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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Resconi et al. (US 20080139762 A1) with Cecchin et al. (WO 9945043 A1) as incorporated by reference by Resconi.
Regarding claim 1, Resconi teaches a copolymer (B) of butene-1 with hexene-1 having a content of hexene-1 comonomer units of up to 20 mol% (Resconi, Abstract, Par. 0091, 0108-0114, and 0118-0120), which overlaps the claimed range of 2 to 4 % by weight and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2131.03. Resconi teaches the copolymer has a Mw/Mn of greater than 4 (Resconi, Par. 0114), which overlaps the claimed range of higher than 4 to 9 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Regarding the melt temperatures and flexural modulus of the copolmer, Resconi teaches a copolymer that is identical or substantially identical to the claimed copolymer. 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), see MPEP 2112.01, I. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01, II. Resconi teaches a copolymer that comprises butene-1 and hexene-1 and does not state that other materials are required and thus teaches the copolymer consists of the butene-1 and hexene-1 (Resconi, Par. 0091, 0108-0114 and 0118-0120), which is the same materials as the instant invention per the instant specification Par. 0007. Resconi teaches the hexene-1 is comprised in an amount that renders obvious that of the instant invention as stated above. Resconi teaches the copolymer has a molecular weight distribution Mw/Mn of equal to or higher than 4 (Resconi, Par. 0114), which is the same as the instant invention per the instant specification Par. 0020. Resconi teaches the copolymerization is done using liquid butene-1 as a medium at a temperature of between 50-90°C (Resconi, Par. 0089-0090), which is the same medium and at the same temperature of the instant invention per the instant specification Par. 0035-0036.
Resconi further teaches the copolymerization is done using a catalyst such as those disclosed in Cecchin et al. (WO 9945043 A1) as incorporated by reference (Resconi, Par. 0112), which is the same as that of the instant invention per the instant specification Par. 0038. This is further shown as both Cecchin and the instant specification utilize a stereospecific catalyst that comprises a solid component made from TiCl4 and an internal electron-doner that is a diisobutyl phthalate that is supported on MgCl2, an alkyl aluminum compound that is triethylaluminum, and an external electron donor compound that is cyclohexyltrimethoxysilane (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both Cecchin and the instant specification further teach the molar ratio of the internal electron donor compound to MgCl2 is from 0.01 to 1, and the ratio between the alkyl aluminum compound to the electron donor compound is from 0.1 to 500 (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both the instant specification and Cecchin teach the catalyst is pre-polymerized in a liquid or gas phase at a temperature lower than 100°C (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8).
Resconi therefore teaches a copolymer composition consisting of the same materials in the same quantities, with the same Mw/Mn, and is formed using the exact same catalyst, the same copolymerization medium, and at the same temperature as the instant invention. Furthermore, the instant specification does not state that any specific modifications are made to achieve the clamed properties. Therefore, absent objective evidence to the contrary, the copolymer of Resconi, which is identical to the instant invention, would have inherently exhibited the same properties of the claimed invention such as melt temperatures and flexural modulus, see MPEP 2112.01.
Regarding claims 2-5 and 7-10, Regarding the properties of the copolymer such as MIE (claim 2), X-ray crystallinity (claim 3), crystallization temperature (claim 4), content fraction soluble in xylene (claim 5), Mz (Claim 7), Mz/Mw (claim 8), flexural modulus (claim 9), and Izod impact resistance (claim 10), Resconi teaches a copolymer that is identical or substantially identical to the claimed copolymer. 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), see MPEP 2112.01, I. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01, II. Resconi teaches a copolymer that comprises butene-1 and hexene-1 and does not state that other materials are required and thus teaches the copolymer consists of the butene-1 and hexene-1 (Resconi, Par. 0091, 0108-0114 and 0118-0120), which is the same materials as the instant invention per the instant specification Par. 0007. Resconi teaches the hexene-1 is comprised in an amount that renders obvious that of the instant invention as stated above for claim 1. Resconi teaches the copolymer has a molecular weight distribution Mw/Mn of equal to or higher than 4 (Resconi, Par. 0114), which is the same as the instant invention per the instant specification Par. 0020. Resconi teaches the copolymerization is done using liquid butene-1 as a medium at a temperature of between 50-90°C (Resconi, Par. 0089-0090), which is the same medium and at the same temperature of the instant invention per the instant specification Par. 0035-0036.
Resconi further teaches the copolymerization is done using a catalyst such as those disclosed in Cecchin et al. (WO 9945043 A1) as incorporated by reference (Resconi, Par. 0112), which is the same as that of the instant invention per the instant specification Par. 0038. This is further shown as both Cecchin and the instant specification utilize a stereospecific catalyst that comprises a solid component made from TiCl4 and an internal electron-doner that is a diisobutyl phthalate that is supported on MgCl2, an alkyl aluminum compound that is triethylaluminum, and an external electron donor compound that is cyclohexyltrimethoxysilane (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both Cecchin and the instant specification further teach the molar ratio of the internal electron donor compound to MgCl2 is from 0.01 to 1, and the ratio between the alkyl aluminum compound to the electron donor compound is from 0.1 to 500 (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both the instant specification and Cecchin teach the catalyst is pre-polymerized in a liquid or gas phase at a temperature lower than 100°C (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8).
Resconi therefore teaches a copolymer composition consisting of the same materials in the same quantities, with the same Mw/Mn, and is formed using the exact same catalyst, the same copolymerization medium, and at the same temperature as the instant invention. Furthermore, the instant specification does not state that any specific modifications are made to achieve the clamed properties. Therefore, absent objective evidence to the contrary, the copolymer of Resconi, which is identical to the instant invention, would have inherently exhibited the same properties of the claimed invention such as MIE (claim 2), X-ray crystallinity (claim 3), crystallization temperature (claim 4), content fraction soluble in xylene (claim 5), Mz (Claim 7), Mz/Mw (claim 8), flexural modulus (claim 9), and Izod impact resistance (claim 10), see MPEP 2112.01.
Regarding claim 6, Resconi teaches the copolymer has a Mw/Mn of greater than 4 (Resconi, Par. 0114), which overlaps the claimed range of from 5 to 8 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claims 11-12, Resconi teaches a pipe comprising the copolymer (Resconi, Par. 0002).
Response to Arguments
Applicant’s remarks and amendments filed 18 February 2026 have been fully considered.
Applicant requests withdrawal of the rejection under 35 USC § 112 set forth in the previous office action.
The rejection under 35 USC § 112 set forth in the previous office action has been withdrawn due to the present claim amendments.
Regarding arguments directed to the rejections over prior art, on pages 5-7 of the remarks, Applicant first argues that Resconi does not teach and would not inherently exhibit the claimed flexural modulus. This is not found persuasive for the following reasons:
Resconi teaches a copolymer that is identical or substantially identical to the claimed copolymer. 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), see MPEP 2112.01, I. Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01, II. Resconi teaches a copolymer that comprises butene-1 and hexene-1 and does not state that other materials are required and thus teaches the copolymer consists of the butene-1 and hexene-1 (Resconi, Par. 0091, 0108-0114 and 0118-0120), which is the same materials as the instant invention per the instant specification Par. 0007. Resconi teaches the hexene-1 is comprised in an amount that renders obvious that of the instant invention as stated in the previous office action for claim 1. Resconi teaches the copolymer has a molecular weight distribution Mw/Mn of equal to or higher than 4 (Resconi, Par. 0114), which is the same as the instant invention per the instant specification Par. 0020. Resconi teaches the copolymerization is done using liquid butene-1 as a medium at a temperature of between 50-90°C (Resconi, Par. 0089-0090), which is the same medium and at the same temperature of the instant invention per the instant specification Par. 0035-0036. Resconi further teaches the copolymerization is done using a catalyst such as those disclosed in Cecchin et al. (WO 9945043 A1) as incorporated by reference (Resconi, Par. 0112), which is the same as that of the instant invention per the instant specification Par. 0038. This is further shown as both Cecchin and the instant specification utilize a stereospecific catalyst that comprises a solid component made from TiCl4 and an internal electron-doner that is a diisobutyl phthalate that is supported on MgCl2, an alkyl aluminum compound that is triethylaluminum, and an external electron donor compound that is cyclohexyltrimethoxysilane (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both Cecchin and the instant specification further teach the molar ratio of the internal electron donor compound to MgCl2 is from 0.01 to 1, and the ratio between the alkyl aluminum compound to the electron donor compound is from 0.1 to 500 (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Furthermore, both the instant specification and Cecchin teach the catalyst is pre-polymerized in a liquid or gas phase at a temperature lower than 100°C (See the instant specification Par. 0027-0037; Cecchin, Pages 3-8). Resconi therefore teaches a copolymer composition consisting of the same materials in the same quantities, with the same Mw/Mn, and is formed using the exact same catalyst, the same copolymerization medium, and at the same temperature as the instant invention. Furthermore, the instant specification does not state that any specific modifications are made to achieve the claimed flexural modulus. Therefore, absent objective evidence to the contrary, the copolymer of Resconi, which is identical to the instant invention, would have inherently exhibited the same flexural modulus see MPEP 2112.01.
Regarding Applicant's argument that Resconi teaches a flexural modulus outside of the claimed range, Applicant points to areas of Resconi that teach a polymer (a) that is a 1-butene polymer that comprises a flexural modulus of 50-200 MPa (Resconi, Par. 0093 and 0101). However, these are specific embodiments directed to a polymer (A) whereas the embodiment relied upon in the grounds of rejection above is directed towards a copolymer that is a polymer (B). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. Meanwhile, Resconi teaches a copolymer that is identical or substantially identical to the claimed invention and formed in the same method with the same catalyst as stated above. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.01. The copolymer of Resconi would thus inherently have exhibited the claimed flexural modulus.
Regarding Applicant's argument directed towards the instant comparative example 1 having a flexural modulus of 320 MPA with a hexene content of 1.8 wt.%, it is noted that this comparative example lays outside of the range of the embodiment of Resconi relied upon in the rejection to claim 1, as the comparative example utilizes a hexene content that lays outside of the claimed range of 2-4 wt.%. Applicant thus has not shown objective evidence that the embodiment of Resconi relied upon in the grounds of rejection would not exhibit the claimed flexural modulus.
In view of the above, Resconi would have inherently exhibited the claimed flexural modulus and Applicant's argument is unpersuasive.
Secondly, on pages 7-8 of the remarks, Applicant argues that Resconi does not teach the claimed Mw/Mn. This is not found persuasive for the following reasons:
Applicant states that the teachings of Par. 0091, which teaches the amount of hexene-1 units, is directed towards only the polymer (A). However, Par. 0091 discusses possibilities for "1-butene polymers", which also encompasses the polymer (B). Resconi further teaches the 1-butene polymer (B) has a Mw/Mn of higher than 4 when obtained using a titanium-based catalyst system (Resconi, Par. 0114), which renders obvious the claimed range of higher than 4 to 9 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding Applicant pointing to examples that use a Mw/Mn outside of the claimed range, these are specific examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. These specific examples of Resconi do not teach away from the broader disclosure of Resconi that teaches the copolymer may have a Mw/Mn higher than 4.
In view of the above, Resconi renders obvious the claimed Mw/Mn and Applicant's argument is unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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