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 .
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.
Status of Claims
Claims 1-19 are currently under examination. Claim 1 is newly added. Claims 1, 6-8, 15 and 18 are amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 6-8 and 15 is withdrawn.
Regarding claims 1-8 and 13-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 US 10, 807, 998 B2 and in view of Li et al. (US 2019/0263953 A1) is amended as set forth below.
Regarding claims 1-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 68-75 of US 17/636,194, and in view of Li et al. (US 2019/0263953 A1) is amended as set forth below.
Regarding claims 1-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 14-15 of US 17/999, 287 is amended as set forth below.
Regarding claims 1-11 and 13-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 8-11, and 14 of US 18/290, 966 is amended as set forth below.
Regarding claims 1-11 and 13-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 8-11, and 14 of US 18/290, 966 is amended as set forth below.
Regarding claims 1-11 and 13-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims US 11, 214, 631 B2, and in view of Li et al. (US 2019/0263953 A1) is amended as set forth below.
Regarding claims 1-11 and 13-18, in the light of the amendments, the rejection on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims US 10, 882, 925 B2 and in view of Li et al. (US 2019/0263953 A1) is amended as set forth below.
Regarding claims 1-11 and 13-18, in the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 20180201630, now US 10, 807, 998 B2) is amended as set forth below.
New grounds rejections are set forth below.
Amended & New Grounds of Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8 and 13-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 US 10, 807, 998 B2 and in view of Li et al. (US 2019/0263953 A1).
Although the conflicting claims are not identical, they are not patentably distinct from each other. US’ 998 teaches a catalyst comprising Methyl alumoxane (MAO) (col. 29, lines 18-67) (the instant claimed a reaction product of an alumoxane precursor) and a metallocene compound which reads on the instant claimed Formula (I), Formula (III), the Formula recited in the instant claim 9, and Formula (IV). See the detail discussion below.
Although US’998 does not specifically teach a catalyst composition comprising a support, Li et al. teach a bridged metallocene comprising a useful supports including silica ([202]-[0205] and [0236]).
As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent. It reads on the instant claim 17.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the support such as silica taught by Li al. in the catalyst composition taught by US’998 to obtain the invention as specified in the claim 1, motivated by the fact that it is known the silica supported catalysts are easily separated from the reaction mixture and can be recycled for reuse.
Since both Li et al. and US ‘998 teach metallocene catalysts for olefins polymerizations, one would have a reasonable expectation of success.
Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 68-75 of US 12,606, 657 and in view of Li et al. (US 2019/0263953 A1)
Although the conflicting claims are not identical, they are not patentably distinct from each other. US ‘657 teaches a catalyst comprising Methyl alumoxane (MAO) (col. 93, lines 18-col. 95, line 40) (the instant claimed a reaction product of an alumoxane precursor), and a metallocene compound having the formula (I), Formula (III) and Formula (IV) which reads on the instant claimed Formula (I). The first metallocene catalyst recited in claim 75 reads on the instant claimed first catalyst recited in claim 12
Although ‘657 does not specifically teach a catalyst composition comprising a support, Li et al. teach a bridged metallocene comprising a useful supports including silica ([202]-[0205] and [0236]).
As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent.. It reads on the instant claims.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the support such as silica taught by Li al. in the catalyst composition taught by US’194 to obtain the invention as specified in the claim 1, motivated by the fact that it is known the silica supported catalysts are easily separated from the reaction mixture and can be recycled for reuse.
Since both Li et al. and ‘657 teach metallocene catalysts for olefins polymerizations, one would have a reasonable expectation of success.
Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3 and 14-15 of US 17/999, 287.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Co-pending application ‘287 teaches a catalyst comprising Methyl alumoxane (MAO) ([868]-[875]) (the instant claimed a reaction product of an alumoxane precursor) and a metallocene compound which reads on the instant claimed formula (I), formula (III), formula recited in claim 9, and formula (IV).
Although co-pending ‘287 does not specifically teach a catalyst composition comprising a support, Li et al. teach a bridged metallocene comprising a useful supports including silica ([202]-[0205] and [0236]).
As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent. It reads on the instant claim 17.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the support such as silica taught by Li al. in the catalyst composition taught by co-pending application ‘287 to obtain the invention as specified in the claim 1, motivated by the fact that it is known the silica supported catalysts are easily separated from the reaction mixture and can be recycled for reuse.
Since both Li et al. and co-pending application ‘287 teach metallocene catalysts for olefins polymerizations, one would have a reasonable expectation of success.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-11 and 13-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6, 8-11, and 14 of US 18/290, 966.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Co-pending application ‘966 teaches a catalyst comprising Methyl alumoxane (MAO) ([0372]-[0394]) (the instant claimed a reaction product of an alumoxane precursor), and a metallocene compound having the formula (I) which reads on the instant claimed formula (I), formula (III), formula recited in claim 9, and formula (IV), and a support of silica. As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent. It reads on the instant claim 17.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-11 and 13-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims US 11, 214, 631 B2, and in view of Li et al. (US 2019/0263953 A1).
Although the conflicting claims are not identical, they are not patentably distinct from each other. US’ 631 teaches a catalyst comprising Methyl alumoxane (MAO) (col. 62, lines 30-63) (the instant claimed a reaction product of an alumoxane precursor), and a metallocene compound having the formula (I) which reads on the instant claimed formula (I) formula (III), formula recited in claim 9, and formula (IV).
Although ‘631 does not specifically teach a catalyst composition comprising a support, Li et al. teach a bridged metallocene comprising a useful supports including silica ([202]-[0205] and [0236]).
As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent.. It reads on the instant claim 17.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the support such as silica taught by Li al. in the catalyst composition taught by US’ 631 to obtain the invention as specified in the claim 1, motivated by the fact that it is known the silica supported catalysts are easily separated from the reaction mixture and can be recycled for reuse.
Since both Li et al. and US’ 631 teach metallocene catalysts for olefins polymerizations, one would have a reasonable expectation of success.
Claims 1-8, 11 and 13-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims US 10, 882, 925 B2.
Although the conflicting claims are not identical, they are not patentably distinct from each other. US 10,882, 925 teaches a catalyst comprising Methyl alumoxane (MAO) (col. 16, lines 39-67) (the instant claimed a reaction product of an alumoxane precursor), an aromatic solvent free support material (col. 20, lines 167), and a metallocene compound having the formula (I) which reads on the instant claimed formula (I).
Claims 1-8, 11 and 13-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims US 10, 889, 663 B2 and in view of Li et al. (US 2019/0263953 A1).
Although the conflicting claims are not identical, they are not patentably distinct from each other. US’ 663 teaches a catalyst comprising Methyl alumoxane (MAO) (col. 96, lines 46-col. 97, line 15) (the instant claimed a reaction product of an alumoxane precursor) , and a metallocene compound having the formula (I) which reads on the instant claimed formula (I).
Although US’663 does not specifically teach a catalyst composition comprising a support, Li et al. teach a bridged metallocene comprising a useful supports including silica ([202]-[0205] and [0236]).
As such, the support material is aromatic solvent free support, comprising <0.1 wt.% aromatic solvent. It reads on the instant claim 17.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the support such as silica taught by Li al. in the catalyst composition taught by US’ 663 to obtain the invention as specified in the claim 1, motivated by the fact that it is known the silica supported catalysts are easily separated from the reaction mixture and can be recycled for reuse.
Since both Li et al. and US’663 teach metallocene catalysts for olefins polymerizations, one would have a reasonable expectation of success.
Claim Rejections - 35 USC § 102
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.
Claims 1-11 and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 20180201630, now US 10, 807, 998 B2).
Regarding claim 1, Yang et al. teach a catalyst comprising alumoxane (MAO) ([0092]) (the instant claimed a reaction product of an alumoxane precursor), a bridged metallocene catalyst (Abstract) and support ([0117]-[0118]). As such, the support material is aromatic solvent free support, comprising <0.1.wt.% aromatic solvent.
One example of metallocene Catalyst D has a structure as shown below ([0162]):
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As we see above, the Catalyst D taught by Yang et al. corresponds to the instant claimed catalyst compound represented by the Formula (I), wherein M=Zr (Group IV metal), T=SiMe2, X1=X2=hydrocarbyl CH3, R1=CH3, R2=R4=R6=H, R3=substituted aryl, R5=iso-propyl, R6, R7 as being joined to form a substituted unsaturated cyclic ring structure, J1 and J2 are form a unsaturated cyclic ring structure.
Regarding claims 2-8 and 11, as discussed above, the Catalyst D taught by Yang et al. comprises M as being zirconium, T as being Si(CH3)2 (G=Si, R*=CH3), X1=X2 as being CH3, R1=CH3, R2=R4=R6=H, R3=substituted aryl, R5=iso-propyl, R6, R7 as being joined to form a substituted unsaturated cyclic ring structure, J1 and J2 are form a unsaturated 5 membered cyclic ring structure as the instant claims.
Regarding claims 9-10, as discussed above, the Catalyst D taught by Yang et al. comprises R3 as be substituted phenyl group with R9=R13=H, R11=OCH3, R10=R12=tert-butyl as the instant claim.
Regarding claims 13-14, the Catalyst D-Cl2 taught by Yang et al. corresponds to the instant claimed catalyst compound represented by the Formula (III) and (IV), wherein M=Zr (Group IV metal), T=SiMe2, X1=X2=anion ligand Cl, R1=CH3, R2=R4=R6=H, R3=substituted aryl, R5=iso-propyl, R6, R7 as being joined to form a substituted unsaturated 5 membered cyclic ring structure, J1 and J2 are form a unsaturated 5 membered cyclic ring structure.
Regarding claims 15-16 and 18, as discussed above, the Catalyst D taught by Yang et al. comprises M as being zirconium, T as being Si(CH3)2 (G=Si, R*=CH3), X1=X2 as being Cl as the instant claims.
Regarding claim 17, as discussed above, the catalyst composition taught by Yang et al. comprises support ([0117]-[0118]). As such, the support material is aromatic solvent free support, comprising <0.1.wt.% aromatic solvent.
Regarding claim 19, as discussed above, the catalyst taught by Yang et al. comprises alumoxane ([0092]).
A product-by-process limitation of “ the alumoxane precursor comprises an alkyl aluminum and an unsaturated carboxylic acid” of claim 19 is noted. It is considered while the product of the reference is made by a different process, the product (alumoxane) made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and also overcome the nonstatutory obviousness-type double patenting rejections.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 03/23/2026 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicants argued Yang expressly discloses at para. [0094] that "catalyst systems may be formed by combining them with activators" and "[a]ctivation may be performed using alumoxane solution including methyl alumoxane, referred to as MAO, as well as modified MAO, referred to herein as MMAO, which contains some higher alkyl groups to improve the solubility. MAO can be purchased from Albemarle Corporation, Baton Rouge, La., typically in a 10 wt % solution in toluene." (Emphasis added). Similarly, Yang discloses in its examples section at para. [0165] that it uses "methyl alumoxane (30 wt % in toluene) obtained from Albemarle Corporation. Because Yang expressly uses a toluene solution of MAO to promote supportation thereof, Yang has no way of keeping the taught supported catalyst system free of aromatic solvents.
Furthermore, since Yang uses a toluene solution of MAO itself, this reference is further silent regarding a reaction product of an alumoxane precursor.
As such, Yang does not disclose each and every feature of independent claim 1. The other claims currently under consideration in this application are dependent from independent claim 1, discussed above, and are believed to be allowable for at least similar reasons. Because each dependent claim is deemed to define an additional aspect of the invention, the individual consideration of each on its own merits is respectfully requested (Remarks, pages 14-15).
The Office respectfully disagrees. The instant claim 1 recites a limitation of “an aromatic-solvent-free support”, not an aromatic solvent of a supported catalyst composition. The support materials taught by Yang et al. includes silica which does not contain an aromatic solvent.
Yang et al. teach a catalyst comprising alumoxane (MAO) ([0092]) (the instant claimed a reaction product of an alumoxane precursor), a bridged metallocene catalyst (Abstract) and support ([0117]-[0118]). As such, the support material is aromatic solvent free support, comprising <0.1.wt.% aromatic solvent.
One example of metallocene Catalyst D has a structure as shown below ([0162]):
PNG
media_image1.png
454
392
media_image1.png
Greyscale
As we see above, the Catalyst D taught by Yang et al. corresponds to the instant claimed catalyst compound represented by the Formula (I), wherein M=Zr (Group IV metal), T=SiMe2, X1=X2=hydrocarbyl CH3, R1=CH3, R2=R4=R6=H, R3=substituted aryl, R5=iso-propyl, R6, R7 as being joined to form a substituted unsaturated cyclic ring structure, J1 and J2 are form a unsaturated cyclic ring structure.
As such, the rejection of claim 1 as set forth in the office action above is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738
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