DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 06/07/2023. The concurrently filed preliminary amendment is acknowledged. Original claims 1-15 and 17, and amended claim 16, are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 06/07/2023, 03/08/2024, 07/24/2024, 11/05/2024 and 01/08/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objection – Claim(s)
Claim 1 is objected to because of the following informalities: referring to line 4, “1” should read –1a-- for consistency in terminology (cf., line 3). Appropriate correction is required.
Claim Rejections – 35 U.S.C. 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 9-11 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.
Regarding Claim 9, the claim provides the limitation to “a carrier supporting the transition metal compound …”. It is not clear what the limitation refers back to in the claim nor in the claims upon which it depends (currently, claims 8/3/1), because there are several different possibilities as to what the limitation might refer back to. As to the different possibilities, “at least one first transition metal compound” and “at least one second transition metal compound” are recited earlier in claim 3 in lines 2-4, and the limitation could refer back to either or both of the first and the second transition metal compound(s). For purposes of substantive examination, the limitation is being broadly construed as referring back to either the at least one first transition metal compound or the at least one second transition metal compound recited in claim 3. However, clarification and appropriate correction are required.
Claims 10-11 depend on claim 9 such that the reasoning used to reject the latter claim above will be used to reject the depend portions of said claims.
Claim Rejections – Nonstatutory 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 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of each of copending Application Nos. 18/038,324 (‘324; published as US 2023/0406972 A1) and 18/265,861 (‘861; published as US 2024/0043588 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the overlapping scope of the mutually claimed subject matter. That is, pending claims 1-14 are drawn to an olefinic polymer that has a density of 0.9 to 0.95 g/cm3 and satisfies defined Equations 1a and 2a (claim 1) and defined Equations 1b and 2b (claim 2). Copending claims 1 and 2 of ‘324 are drawn to an olefin-based polymer which has (1) a density of 0.915 to 0.945 g/cm3; (2) a melt index (I2.16) of 0.5 to 1.5 g/10 min as measured with a load of 2.16 kg at 190° C.; and (3) a ratio between a melt index (I21.6) measured with a load of 21.6 kg and a melt index (I2.16) measured with a load of 2.16 kg at 190° C. (melt flow ratio; MFR) satisfying a defined Equation 1. Copending claims 1 and 2 of ‘861 are drawn to an olefinic polymer which has (1) a density of 0.9 to 0.95 g/cm3; (2) a melt index (I2.16) of 0.5 to 1.5 g/10 min as measured with a load of 2.16 kg at 190° C.; (3) a ratio between a melt index (I.sub.21.6) measured with a load of 21.6 kg and a melt index (I.sub.2.16) measured with a load of 2.16 kg at 190° C. (melt flow ratio; MFR) of 20 or more; (4) a melt tension of 55 mN or more at a velocity at break of 350 mm/s; and (5) a maximum velocity at break of 550 mm/s or more.
Thus, it is acknowledged that, apart from density, the conflicting claims define the olefinic or olefin-based polymer in terms of different property parameters. Nevertheless, the polymer claimed in each of the copending applications is prepared by polymerizing the olefinic or olefin-based monomer in the presence of the same “hybrid catalyst comprising at least one first transition metal compound represented by the following Formula 1; and at least one second transition metal compound selected from a compound represented the following Formula 2 and a compound represented by the following Formula 3” (see pending claims 3/1 and 15), wherein the recited [Formula 1], [Formula 2] and [Formula 3] correspond identically to [Chemical Formula 1], [Chemical Formula 2] and [Chemical Formula 3], respectively, as recited in copending claim 3 of each of ‘324 and ‘861. Furthermore, pending claim 6 recites specific species of the first transition metal compound represented by a Formula 1-1 and 1-2 and the second transition metal compound represented by a Formula 2-1, 2-2, and 3-1, and these formulae are identical to [Chemical Formula 1-1], [Chemical Formula 1-2], [Chemical Formula 2-1], [Chemical Formula 2-2] and [Chemical Formula 3-1], respectively, as recited in copending claim 6 of each of ‘324 and ‘861.
Merely reciting new properties of an olefin polymer product does not make that product unobvious over another identical or substantially identical product. Here, the identity of the hybrid catalyst and polymerization conditions (e.g., gas-phase polymerization; see pending claim 17 and cf., copending claim 16 of ‘324 and ‘861) between the three sets of claims provides a reasonable basis for believing the olefinic polymers of the two copending applications are identical or substantially identical to the olefinic polymer as claimed in the present application.
Therefore, the claims of the copending applications anticipate the scope of the pending claims. Accordingly, it would have been obvious to one of ordinary skill in the art to practice the pending claims when in possession of the copending claims. Thus, the pending claims are deemed obvious variants of the copending claims of ‘324 and ‘861.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Common Ownership Notice
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 Rejections – 35 U.S.C. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1-5, 8-10, and 12-17 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 Jensen et al (US 2005/0159300 A1) (‘Jensen’).
Regarding Claims 1-5 and 15-16; Jensen has already disclosed an olefinic polymer (polyethylene) that has a density of 0.9 to 0.95 g/cm3 (0.917 g/cc), wherein the olefinic polymer is prepared by polymerizing an olefinic monomer (viz., ethylene/hexene) in the presence of a hybrid catalyst comprising at least one first transition metal compound represented by the following Formula 1; and at least one second transition metal compound selected from a compound represented by the following Formula 2 and a compound represented by the following Formula 3 (see ¶¶ [0376] – [0377] (Example 11), [0377] – [0388] (Tables 8A – 8B: metallocenes A and I). Disclosed metallocenes I and A correspond respectively to instant Formulae 1 and 2 of claim 3 where M1 is Hf, M2 is Zr, each of R1 – R4 is hydrogen, each R5 is unsubstituted C4 alkyl (butyl) and each X is halogen (chlorine) (per claims 3-5, 15).
It is acknowledged that Jensen does not characterize the obtained polyethylene in terms of satisfying instant Equations 1a and 2a (claims 1, 15) or Equations 1b and 2b (claims 2, 16). However, Jensen describes the same method step as claimed using a catalyst within the scope of claims 3-5 and 15. Therefore, it is reasonable to presume that at least Example 11 of Jensen provides a product that falls within the ambit of present claim 1, i.e., an olefinic polymer that intrinsically satisfies recited Equations 1a – 2a and 1b – 2b. Accordingly, there is sufficient evidence in the record to justify shifting the burden to Applicant to show otherwise as per In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 8, Jensen further discloses wherein in Example 11, the catalyst comprises a cocatalyst of TEA (i.e., triethylaluminum; see ¶ [0376] and Table 8A) which corresponds to instant Formula 6 where D is Al and Rb, Rc, and Rd are each a C1-C20 hydrocarbon group (ethyl).
Regarding Claims 9/10, Jensen further discloses wherein in Example 11, the catalyst further comprises a carrier supporting the transition metal compound, the cocatalyst compound, or both; and wherein the carrier comprises at least one selected from the group consisting of silica, alumina, and magnesia (viz., fluorided silica-alumina; see ¶ [0376] and Table 8A).
Regarding Claims 12/13, Jensen further discloses wherein in Example 11, the olefinic polymer is a copolymer of an olefinic monomer and an olefinic comonomer; specifically, a polyethylene obtained by copolymerizing ethylene and 1-hexene (see ¶ [0387] (Table 8A)).
Regarding Claim 14, Jensen further discloses wherein in Example 11, the polyethylene product has a density of 0.917 (see ¶ [0388] (Table 8B)). Given that this density approximates the 0.92 density of a commercially available comparative LLDPE material as described herein (i.e., LLDPE M1810HA, cf. Spec., ¶ [030171]), the product of Jensen Example 11 is considered to implicitly qualify as a LLDPE as claimed.
Regarding Claim 17, Jensen further discloses wherein the polymerization of an olefinic monomer is performed by gas-phase polymerization (see ¶¶ [0274] and [0284]).
Claims 1-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by either of WO 2022/108252 A1 (‘WO ‘252’; citing infra to US 2023/0416427 A1 as corresponding English language equivalent) and WO 2022/108233 A1 (‘WO ‘233’; citing infra to US 2023/0416426 A1 as corresponding English language equivalent).
The applied references have a common assignee/inventor(s) with the instant application. Based upon the earlier effectively filed date of the references, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the references was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the references and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
WO ‘252 and WO ‘253 each disclose (see US ‘426, ¶¶ [0113]-[0114] (Table 1), Examples 1-5, and US ‘427, ¶¶ [0098]-[0099] (Table 1), Examples 1-5) the copolymerization of ethylene with
hexene in a gas phase polymerization reactor. The method described in WO ‘252 and WO ‘253 meets all essential features of the process described in the present application and the used catalyst is identical to the hybrid catalyst according to claims 3 and 15 herein. Accordingly, it is plausible to infer, as prima facie matter, that the respective copolymer products will intrinsically satisfy instant Equations 1a/2a (claims 1, 15) and 1b/2b (claims 2, 16). Accordingly, there is sufficient evidence in the record to justify shifting the burden to Applicant to show otherwise as per Spada, supra.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park et al (US 2022/0017665 A1) (‘Park’) as evidenced by IP.com: “Exceed™ XP Performance Polyethylene in Soft Hand Wrap for Low Stretch Force, Low NDR and High Puncture Resistance ED - Darl Kuhn" (June 18, 2020; Cite No. 5 of 11/05/2024 IDS) (‘IP.com’).
Regarding Claims 1-2 and 12-14, Park in Comparative Example 5 (see ¶¶ [0161] and [0186] (Table 3)) discloses an ethylene/1-hexene copolymer (per claims 12-14) produced in a gas phase process, and which is sold under the tradename Exxon XP8318™. IP.com provides evidence that this product was publicly available before the priority date (12/08/2020) of the present application (publication date: 06/18/2020). Park reports in Table 3 for comparative example 5 (i.e., Exxon XP8318™) that the ethylene/1-hexene copolymer has a density of 0.918 g/cm3 (per claim 1); a melting point of 122.1oC; and a crystallization temperature of 107.4oC. This ethylene/1-hexene copolymer therefore fulfills the requirements of satisfying Equations 1a/1b and 2a/2b of present claims 1 and 2 as shown below:
[Equation 1a]
224.02 x 0.918 – 86.257 = 119.4, which is < Tm (= 122.1)
[Equation 1b]
Tm (= 122.1) < 224.02 x 0.918 – 82.257 (=123.4)
[Equation 2a]
219.64 x 0.918 – 95.767 = 105.9, which is < Tc (=107.4)
[Equation 2b]
Tc (= 107.4) < 219.64 x 0.918 – 91.767 (= 109.9).
The subject matters of claims 1-2/12-14 are therefore not regarded to be novel over the public prior use of Exxon XP8318™ as evidenced by Park and IP.com.
Regarding Claims 3-11, it is acknowledged that Park does not describe the process/hybrid catalyst features of these claims; however, there is no record evidence establishing that the recited process necessarily provides a different product vis-à-vis Park’s ethylene/1-hexene copolymer. Note that the difference in olefinic polymer preparation, to be of patentable significance, must result in a substantially different product than that obtained by the prior art process. See MPEP § 2113.
Conclusion
Claims 1-17 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication 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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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/01-07-26
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