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 .
Continued Examination Request
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/22/2026 has been entered.
Claim Rejections – 35 U.S.C. 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.
Claims 1, 3-7, 11-12, 16 and 18 stand rejected under 35 U.S.C. 103 as being unpatentable
over Jiang et al (US 2020/0002451 A1) ('Jiang') in view of Elovainio et al (EP 1671697 A1) ('Elovainio').
The basis of the rejection and the Examiner's position regarding the applied art are adequately
set forth in the first Office action (OA) (see page 5-10), and that explanation is incorporated herein by reference.
Further with respect to the added limitation to “concentration of the catalyst in the catalyst slurry ranges from 10 wt.% to 40 wt.%, based on the total amount of the catalyst slurry” (Cl. 1, final two lines), it is noted that Jiang plainly teaches that catalyst concentration in the suspension can be varied in a range from 0.01 to 10 wt.% (see ¶ [0061]). The overlapping endpoint of the prior art and claimed range renders prima facie obvious further modification of Jiang to form a suspension comprising catalyst at a weight percent within claim 1, especially in absence of a showing of criticality of the claimed range (see MPEP 2144.05 (I)). And although Jiang further states that since the rate of catalyst consumption in the polymerization reactor is very low, lower catalyst concentration is preferred when the catalyst suspension is passed continuously (see id.), it is well settled that preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, especially as Jiang nowhere discourages or discredits the use of higher catalyst concentrations approaching or coinciding with the upper endpoint of the disclosed range (see MPEP 2123 (II)).
Claim 9 stands rejected under 35 U.S.C. 103 as being unpatentable over Jiang in view of
Elovainio as applied to claim 3 above, and further in view of Burns et al (US 2004/0122188 A1)
('Burns').
The basis of the rejection and the Examiner's position regarding the applied art are adequately
set forth in the first Office action (OA) (see pages 10-11), and that explanation is incorporated herein by reference.
Claim 17 stands rejected under 35 U.S.C. 103 as being unpatentable over Jiang in view of Elovainio as applied to claim 5 above, and further in view of Sonneborn MSDS.
The basis of the rejection and the Examiner's position regarding the applied art are adequately set forth in the first Office action (OA) (see pages 11-12), and that explanation is incorporated herein by reference.
Response to Argument
Applicant’s arguments filed 07/22/2026 have been fully considered but they are not persuasive with respect to the repeated rejections.
With respect to Jiang, Applicant argues that while Jiang teaches a maximum of 10% (i.e., wt.% catalyst), Jiang teaches lower catalyst concentrations throughout the text.
In response, Examiner acknowledges the bulk of Jiang’s disclosure appears to focus on the use of lower catalyst concentrations; nevertheless, Jiang’s overall teachings are nowhere seen to discourage the use of higher catalyst concentrations within the disclosed range, including 10 wt.%. And, while Jiang expresses preference for a lower catalyst concentration when the catalyst suspension is passed continuously as noted above, Jiang attributes this preference to the rate of catalyst consumption in the polymerization reactor being very low. Accordingly, where residual or unconsumed catalyst in the reactor is tolerable or where the catalyst suspension is passed to the reactor at periodic intervals, it would have been prima facie obvious to one of ordinary skill in the art to increase catalyst concentration in Jiang’s suspension to 10 wt.% on total amount of slurry, as in present claim 1.
As to applicant’s further assertion that increasing Jiang’s catalyst concentration would increase viscosity and create plugging risks, it is firstly noted that Jiang teaches optional agitation to maintain a uniform catalyst suspension in the catalyst holding tank, as well as heating to lower its viscosity during the preparation of the catalyst suspension (see [0061]). Thus, to the extent a higher catalyst concentration may be problematic in terms of increased viscosity, an ordinarily skilled practitioner would have gleaned from Jiang several measures for mitigating this problem. In addition, it is submitted that Jiang’s stated purpose in using an oil---to avoid catalyst/activator powder or powder from settling within the mixture in the catalyst holding vessel, delivery/storage tank and feed lines (¶ [0060]; emphasis added)---fairly suggests that plugging would not pose a serious risk when using catalyst/oil suspensions with concentrations throughout Jiang’s prescribed range.
With respect to Elvainio, Applicant argues that the reference does not relate to the problem of plugging and the process is completely different from that claimed. However, even if this argument is accepted, it is maintained that the prima facie case remains intact because Elovainio is relied upon only for its teaching to form a catalyst slurry using an oil having a dynamic viscosity within the claimed range
for oil dynamic viscosity, and because the proposed modification of Jiang involving positioning of the catalyst feed vessel above the polymerization reactor would have been obvious to one of ordinary skill in the art from the common technical knowledge pertaining to gravitational flow effects, as discussed in the first OA. Therefore, it is not necessary that Elovainio teaches or suggests the particular piping layout nor the catalyst concentration as claimed herein; the latter being suggested by Jiang as discussed above.
Allowable Subject Matter
Claims 2/8 and 10 stand objected to as being dependent on a rejected base claim, but would be
allowable if rewritten in independent form including all the limitations of the base claim and any
intervening claim. The reasons for indicating allowable subject matter in said claims are adequately set
forth in the first OA, and that explanation is incorporated herein by reference.
Claims 19-20 are objected to as being dependent on a rejected base claim, but would be
allowable if rewritten in independent form including all the limitations of the base claim and any
intervening claim.
The closest prior art to Jiang and Elovainio, discussed above and in the first OA, does not describe the inventions of said claims, especially claimed step of forming a catalyst slurry wherein the concentration of the catalyst in the slurry is between 15 and 30 wt.% (claim 19) or between 20 and 25 wt.% (claim 20). The claimed concentrations exceed Jiang’s maximum of 10 wt.% for concentration of catalyst in the suspension, and while Elovianio illustrates production of a catalyst slurry containing 22.6% by weight solids (see Example 1), Elovianio provides no proper rationale to support modifying Jiang by increasing catalyst concentration in Jiang’s suspension to attain a comparably high solids content.
Claims 14-15 stand allowed.
The closest prior art to Jiang and Elovainio, discussed above and the first OA, does not describe the invention of said claims, especially claimed feature "wherein the location above the polymerization reactor [of the first catalyst feed vessel] denotes a position above the injection point of the respective reactor." Furthermore, neither Jiang nor Elvainio is found to provide proper rationale for modifying their respective inventions into the invention of claim 14 or 15.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/08-19-26
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