DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
2. Claims 1-19 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.
3. Claim 1 refers to radicals of formula (II), formula (III) and formula (IV). However, it is not clear which of the cited formulas is II or III or IV.
4. Claims 2-18 refer to various moieties previously presented in claim 1, but do not have prepositions “the” or “said” in front of those. Therefore, it is not clear if said moieties mentioned for the second and more times are the same or different from those cited previously.
5. Claim 6 recites the hydrocarbyl-modified methylaluminoxane being modified methylaluminoxane. However, the term “modified methylaluminoxane” is broader than the term “hydrocarbyl-modified methylaluminoxane”, and it is not clear what said limitation means.
Claim Rejections - 35 USC § 102/103
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.
6. Claims 1, 6, 9, 11-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494.
7. Ewart et al discloses a process for polymerization of ethylene with alpha-olefins, specifically 1-butene ([0159], [0161], [0156], [0164]) in the presence of a polymer system comprising:
A) a catalyst having the following formula B ([0037]-[0043]):
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B) a cocatalyst comprising a polymeric or oligomeric aluminoxane ([0045]),
Wherein the process does not comprise a boron-containing compound ([0076], as to instant claim 1). Given no boron-containing compounds are present, therefore, the process will inherently be free from an activator containing boron as well.
8. The specific examples recite the use of modified methylaluminoxane MMAO as the cocatalyst ([0226]), and the specific MMAO being MMAO-3A (CAS#146905-79-5) ([0079]). As evidenced by MMAO-3A flyer, MMAO-3A is triisobutyl-modified methylaluminoxane (see the flyer) , i.e. hydrocarbyl-modified methylaluminoxane (as to instant claims 1, 6).
9. The specifically exemplified catalyst A) is Ca. A11 from WO2007/136494 (see [0226]), which is having the following formula A11 (as to instant claims 9, 11-16):
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Formula A11 (See p. 36 of WO2007/136494).
10. In the alternative, based on the teachings of Ewart et al, it would have been obvious to a one of ordinary skill in the art to choose and use i) the compound of Formula B or A11 as the catalyst A), ii) MMAO-3A as the hydrocarbyl-modified aluminoxane component B), iii) conduct polymerization in the absence of any boron-containing compounds, including no boron-containing activator and iv) choose and use 1-butene as the comonomer to be copolymerized with butene-1, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
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.
11. Claims 1, 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over
Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494.
12. Ewart et al discloses a process for polymerization of ethylene with alpha-olefins, specifically 1-butene ([0159], [0161], [0156], [0164]) in the presence of a polymer system comprising:
A) a catalyst having the following formula B ([0037]-[0043]):
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B) a cocatalyst comprising a polymeric or oligomeric aluminoxane ([0045]),
Wherein the process does not comprise a boron-containing compound ([0076], as to instant claim 1). Given no boron-containing compounds are present, therefore, the process will inherently be free from an activator containing boron as well.
13. Based on the teachings of Ewart et al, it would have been obvious to a one of ordinary skill in the art to choose and use:
a) R3 and R21 as halogens ([0041], [0042], as to instant claims 7, 10)
b) R21 as hydrocarbyl of up to 50 atoms ([0041], as to instant claim 8, 9)
c) T4 as C2-20 alkylene ([0039], as to instant claim 14);
d) M as Zr ([0038], as to instant claim 13),
since it would have been obvious to choose material based on its suitability.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
14. The specific examples recite the use of modified methylaluminoxane MMAO as the cocatalyst ([0226]), and the specific MMAO being MMAO-3A (CAS#146905-79-5) ([0079]). As evidenced by MMAO-3A flyer, MMAO-3A is isobutyl-modified methylaluminoxane (see the flyer) , i.e. hydrocarbyl-modified methylaluminoxane (as to instant claims 1, 6).
15. The specifically exemplified catalyst A) is Ca. A11 from WO2007/136494 (see [0226]), which is having the following formula A11 (as to instant claims 9, 11-16):
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Formula A11 (See p. 36 of WO2007/136494).
16. Based on the teachings of Ewart et al, it would have been obvious to a one of ordinary skill in the art to choose and use i) the compound of Formula B or A11 as the catalyst A), ii) MMAO-3A as the hydrocarbyl-modified aluminoxane component B), iii) conduct polymerization in the absence of any boron-containing compound, including an activator and iv) choose and use 1-butene as the comonomer to be copolymerized with butene-1, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
17. Claims 1, 6-19 are rejected under 35 U.S.C. 103 as being unpatentable over
Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494, in further view of Krasovskiy et al (WO2019/067280).
It is noted that while the rejection is made over WO2019/067280 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2020/0277412 is relied upon. All citations to paragraph numbers, etc., below refer to US 2020/0277412.
18. The discussion with respect to Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494, set forth in paragraphs 11-16 above, is incorporated here by reference.
19. Though Ewart et al does not teach the catalyst A) comprising other substituents as claimed in instant invention and the polymerization being a solution polymerization,
Krasovskiy et al discloses a process for polymerization of polyolefins, including ethylene and 1-butene ([0071]), including a solution polymerization ([0075], as to instant claim 19), in the presence of a catalyst comprising:
A’) a catalyst having a formula C:
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Formula C,
Wherein M is Zr, Ti or Hf,
Z is -O- or -NR-;
R1-R16 are independently -H, C1-C40 hydrocarbyl, or halogen,
Or the formulae (II), (III) or (IV) ([0006]-[00
10]):
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Wherein R51-59 are C1-40 hydrocarbyl ([0008], as to instant claims 17-18) and
B’) a cocatalyst comprising triisobutylaluminum-modified methylalumoxane ([0065]).
20. Since both Krasovskiy et al and Ewart et al are related to processes for polymerization of polyolefins, including ethylene and butene-1, in the presence of the same types of Zr-based catalyst and triisobutylaluminum-modified methylalumoxane as the co-catalyst, and thereby belong to the same field of endeavor, wherein Krasovskiy et al shows the Zr-based catalysts having additional substituents, and polymerization being a solution polymerization, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Krasovskiy et al and Ewart et al, to choose and use, or obvious to try to use the Zr-based catalyst having Formula C above as Zr-based catalyst used for copolymerization of ethylene and 1-butene in the process of Ewart et al, and further to conduct the polymerization of Ewart et al in solution, as taught by Krasovskiy et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
21. Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over
Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494, in further view of Sangokoya et al (US 5,066,631).
22. The discussion with respect to Ewart et al (US 2018/0171042), as evidenced by MMAO-3A flyer, 2003 and WO 2007/136494, set forth in paragraphs 11-16 above, is incorporated here by reference.
23. Though Ewart et al does not explicitly teach the hydrocarbyl-modified aluminoxane having less than 50 %mol of trihydrocarbyl aluminum compounds, based on total moles of aluminum and less than 15%mol based on the mole of hydrocarbyl-modified methylaluminoxane,
Sangokoya et al discloses modified aluminoxane used for ethylene polymerization (col. 3, lines 50-col. 4, line 5), wherein said modified aluminoxane comprises the mole ratio of methylaluminoxane to tri-n-octylaluminum of 6:1 (col. 4, lines 20-25) or about 9:1 (col. 4, lines 55-60), i.e. the mole percentage of trihydrocarbyl aluminum of about 10%mol, based on the total mole of hydrocarbyl-modified methylaluminoxane (as to instant claims 4-5). Sangokoya et al explicitly teaches such modified methylaluminoxanes having high activity in ethylene polymerization (col. 4, lines 23-25).
24. Since the amount of trihydrocarbyl aluminum of about 10%mol, based on the total mole of hydrocarbyl-modified methylaluminoxane, i.e. including levels of even less than 10%mol, and less than 15%mol as required by instant claims 4-5, therefore, it would have been reasonably expected that the hydrocarbyl aluminum will be present in amount less than 50%mol and less than 30%mol based on the total moles of aluminum as well, especially since the Example 3 of Sangokoya et al shows the total amount of aluminum being 4.1%wt and only 0.43%wt of aluminum as the hydrocarbyl aluminum (col. 4, lines 55-58), i.e. 10%wt as well; and the mole ratio of aluminum as methylaluminoxane to aluminum of hydrocarbyl-aluminum is as high as 10:1 (claim 7).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Since the hydrocarbyl-modified methylaluminoxane of Sangokoya et al is having high activity in ethylene polymerization (col. 4, lines 23-25), therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sangokoya et al and Ewart et al, and to use, or obvious to try to use, at least partially, the hydrocarbyl-modified methylaluminoxane of Sangokoya et al as the hydrocarbyl-modified methylaluminoxane component B) in the process of Ewart et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764