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.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites a range of less than 2.5 mol% VCH which includes 0 mol% VCH. Claim 1 from which Claim 6 depends requires 0.25 to 5 mol% of VCH in the copolymer. Therefore, Claim 6 does not require all the limitations of the claim from which it depends. Examiner recommends amending the range of Claim 6 to include 0.25 mol % - 2.5 mol% of VCH to overcome this rejection.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 4-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aitola (Copolymerization of Vinylcyclohexane with Ethene and Propene using Zirconocene Catalyst, provided on IDS).
In Table 1, Aitola teaches various ethylene-vinylcyclohexane (VCH) copolymerizations with 0.51,1.21, 2.92 and 3.46 % of VCH incorporation and 41.3-54.5 % crystallinity. While Aitola does not specifically teach the above % incorporation is molar, Aitola on page 6572 2nd column teaches VCH incorporation is known to be up to 38 mol% in the art. Therefore, one of ordinary skill in the art is reasonably suggested the 0.51, 1.21, 2.92 and 3.46% VCH amounts must in mol % in Aitola due to the above discussion of mol% of incorporated VCH in known copolymerizations in the art. The above anticipates the mol% range and crystallinity of Claim 4.
Aitola is silent on the phase angle and MSHI limitation of Claim 4. Applicant’s Figure 3 discloses the phase angle of various comparative and inventive examples of copolymer and Table 3 of the as-filed specification discloses various MSHI of comparative and inventive examples. None of Applicant’s comparative examples are ethylene-VCH copolymers nor does Applicant provide any indication the above properties are dependent on catalyst used to make ethylene-VCH copolymer or the amount of VCH in a copolymer or any other parameter related to ethylene-VCH copolymer. All of the ethylene-VCH copolymers have the phase angle limitation between 70o and 30o and all copolymer listed (even comparative without VCH) have the MSHI in the range of less than 1.7 claimed. Therefore, one of ordinary skill in the art is reasonably suggested when test appropriately the ethylene-VCH copolymers of Aitoka must have the recited phase angle and MSHI limitation of Claim 4 because the evidence of record reasonably suggests that ethylene-VCH copolymers which have single digit mol % of VCH with crystallinity as recited must have these properties. This anticipates these limitations of Claim 4. Further, for the same reasons above, one of ordinary skill in the art is reasonably suggested, when test appropriately, the copolymers of Aitola must have the ranges of these properties in Claim 8-10. This anticipates Claim 8, Claim 9 and Claim 10.
With respect to Claim 5, as above, Aitola does not teach the density of the ethylene-VCH copolymers, however, every one of Applicant’s inventive ethylene-VCH copolymer has densities in the recited range with VCH amounts in mol % also in the range of VCH amounts of Aitola’s table 1 copolymer and the densities vary extremely weakly with changes in comonomer amount. Therefore, based on the above evidence, when tested appropriately, one of ordinary skill in the art is reasonably suggested the densities of Aitola Table 1 copolymers must be in the recited range of Claim 5 anticipating the claim.
The 0.51 and 1.21 mol % VCH copolymer of Table 1 of Aitola anticipate Claim 6.
With respect to Claim 7 and 11-13, as above, Aitola does not teach the amount of branching nor the aDTI or Tg of these claims. However, every one of Applicant’s inventive ethylene-VCH copolymer has the properties recited by these claims with VCH amounts in mol % also in the range of VCH amounts of Aitola’s table 1 copolymer. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested the amount of branching, aDTI and Tg of Aitola’s Table 1 copolymers must be in the recited range of Claim 7, Claim 11, Claim 12 and Claim 13 due to the above identified similarities of the copolymers anticipating the claim.
In other words, the evidence of record reasonably suggests the material properties recited by Claims 4-5 and 7-13 must be present in the ethylene-VCH copolymers of Aitola because every piece of evidence of record, i.e. Applicant’s inventive examples, reasonably suggests these properties must be present (or are characteristic) of ethylene-VCH copolymers with mol % VCH and crystallinity in the recited range.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Claims 4-5 and 7-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iseki (U.S. 6,288,193) as evidenced by Aitola (Copolymerization of Vinylcyclohexane with Ethene and Propene using Zirconocene Catalyst, provided on IDS).
Iseki teaches films or sheets of ethylene-vinylcyclohexane (VCH) copolymers. See Column 28 lines 5-45. Example 1 teaches and ethylene-VCH copolymer with 2.6 mol % of VCH with a Tg of -9.6 oC and PDI of 1.8.
Iseki is silent on the crystallinity of the ethylene-VCH copolymers.
As evidenced by Aitola in Table 1, ethylene-VCH copolymers with molar amounts of VCH in the range of 0.51 to 3.46, such as Iseki’s are known to have crystallinities in the range of ~41 to ~ 54 %. Therefore, based on this evidence, one of ordinary skill in the art is reasonably suggested the 2.6 mol% ethylene-VCH copolymer of Iseki must have a crystallinity in the recited range of Claim 4 and Claim 14’s film when tested appropriately. This anticipates the crystallinity and mol % ranges of Claim 4 and Claim 14.
Iseki is silent on the phase angle and MSHI limitation of Claim 4. Applicant’s Figure 3 discloses the phase angle of various comparative and inventive examples of copolymer and Table 3 of the as-filed specification discloses various MSHI of comparative and inventive examples. None of Applicant’s comparative examples are ethylene-VCH copolymers nor does Applicant provide any indication the above properties are dependent on catalyst used to make ethylene-VCH copolymer or the amount of VCH in a copolymer or any other parameter related to ethylene-VCH copolymer. All of the ethylene-VCH copolymers have the phase angle limitation between 70o and 30o and all copolymer listed (even comparative without VCH) have the MSHI in the range of less than 1.7 claimed. Therefore, one of ordinary skill in the art is reasonably suggested, when test appropriately, the ethylene-VCH copolymers of Iseki, in particular that of Example 1, must have the recited phase angle and MSHI limitation of Claim 4 and 14 because the evidence of record reasonably suggests that ethylene-VCH copolymers which have single digit mol % of VCH with crystallinity as recited must have these properties. This anticipates these limitations of Claim 4 and Claim 14. Further, for the same reasons above, one of ordinary skill in the art is reasonably suggested, when test appropriately, the copolymers of Iseki must have the ranges of these properties in Claim 8-10. This anticipates Claim 8, Claim 9 and Claim 10.
With respect to Claim 5 and Claim 15, as above, Iseki does not teach the density of the ethylene-VCH copolymers, however, every one of Applicant’s inventive ethylene-VCH copolymer has densities in the recited range with VCH amounts in the recited mol % range and the densities vary extremely weakly with changes in comonomer amount. Therefore, based on the above evidence, when tested appropriately, one of ordinary skill in the art is reasonably suggested the densities of Iseki’s ethylene-VCH copolymers, in particular that of Example 1, must be in the recited range of Claim 5 anticipating the claim.
With respect to Claim 7 and 11-12, 16-17, as above, Iseki does not teach the amount of branching nor the aDTI of these claims. However, every one of Applicant’s inventive ethylene-VCH copolymer has the properties recited by these claims with VCH amounts in mol % in the range of VCH amounts of Iseki’s copolymer, in particular that of Example 1. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested the amount of branching and aDTI of Iskei’s ethylene-VCH copolymers, in particular that of Example 1, must be in the recited range of Claim 7, Claim 11, Claim 12, Claim 16 and Claim 17 due to the above identified similarities of the copolymers anticipating the claim.
The Tg of -9.6 anticipates Claim 13 and Claim 18.
In other words, the evidence of record reasonably suggests the material properties recited by Claims 4-5 and 7-13, 14-18 must be present in the ethylene-VCH copolymers of Iseki, in particular that of Example 1, because every piece of evidence of record, i.e. Applicant’s inventive examples, reasonably suggests these properties must be present (or are characteristic) of ethylene-VCH copolymers with mol % VCH and crystallinity in the recited range if they are not otherwise specifically taught.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iseki (U.S. 6,288,193) as evidenced by Aitola (Copolymerization of Vinylcyclohexane with Ethene and Propene using Zirconocene Catalyst, provided on IDS).
Iseki is applied as above under §102.
Iseki exemplifies 2.6 mol% VCH but does not otherwise exemplify a ethylene-VCH copolymer with less than 2.5 mol% VCH.
Iseki teaches in Column 4 lines 45-55 the molar content of VCH is preferably in the range of 0.8 to 20 mol% for excellent impact strength and transparency.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Iseki, in particular that of Example 1, such that the VCH amount was in the range of 0.8 to 20 mol% in order to provide the copolymers with excellent impact strength and transparency as taught by Iseki in Column 4 lines 45-55. One of ordinary skill in the art would have been motivated to practice in the range of 0.8 to 2.6 mol% of VCH because Iseki already exemplifies this amount and this range would allow one of ordinary skill in the art to explore the lower end of Iseki’s 0.8 to 20 mol% range.
This overlaps the recited range Claim 6 rendering it obvious.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Iseki (U.S. 6,288,193) in view of Ajellal (U.S. 20200079887) as evidenced by Aitola (Copolymerization of Vinylcyclohexane with Ethene and Propene using Zirconocene Catalyst, provided on IDS).
Iseki teaches films or sheets of ethylene-vinylcyclohexane (VCH) copolymers. See Column 28 lines 5-45. Example 1 teaches and ethylene-VCH copolymer with 2.6 mol % of VCH with a Tg of 9.6 oC and PDI of 1.8.
The exemplified Example 1 catalyst is not the bridged hafnocene recited by Claim 1.
Ajella, working in the field of ethylene copolymerizations with α-olefins, teaches a bridged hafnocene catalyst which give high productivity combined with high solubility, molecular weight capability and comonomer incorporation ability. (¶[0001])
Iseki exemplifies gas phase polymerization but is not limited to it and may use any polymerization method including liquid phase polymerization and temperatures for liquid phase polymerization of up to 120 oC (Column 27 line 30-45, 50-60)
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Iseki, in particular that of Example 1, by using the bridge hafnocene catalyst of Ajella for the advantage of using a catalyst which gives which give high productivity combined with high solubility, molecular weight capability and comonomer incorporation ability as taught by Ajella. (¶[0001])
A skilled artisan would have a reasonable expectation of success in the above catalyst change because Iseki is open to any polymerization technique including liquid phase (i.e. solution) polymerization and Ajella teaches α-olefins are the comonomers (¶[0123]) and vinylcyclohexane is an α-olefin.
The bridge hafnocene reads over the catalyst of Claim 1 as R1 and R2 of the Ajella catalyst reads over the hydrocarbyl groups of R4 and R5 as they include cyclic and aryl groups (see page 6 lines 5-15) and the rest of Ajella’s catalyst reads over the instantly claimed catalyst in an apparent manner.
Iseki is silent on the crystallinity of the ethylene-VCH copolymers.
As evidenced by Aitola in Table 1, ethylene-VCH copolymers with molar amounts of VCH in the range of 0.51 to 3.46, such as Iseki’s are known to have crystallinities in the range of ~41 to ~ 54 %. Therefore, based on this evidence, one of ordinary skill in the art is reasonably suggested the 2.6 mol% ethylene-VCH copolymer of Iseki and Ajella must have a crystallinity in the recited range of Claim 4 and Claim 14’s film when tested appropriately especially in light of using the bridged hafnocene catalyst as used in the examples. This reads over the crystallinity and mol % ranges of Claim 4 and Claim 14.
Iseki is silent on the phase angle and MSHI limitation of Claim 4. Applicant’s Figure 3 discloses the phase angle of various comparative and inventive examples of copolymer and Table 3 of the as-filed specification discloses various MSHI of comparative and inventive examples. None of Applicant’s comparative examples are ethylene-VCH copolymers nor does Applicant provide any indication the above properties are dependent on catalyst used to make ethylene-VCH copolymer or the amount of VCH in a copolymer or any other parameter related to ethylene-VCH copolymer. All of the ethylene-VCH copolymers have the phase angle limitation between 70o and 30o and all copolymer listed (even comparative without VCH) have the MSHI in the range of less than 1.7 claimed. Additionally, all of the ethylene-VCH copolymers made with the recited bridged hafnocene catalyst have the recited MSHI and phase angle.
Therefore, one of ordinary skill in the art is reasonably suggested, when test appropriately, the ethylene-VCH copolymers of Iseki and Ajella, in particular that of Example 1, must have the recited phase angle and MSHI limitation of Claim 4 and 14 because the evidence of record reasonably suggests that ethylene-VCH copolymers which have single digit mol % of VCH with crystallinity as recited made with the recited bridged hafnocene catalyst must have these properties. This reads over these limitations of Claim 4 and Claim 14. Further, for the same reasons above, one of ordinary skill in the art is reasonably suggested, when test appropriately, the copolymers of Iseki must have the ranges of these properties in Claim 8-10. This reads over Claim 8, Claim 9 and Claim 10.
With respect to Claim 5 and Claim 15, as above, Iseki does not teach the density of the ethylene-VCH copolymers, however, every one of Applicant’s inventive ethylene-VCH copolymer has densities in the recited range with VCH amounts in the recited mol % range and the recited bridged hafnocene catalyst and the densities vary extremely weakly with changes in comonomer amount. Therefore, based on the above evidence, when tested appropriately, one of ordinary skill in the art is reasonably suggested the densities of Iseki’s ethylene-VCH copolymers, in particular that of Example 1, must be in the recited range of Claim 5 reading over these claims.
With respect to Claim 6, Iseki exemplifies 2.6 mol% VCH but does not otherwise exemplify an ethylene-VCH copolymer with less than 2.5 mol% VCH.
Iseki teaches in Column 4 lines 45-55 the molar content of VCH is preferably in the range of 0.8 to 20 mol% for excellent impact strength and transparency.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Iseki, in particular that of Example 1, such that the VCH amount was in the range of 0.8 to 20 mol% in order to provide the copolymers with excellent impact strength and transparency as taught by Iseki in Column 4 lines 45-55. One of ordinary skill in the art would have been motivated to practice in the range of 0.8 to 2.6 mol% of VCH because Iseki already exemplifies this amount and this range would allow one of ordinary skill in the art to explore the lower end of Iseki’s 0.8 to 20 mol% range.
With respect to Claim 7 and 11-12, 16-17, as above, Iseki does not teach the amount of branching nor the aDTI of these claims. However, every one of Applicant’s inventive ethylene-VCH copolymer made with the recited bridge catalyst has the properties recited by these claims with VCH amounts in mol % in the range of VCH amounts of Iseki’s copolymer, in particular that of Example 1. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested the amount of branching and aDTI of Iskei’s ethylene-VCH copolymers, in particular that of Example 1, must be in the recited range of Claim 7, Claim 11, Claim 12, Claim 16 and Claim 17 due to the above identified similarities of the copolymers reading over these claims.
The Tg of -9.6 anticipates Claim 13 and Claim 18.
In other words, the evidence of record reasonably suggests the material properties recited by Claims 4-5 and 7-13, 14-18 must be present in the ethylene-VCH copolymers of Iseki in Ajella, in particular that of Example 1, because every piece of evidence of record, i.e. Applicant’s inventive examples, reasonably suggests these properties must be present (or are characteristic) of ethylene-VCH copolymers with mol % VCH and crystallinity in the recited range and made with a bridge hafnocene catalysts which is within the scope of the catalyst of Claim 1 if they are not otherwise specifically taught.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766