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 .
Claims 9, 14-15, 17-18, and 26-32 are canceled. Claims 1-8, 10-13, 16, and 19-25 are pending in the instant application.
Priority
This application is a National Phase Application claiming priority to PCT Application Serial No. PCT/US2021/059630, filed November 17, 2021, which claims the benefit of and priority to US Provisional Application No. 63/117328 filed November 23, 2020.
Information Disclosure Statements
Applicants’ Information Disclosure Statement, filed on 05/22/2023, has been considered. Please refer to Applicant’s copy of the PTO-1449 submitted herewith.
Response to Restriction Requirement
Applicant’s election without traverse of elected species of the group of claims directed to the non-hydrolytic oxygen-containing compound of Formula I, including claims 1-4, 10-13, 16, and 25 by Applicant’s representative Corey Tumey on 03/30/2026 is acknowledged. Applicant withdrew claims 5-8 drawn to the process for preparing a supported alumoxane wherein the non-hydrolytic oxygen-containing compound comprises one or more compounds represented by the Formula (II) or Formula (III).
Status of the Claims
Claims 1-4, 10-13, 16, and 19-25 (in part) are under examination on the merits.
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.
Claims 1-4, 10-13, 16, and 19-25 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 pre-AIA the applicant regards as the invention.
Specifically, claims 1-2, 6, and 13 contain the term “about” which is not defined in the specification. The term is subject to subjective interpretation. Therefore, claims 1-2, 6, and 13 are indefinite. In addition, claims 2-4, 10-13, 16, and 19-25 depending on claim 1 are rejected, accordingly.
Claim 13 defines “wherein the at least one hydrocarbyl aluminum comprises a plurality of compounds represented by the formula R1R2R3Al, wherein R1, R2, and R3 is at least about 85% methyl, up to about 15 mol% C1-C20 hydrocarbyl group or a heteroatom containing group, and from 0 to 10 mol% hydrogen based on the total amount of moles of R1, R2, and R3 in the plurality of compounds”. By definition, “hydrocarbyl aluminum” is a single compound, and should not comprises a plurality of compounds represented by the formula R1R2R3Al. In addition, the meaning of the phrase “wherein R1, R2, and R3 is at least about 85% methyl, up to about 15 mol% C1-C20 hydrocarbyl group or a heteroatom containing group, and from 0 to 10 mol% hydrogen based on the total amount of moles of R1, R2, and R3 in the plurality of compounds” is not clear because “hydrocarbyl aluminum” is a single compound, and should not further comprises a plurality of compounds. Otherwise, the term “at least one hydrocarbyl aluminum” would have been difficult to understand for one skilled in the art. Therefore, claim 13 is indefinite.
Claim 22 is rejected for lack antecedent base. Specifically, claim 22 recites the limitation "the metallocene catalyst compound" in claim 20. There is insufficient antecedent basis for this limitation in claim 20, because the term “metallocene” is cited in claim 20. To overcome the rejection, the term "the metallocene catalyst compound” should be replaced with “"the catalyst compound”.
Claim Rejections - 35 USC § 102
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 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.
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 1-4, 10-13, 16, and 19-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2019/127,499 (“the `499 publication”) to Harlan et al.
Applicant’s claim 1 is drawn to a process for prepare a supported alumoxane, comprising: (a) forming a solution by, in an aliphatic hydrocarbon fluid, combining at least one hydrocarbyl aluminum with at least one non-hydrolytic oxygen-containing compound and a support material, wherein the molar ratio of aluminum to non-hydrolytic oxygen in the solution is greater than or equal to 1.5, wherein the aliphatic hydrocarbon fluid has a boiling point of less than about 70 degrees Celsius, and wherein the combining is conducted at a temperature of less than about 70 degrees Celsius; (b) distilling the solution at a pressure of greater than about 0.5 atm to form a supported alumoxane precursor, wherein the precursor comprises from about 0 wt % to about 50 wt % of the aliphatic hydrocarbon fluid based on the total weight of the precursor; and (c) heating the precursor to a temperature greater than the boiling point of the aliphatic hydrocarbon fluid and less than about 160 degrees Celsius to form a supported alumoxane.
The `499 publication (Abstract) discloses methods for preparing a catalyst system comprising contacting in an aliphatic solvent at least one support material, at least one hydrocarbyl aluminum compound and at least one non-hydrolytic active oxygen-containing compound to form a supported alumoxane (catalyst precursor) and contacting the supported alumoxane with at least one catalyst compound having a Group 3 through Group 12 metal atom or lanthanide metal atom. The supported alumoxane may be heated prior to contact with the catalyst compound. Example 4 of the `499 publication [0192] discloses a specific example of a method for preparing a catalyst system comprising mixing AlMe3 (hydrocarbyl aluminum compound) with 25 ml of dried and degassed n-pentane (aliphatic solvent having boiling point of 36.1°C). The resulting solution was cooled to -20°C (wherein the combining is conducted at a temperature of less than about 70 degrees Celsius), and added the methacrylic acid (non-hydrolytic active oxygen-containing compound of the formula (I)). After stirring for about 10 minutes the pentene was dried down and then 3.0 ml of pentane was added. The silica (ES70-875) was added to this in a semi-incipient wetness technique and this resulting paste was stirred with a spatula for several minutes. The pentane was then removed under vacuum (Example-4B), Yield=3.18 g. 1.53 g of the resulting dry, free flowing powder was heated in a sealed tube for 16 h at 120° C, to give a colorless free flowing powder (Example-4C). In terms of step (b) “distilling the solution at a pressure of greater than about 0.5 atm”, Example 4 of the `499 publication [0192] teaches the pentane was then removed under vacuum, wherein “under vacuum” refers to an environment with significantly reduced atmospheric pressure, often used in laboratory or industrial settings to remove air, moisture, or volatile substances. One ordinary skilled in the art would have known that “remove pentane under vacuum” reads on the step (b) distilling the solution at a pressure of greater than about 0.5 atm. The step of “1.53 g of the resulting dry, free flowing powder was heated in a sealed tube for 16 h at 120° C” reads on step (b) wherein the precursor comprises from about 0 wt % to about 50 wt % of the aliphatic hydrocarbon fluid based on the total weight of the precursor, and step (c) of claim 1. Therefore, the `499 publication anticipates claim 1.
In terms of claim 2 wherein the precursor comprises from about 1 wt% to about 20 wt% of aliphatic hydrocarbon fluid based on the total weight of the concentrate, Example 4 of the `499 publication [0192] teaches the pentane was then removed under vacuum, and 1.53 g of the obtained 3.18 g of the resulting dry, free flowing powder was heated to obtained the supported alumoxane, wherein the resulting dry, free flowing powder reads on the limitation “the precursor comprises from about 1 wt% to about 20 wt% of aliphatic hydrocarbon fluid based on the total weight of the concentrate”.
In terms of claim 3 wherein heating the precursor produces volatile compounds and derivatives thereof, and wherein the process further comprises removing at least a portion of the volatile compounds and derivatives thereof, Example 4 of the `499 publication [0192] teaches after stirring for about 10 minutes the pentene was dried down… The pentane was then removed under vacuum (Example-4B), which inherently including the step of “heating the precursor produces volatile compounds and derivatives thereof, and wherein the process further comprises removing at least a portion of the volatile compounds and derivatives thereof”.
In terms of claim 4, wherein the at least one non-hydrolytic oxygen-containing compound comprises one or more compounds represented by the Formula (I)
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130
190
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, Example 4 of the `499 publication [0192] teaches methacrylic acid was used as a non-hydrolytic active oxygen-containing compound of the formula (I).
In terms of claim 10, wherein the aliphatic hydrocarbon fluid has a boiling point of at least 40 degrees Celsius less that the boiling point of the hydrocarbyl aluminum, Example 4 of the `499 publication [0192] teaches the aliphatic hydrocarbon fluid is n-pentene (b.p.= 36.1°C), and the boiling point (b.p.) of the hydrocarbyl aluminum (i.e., AlMe3) is 125-127 °C, which reads on claim 10.
In terms of claim 11, the `499 publication [0192] teaches the aliphatic hydrocarbon fluid is n-pentene, which reads on claim 11, wherein the aliphatic hydrocarbon fluid is pentane.
In terms of claims 12-13, Example 4 of the `499 publication [0192] teaches the at least one hydrocarbyl aluminum is AlMe3, which reads on wherein the at least one hydrocarbyl aluminum comprises one or more compounds represented by the formula R1R2R3Al, wherein each of R1, R2, and R3 is independently a C1 to C20 alkyl group.
In terms of claim 16, Example 4 of the `499 publication [0192] teaches the support material is silica (ES70-875), and the aliphatic solvent is dried and degassed n-pentane. In addition, the `499 publication (claim 3) teaches the support material has an average particle size between 1 and 200 microns, an average pore volume of between 0.05 and 5 mL/g, and a surface area between 50 and 800 m2/g. The `499 publication (claim 4) teaches the support material has been treated with one or more of a Bronsted acid, a Lewis acid, a salt and a Lewis base.
In terms of claim 19, Example 4 of the `499 publication [0192] teaches a method for preparing a catalyst system under the condition listed in TABLE 4 as following:
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244
656
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.
In terms of claim 20, further comprising (d) introducing at least one catalyst compound, and optionally a continuity additive, to the supported alumoxane to form a catalyst system, the `499 publication (claim 22) teaches a method for preparing a catalyst system comprising contacting the supported alumoxane of claim 1 with a catalyst compound having a group 3 through group 12 metal atom or lanthanide atom.
In terms of claim 21, see claim 24 of the `499 publication.
In terms of claim 22, see claim 25 of the `499 publication.
In terms of claim 23 wherein the catalyst compound is
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214
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, the `499 publication (claim 28) teaches the catalyst compound is the compound of formula I
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384
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, which reads on claim 23.
In terms of claim 24, see claims 27 of the `499 publication.
In terms of claim 25, Example 8 of the `499 publication [0198] discloses a polymerization experimental comprising (e) contacting the catalyst system SMAO-ES70-875C with one or more monomers of ethylene flow in a gas phase fluidized bed, solution phase, and/or a slurry phase, to produce a polymer product: optionally wherein the polymer product is a copolymer monomer of ethylene.
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); 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 1-4, 10-13, 16, and 19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,021,552 (“the `552 patent”) to Harlan et al.
Although the conflicting claims are not identical, they are not patentably distinct from each other because Applicant’s claims 1-4, 10-13, 16, and 19 and claims 1-25 of the `552 patent are all drawn to a process for prepare a supported alumoxane, comprising: (a) forming a solution by, in an aliphatic hydrocarbon fluid, combining at least one hydrocarbyl aluminum with at least one non-hydrolytic oxygen-containing compound and a support material; (b) distilling the solution at a pressure of greater than about 0.5 atm to form a supported alumoxane precursor, wherein the precursor comprises from about 0 wt % to about 50 wt % of the aliphatic hydrocarbon fluid based on the total weight of the precursor; and (c) heating the precursor to a temperature greater than the boiling point of the aliphatic hydrocarbon fluid and less than about 160 degrees Celsius to form a supported alumoxane.
Claim Objection
Claim 1 is objected to because of the following informalities: The phrase “A process to prepare a supported alumoxane” is suggested to be replaced with “A process for preparing a supported alumoxane”.
Conclusions
Claims 1-4, 10-13, 16, and 19-25 are rejected.
Claim 1 is objected to.
Claims 5-8 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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