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 .
Response to Amendment
2. The amendment filed by Applicant on June 12, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, instant claim 1 has been amended to include the limitations of claims 4, 15, 16, 19, and further specifying the hydrocarbyl-modified methylaluminoxane being n-octyl modified methylaluminoxane. These limitations in their combination were not previously presented. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1, 3, 5, 7-15, 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Krasovskiy et al (WO2019/067280) in view of Stevens et al (US 2009/0312509) and Sangokoya et al (US 5,066,631).
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.
4. Krasovskiy et al discloses a process for polymerization of polyolefins, including ethylene and 1-butene ([0071]), including a solution polymerization ([0075]), 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 ([0009], [0014], as to instant claims 7-12),
L is (C2-40) hydrocarbylene ([0008], wherein said hydrocarbylene include -CH2CH2CH2- ([0023], as to instant claim 14);
RC, RP, RN is independently (C1-30) hydrocarbyl , (C1-30)heterohydrocarbyl, or -H ([0040], as to instant claim 1);
specifically, R1 and R16 independently selected from -H, (C1-40) heteroaryl
Or the formulae (II), (III) or (IV) ([0006]-[0010], [0038], [0055], as to instant claims 1, 15, 17):
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Wherein R51-59 are C1-40 hydrocarbyl ([0008], as to instant claims 17-18);
Wherein R32 and R34 are selected from (C1-40) hydrocarbyl ([0056], as to instant claim 1);
the metal-ligand complex is overall charge-neutral ([0037], claim 1, as to instant claim 1), and
B) a cocatalyst comprising polymeric or oligomeric aluminoxanes, such as triisobutylaluminum-modified methylalumoxane ([0065]).
Krasovskiy et al further teaches that the cocatalyst maybe used alone or in combination, wherein the cocatalyst may include Lewis acid activating co-catalysts such as (C1-20) hydrocarbyl-substituted aluminum or boron compounds ([0065], [0066], [0068]). Since the aluminum-based cocatalysts, including modified aluminoxanes, can be used alone, therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the modified methylaluminoxane as the cocatalyst alone, or in combination with (C1-20) hydrocarbyl-substituted aluminum as Lewis acid, without using any boron-containing cocatalysts as well, 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).
5. Based on the teachings of Krasovskiy et al, it would have been obvious to a one of ordinary skill in the art to choose and use:
a) at least one of R5, R6, R7 and R8 as halogens ([0040], as to instant claims 7); at least one of R9, R10, R11 and R12 as halogen ([0040], as to instant claims 7, 10)
b) R8 and R9 as (C1-40) hydrocarbyl ([0040]), as specifically exemplified as methyl ([0096], as to instant claim 8);
c) R3 and R14 as (C1-40) hydrocarbyl ([0040]), as specifically exemplified as methyl (Procatalyst 2, p. 13, as to instant claim 9, 10, 12);
d) M as Zr ([0038], as to instant claim 13),
e) R6 and R11 as (C1-40) hydrocarbyl, specifically 1,1-dimethylethyl, i.e. tert-butyl ([0019], [0020], [0040], as to instant claim 11),
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).
6. Though Krasovskiy et al exemplifies the modified methylaluminoxane as being triisobutylaluminum-modified methylaluminoxane ([0065]), Krasovskiy et al does not teach said modified aluminoxane being n-octyl modified methylaluminoxane, and the trihydrocarbyl-modified aluminoxane having less than 30 %mol of trihydrocarbyl aluminum compounds, based on total moles of aluminum and less than 25%mol or less than 15%mol based on the mole of hydrocarbyl-modified methylaluminoxane.
7. However,
1) Stevens et al discloses a process for solution polymerization of propylene, ethylene and C4 alpha olefins including 1-butene ([0095], Abstract) in the presence of a catalyst having the structure of Formula B below ([0057], [0057]):
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Formula B
and further a co-catalyst/activator comprising modified alumoxane, specifically tri(n-octyl) aluminum-modified methylalumoxane comprising 10-18%mol of n-octyl contents ([0042]).
Thus, Stevens et al explicitly teaches the use of tri(n-octyl) aluminum-modified methylalumoxane as the co-catalyst/activator for solution polymerization of alpha-olefins including ethylene and 1-butene.
2) Sangokoya et al discloses n-octylaluminum-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 1, 5). Sangokoya et al explicitly teaches such modified methylaluminoxanes having high activity in ethylene polymerization (col. 4, lines 23-25).
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 1 and 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.
8. Since both Krasovskiy et al and Stevens et al are related to processes for solution polymerization of ethylene and butene-1 in the presence of essentially the same metal-ligand catalysts and the modified methylaluminoxane co-catalyst/activator, and thereby belong to the same field of endeavor, wherein i) Stevens et al explicitly teaches the use of tri(n-octyl) aluminum-modified methylalumoxane as the co-catalyst/activator for solution polymerization of alpha-olefins including ethylene and 1-butene, and further ii) Sangokoya et al teaches the n-octylaluminum-modified methylaluminoxane 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, Stevens et al and Krasovskiy et al, and to use, or obvious to try to use, at least partially, the n-octylaluminum-modified methylaluminoxane as taught by Stevens et al and Sangokoya et al as the modified methylaluminoxane component B) in the process of Krasovskiy et al, since such n-octylaluminum-modified methylaluminoxane is having high activity in ethylene polymerization and 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
Response to Arguments
9. Applicant's arguments filed on June 12, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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 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
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