of the providing for an interacted catalytic complex having a steric structure.
Claim 10 recites the limitation “the electron donor” in line 1. The claim is indefinite because there is insufficient antecedent basis for this limitation in the claim. Claims 11-13 are subsumed by the rejected claim 10 and are included in this rejection.
Claim Rejections - 35 USC § 102 and 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 5, 6, 8, 9, 18, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US 5,561,095, of record).
Regarding claims 1, 5, 6, 8, 18, 20 and 21, Chen teaches a supported catalyst system comprising Lewis acids on an inorganic oxide support (Ab.,). Disclosed Lewis acids include alkyl aluminum, aluminum chloride, alkyl aluminum halides, dibutyl magnesium etc. (col. 1, lines 36-59, col. 3, line 46-col. 4, line 20), and disclosed support may be inorganic oxides, such as silica, alumina, titania, magnesia etc. (col. 4, lines 45-54). Chen teaches cocatalysts (promoters), such as tert. alkyl halides, lower alcohols, inorganic acid etc. may be added to the catalyst bed (col. 9, lines 34-50).
Disclosed Example 1 is drawn to a catalyst composition obtained by contacting silica (reads on support) with triisobutyl aluminum (reads on Lewis acid, TIBA, 0.9 mmol) in heptane, adding MgBu2 after 1h (reads on Lewis acid 3mmol), heating the mixture for 20 min at 80oC, washing the product, adding t-BuCl in heptane (reads on initiator) and washing the product. Example 3 teaches adding MgBu2 (reads on a Lewis acid, 2.2. mmol) to silica (i.e., an inorganic support) in heptane, washing and adding after 2h, diethyl aluminum chloride (reads on Lewis acid, 3.7 mmol) in heptane and after 2h, washing the silica and adding t-BuCl (3mmol) in heptane, and washing the product after 1h and drying, and use of the dried catalyst for polymerizing isobutene. It is noted that t-BuCl is claimed as a species of the initiator in instant claim 8, and silica is a species of support in instant claim 6.
Thus, the catalyst compositions of Examples 1 and 3 are prepared by contacting the positively recited components of claim 1 and must inherently have the claimed structure and catalytic activity, and must be capable of providing for the claimed terminal vinylidene content in isobutylene polymerization.
Regarding claim 9, Chen teaches a molar ratio of dibutyl magnesium and diethyl aluminum chloride (Lewis acid) to t-BuCl (initiator) at 5.9:3.0 (Example 3).
In light of above, presently cited claims are anticipated by the reference.
Claims 1-9, 18, 20, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 5,561,095, of record).
Regarding claims 1, 5-9, 18, 20, 21, incorporating the discussion on Chen from paragraph 7 above, Chen further teaches inorganic oxides as substrates, i.e., supports, having hydroxyl groups that are capable of immbobilizing the Lewis acid systems (col. 4, line 61-col. 6), by contacting the Lewis acid with the substrate at a temperature ranging from about room temperature to about 110oC and further contact with halogenating compounds, such as HCl and alkyl halides, and use thereof for polymerizing olefins monomers, such as vinyl ethers, propylene, isobutylene, 1-octene etc. (col. 5-6).
Chen is silent on a catalyst composition comprising an interacted catalytic complex having a steric structure and a catalytic activity as claimed, to provide for the claimed terminal vinylidene content in polyisobutylene.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Chen on a supported catalyst composition and suitable Lewis acids, initiators and supports therefor, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a supported catalyst composition by contacting the Lewis acid and the initiator (tertiary alkyl halide/lower alcohol that is capable of being an initiator and an electron donor) and a support (silica/alumina including those with hydroxyl groups), i.e., components that fall within the scope of the claimed invention, and reasonably expect the same to be capable of providing for an interacted catalytic complex having a steric structure and a catalytic activity as claimed, and when used for polymerizing isobutylene, to be capable of providing for the claimed terminal vinylidene content in polyisobutylene, absent objective evidence to the contrary.
In the alternative, given the teaching on vinyl ethers, propylene and 1-octene as equally suitable monomers for polymerization, and the teaching on a supported catalyst composition and suitable Lewis acids, initiator and support therefor, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a catalyst system by contacting the Lewis acids and the initiator with the support, including those within the scope of the claimed invention, and reasonably expect the same to provide for an interacted catalytic complex having a steric structure, absent objective evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
It is noted that claim 1 is drawn to a catalyst composition and the recitation “is structured to prepare a highly-reactive polyisobutylene” 1 is an intended use limitation. The intended use language must result in a structural difference to patentably distinguish over the prior art. If the prior art structure or composition is capable of performing the intended use, then it meets the claim. MPEP 2111.02.
Furthermore, noting that the preamble in claim 1 is drawn to “A heterogeneous catalyst composition”, the limitation “producing: i) a catalytic activity in the heterogeneous catalyst composition of from 0.001 to 1 molIB molLewis Acid⁻¹S ⁻¹; and ii) a terminal vinylidene content in a high-reactive polyisobutylene of at least 31 mol%” are features of the heterogenous catalyst composition when used to polymerize isobutylene to produce polyisobutylene.
Regarding claim 2, Chen teaches a catalyst system comprising two separate Lewis acids, one being a strong Lewis acid, such as an alkyl aluminum halide of formula RnAlX3-n (n=0 to 3) or an aluminum halide, and the other being a weak Lewis acid, such as a magnesium halide or an alkyl magnesium halide of formula R’mMgX’2-m (m=1 or 2), wherein said halide or X may be a chloride, and said R and R’ may be C1-C12 group (col. 1, lines 38-59, col. 3, line 46-col. 4, line 20). Given the teaching in Chen on suitable strong Lewis acids and weak Lewis acids, it would have been obvious to a skilled artisan to prepare a catalyst system comprising, for instance, aluminum chloride and magnesium chloride (i.e., metal halide compounds), or alkyl aluminum halide and alkyl magnesium halide (i.e., alkyl metal halide compounds).
Regarding claim 3, Chen teaches AlCl3 as a strong Lewis acid, and a halide of iron as a weak Lewis acid.
Regarding claim 4, the claimed limitation does not necessarily limit the scope of claim 2 given that Chen teaches metal halides.
Regarding claim 7, Chen teaches that the substrate material includes hydroxyl groups to immobilize the Lewis acid catalyst (col. 3, lines 18-24, col. 4, lines 61-67).
Regarding claim 9, Chen teaches a molar ratio of dibutyl magnesium and diethyl aluminum chloride (Lewis acid) to t-BuCl (initiator) at 5.9:3.0 (Example 3).
Claims 1-13, 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Corberan Roc et al. (US 2019/0284313 A1) in view of Chen et al. (US 5,561,095, of record).
Regarding claims 1-8, 10, 11, 18-21, Corberan Roc teaches high reactivity isobutene homo- or copolymers with a terminal vinylidene double bond content of at least 70 mol%, prepared by using a polymerization catalyst, such as aluminum trihalide-donor complex, an alkylaluminum halide-donor complex, an iron trihalide-donor complex, a titanium tetrahalide-donor complex etc. (encompass Lewis acids) Ab., [0013], 0127]-[0135]), said donor comprising an organic compound having an oxygen or nitrogen atom, including dialkyl ethers, such as diisopropyl ether and ethyl tert. butyl ether (read on electron donor) [0153]-[0159]. Corberan Roc further teaches initiators, such as halogen compounds, e.g., ethyl chloride, 1-chloropronae and 2-chloroproane, t-butyl chloride, hydroxyl compounds, such as water, ethanol, isopropanol etc. [0212]-[0222], and that the aluminum trihalide-donor complex or an alkyl aluminum dichloride-donor complex or a dialkyl aluminum chloride-donor complex may be supported on customary support materials [0249]. Disclosed aluminum trihalides, alkyl aluminum dichlorides and dialkyl aluminum chlorides fall within the scope of claims 2-4 [0127]-[0135].
Corberan Roc is silent on a catalyst composition having components as claimed for forming an interacted catalytic complex having a steric structure and a catalytic activity as claimed, in providing for the disclosed terminal vinylidene content in polyisobutylene.
As stated in paragraph 12 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Incorporating the discussion on Chen from paragraphs 7, 10 and 18 above, the secondary reference to Chen teaches that immobilized Lewis acid catalysts, such as boron halides, can be prepared by fixing the catalyst to an inorganic substrate, such as silica or alumina, including those containing surface -OH groups (col 1, lines 37-59, col. 3, lines 17-24, col. 4, lines 61-67). Chen further teaches catalyst compositions obtained by contacting Lewis acids and an initiator with a support (Examples).
Given the teaching in Chen on advantages of suitable inorganic substrates for immobilizing the catalyst, the teaching in Corberan Roc that an alkyl aluminum dichloride-donor complex or a dialkyl aluminum chloride-donor complex that may be supported on customary support materials, and suitable initiators, wherein said donors may include capable dialkyl ethers such as diisopropyl ether and ethyl tert. butyl ether, and the teaching of suitable initiators, it would have been obvious to provide for a catalyst composition comprising as components, an alkyl aluminum dichloride-donor complex or a dialkyl aluminum chloride-donor complex, a surface -OH groups-containing inorganic substrate, such as silica or alumina, and an initiator. A skilled artisan would reasonably expect contacting said components of the catalyst compositions to form an interacted catalyst complex having a steric structure as claimed, and having a catalytic activity as claimed in providing for polyisobutylene terminal vinylidene double bond content of at least 70 mol%,, absent evidence to the contrary. As stated in paragraph 15 above, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons.
Regarding claim 9, Corberan Roc teaches a molar ratio of Lewis acid to isobutene monomer at 0.001:1 to 0.2:1 [0208], and a molar ratio of initiator to monomer at 0.0005:1 to 0.1:1 [0233], thereby obviating the claimed molar ratio of initiator to Lewis acid.
Regarding claims 12-13, it is noted that the limitations therein do not necessarily limit the scope of claim 10, given that Corberan Roc’s alcohols and dialkyl ethers may provide for the claimed electron donor.
Claims 1-6, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baxter Jr. (US 2019/0359747 A1, of record).
Regarding claims 1-3, 5, 6, 19, 20, Baxter teaches catalyst systems for preparing highly reactive polyisobutylene, wherein said catalyst system is formed by adding a mixture comprising BF3 (reads on Lewis acid/metal halide) and a complexing agent to a support material, such as Al2O3, TiO2, SiO2, SiO2/Al2O3 etc. (Ab., [0012], [0024]-[0025], [0054], [0063], [0080]-, [0081], Fig. 1A). Disclosed complexing include alcohols and carboxylic acids [0059] and per instant disclosure, the initiator an alcohol [0017].
Baxter teaches a catalyst comprising silica-alumina as support, and BF3-MeOH (1:1 mole ratio) (i.e., comprises Lewis acid/metal halide and initiator), for preparing highly reactive polyisobutylene, alpha vinylidene content =79.9% (Examples 7-8, [0064], [00167]-[0170], [0003]). Thus, the catalyst compositions of are prepared by contacting the positively recited components of claim 1 and must inherently have the claimed structure and catalytic activity in providing for disclosed vinylidene content.
Regarding claim 4, it is noted that the claimed limitation does not necessarily limit the scope of claim 2 given the alternative recitation therein.
In light of above, presently cited claims are anticipated by the reference.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Baxter Jr. (US 2019/0359747 A1), in view of Chen et al. (US 5,561,095).
The discussion on Baxter from paragraph 29 above is incorporated herein by reference. Baxter further teaches that an organic support, like an inorganic oxide support, provides active sites for the BF3, and/or BF3 and complexing agent, i.e., an inorganic oxide support having active sites [0081].
Baxter is silent on a metal oxide support having functional groups as claimed.
In a related field of endeavor, the secondary reference to Chen teaches that immobilized Lewis acid catalysts, such as boron halides, can be prepared by fixing the catalyst to an inorganic substrate, such as silica or alumina, which contains surface -OH groups (col 1, lines 37-59, col. 3, lines 17-24, col. 4, lines 61-67). Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to modify Baxter’s metal oxide supports to include surface -OH groups so as immobilize Baxter’s catalysts on the support.
Claims 8, 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Baxter Jr. (US 2019/0359747 A1).
The discussion on Baxter from paragraph 29 above is incorporated herein by reference.
Regarding claim 8, Baxter teaches C1-C10 alcohols, e.g., methanol, ethanol, isopropanol etc. as suitable complexing agents [0059], [0062], i.e., equivalence thereof.
Regarding claim 10, Baxter’s C1-C10 alcohols as complexing agents also encompass claimed alcohol with 1 to 5 carbon atoms as an electron donor (claim 9). Additionally, Baxter prescribes a molar ratio of BF3 to complexing agent between about 0.1 and about 10 in the catalyst complex [0064], i.e., Baxter’s molar excess of C1 to C5 alcohol would be capable of functioning as electron donors in the catalyst system.
Baxter is silent on a catalyst composition comprising the claimed alcohol (claim 8), or the claimed alcohol as an electron donor (claim 10) in one single embodiment.
As stated in paragraph 12 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching on suitable alcohols as complexing agents and the teaching on the molar ratio range of BF3 to complexing agent, it would have been obvious to one of ordinary skill in the art, to prepare catalysts within the scope of the claimed invention. For instance, a skilled artisan would have found it obvious to substitute MEOH in the catalyst of Examples 7-8 with ethanol or isopropanol, based on their art recognized equivalence (claim 8), or prepare a catalyst composition with molar excess of a C1 to C5 alcohol, providing the claimed electron donor (claim 10). Regarding claims 11-13, it is noted that the claimed limitation does not necessarily limit the scope of claim 10, given that Baxter’s alcohol may provide for the claimed electron donor.
Response to Arguments
In view of the amendment dated 2/10/26, the rejections of record are withdrawn. In addition to relying on art of record, the amendment has also necessitated new grounds of rejections presented herein above.
For reasons presented in the rejections above, Chen and Baxter teach compositions within the scope of the claimed invention, i.e., a catalyst composition formed from a Lewis acid, an initiator and a support as recited in claim 1, a support such as silica or alumina, including those with hydroxyl groups, as in claim 6 and 7, and an initiator such as lower alcohols and t-butyl chloride as in claim 8.
While Applicant specifically argues that Chen, requiring 2 Lewis acids, cannot provide for the claimed terminal vinylidene content, claim 1 does not limit the scope to one single Lewis acid species, while Chen’s strong and weak Lewis acids can both read on a Lewis acid. Even so, there is no evidence on record that Chen’s or Baxter’s catalyst composition comprising components within the scope of the claimed invention cannot produce do not have the catalytic activity and/or are not capable of providing for the claimed terminal vinylidene content. Moreover, as stated in the rejections above, claims are drawn to a catalyst composition and Chen’s catalyst compositions may be used for polymerizing other olefin monomers, such as vinyl ethers and 1-octene.
Applicant refers to the steric effect as impliedly shown on Ex. 5 of the present specification as providing a catalyst with the claimed activity and terminal vinylidene content in polyisobutylene. However, the initiator therein is a specific alcohol (ethanol), in combination with the support (Silica-1), whereas the initiator in claim 1 is open ended, and may be HCl or t-BuCl per claim 8. Baxter teaches a catalyst composition formed by contacting a Lewis acid (an initiator (alcohol), and a support (silica alumina). Chen and Baxter teach all claimed elements of the catalyst composition of claim 1 and must inherently have or would be reasonably expected to have the claimed structure, and catalytic activity when used in isobutylene polymerizations, absent evidence to the contrary.
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.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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