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 .
Preliminary amendment filed 6/14/2023 is made of record. Claims 3-20 are amended; and claims 1-20 are currently pending in the application.
Claim Objections
Claim 4-5, and 19 is objected to because of the following informalities:
Claims 4 and 5 recite “wherein in sonication is performed” (lines 1-2) and should “wherein sonication is performed”
Claim 19 recites “the at least one copolymerizable monomer”. Claim 19 is dependent on claim 18, for consistency and proper antecedent basis, applicant is advised to rephrase it as “the at least one additional copolymerizable monomer”. Appropriate correction and/or clarification are required.
Claim Rejections - 35 USC § 103
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 the 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.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Corberan roc et al (US 2019/0284313 A1 - hereafter Corberan).
Regarding claims 1-5, Corberan et al teach a process for preparing high-reactivity isobutene homo- or copolymers with a content of terminal vinylidene double bonds per polymer chain of at least 70 mol% (abstract) which reads on the process of producing unsaturated isoolefin copolymer in present claim 1. See example 1, wherein polymerization was initiated by adding isobutylene to a mixture of [emim]Cl-AlCl3, diisopropyl ether, and n-hexane (paragraph 0261) which reads on initiator system in an organic solvent in present claim 1. In case the polymerization catalyst is not fully soluble in the solvent used it may be advantageous to disperse the polymerization catalyst in an organic solvent by vigorously stirring the dispersion using ultrasonic homogenizers (paragraph 0210). In a preferred embodiment ultrasonication of the Lewis acid-donor complex, preferably in an inert solvent prior to polymerization helps to improve polymerization conversion (paragraph 0211). Polymerization was performed as in Example 1 but the suspension of [emim]Cl-AlCl3 in n-hexane was ultrasonicated for 3 minutes (i.e., reads on sonication is performed for 0.5 minutes or more in present claim 4; and performed for 1 to 10 minutes in present claim 5) before the addition of isobutylene (paragraph 0262) which reads on contacting the sonicated initiator solution with a reaction mixture of at least one isoolefin in present claim 1. The process comprises polymerizing isobutene or isobutene-comprising monomer mixture in the presence of at least one Lewis acid effective as a polymerization catalyst (i.e., reads on initiator system comprising a Lewis acid in present claim 1), selected from the group consisting of an aluminum trihalide-donor complex, said complex comprising as the donor at least one organic compound with at least one lone electron pair (paragraphs 0013-0014) which reads on the proton source in present claim 1. It is possible to convert monomer mixtures of isobutene with olefinically unsaturated monomers copolymerizable with isobutene (paragraph 0236) which reads on the copolymerizable unsaturated monomer in present claim 1
Corberan et al are silent with respect to energy input of sonicating a solution of the initiator system.
However, Corberan et al teach that in case the polymerization catalyst is not fully soluble in the solvent used it may be advantageous to disperse the polymerization catalyst in an organic solvent by vigorously stirring the dispersion using ultrasonic homogenizers (paragraph 0210). In a preferred embodiment ultrasonication of the Lewis acid-donor complex, preferably in an inert solvent prior to polymerization helps to improve polymerization conversion (paragraph 0211). Therefore, given that ultrasonic homogenizers are used to dissolve the catalyst by vigorously shaking and ultrasonication helps to improve polymerization conversion, it would have been obvious to one skilled in art prior to the filing of present application to optimize the energy input to any value (such as 100 J/mL or greater as in present claim 1, in the range of 100 J/mL to 1500 J/mL as in present claim 2; and in the range of 500 J/mL to 800 J/ml as in present claim 3) to solubilize the catalyst in a solvent, for above mentioned advantages.
Regarding claims 6 and 13, examples of inert diluent, in Corberan et al, include methyl chloride (paragraph 0241).
Regarding claim 7, Corberan et al teach that molar ratio of donor compounds to alkylaluminum halide (i.e., Lewis acid catalyst) is within the range of 0.4 to 1 to 2.0:1. It is also possible to work with a greater excess of donor compounds, often up to 10-fold excess, the excess amount of donor compounds then additionally acts as a solvent or diluent (paragraph 0206). Therefore, given that donor compounds can function as a diluent and are present in excess amounts of 10 fold, one skilled in art prior to the filing of present application would have a reasonable basis to expect the concentration of Lewis acid catalyst to overlap with the presently claimed concentration of 0.01 to 0.6 wt% based on the total weigh of the initiator solution, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Alternatively, it is the Office’s position that Lewis acid catalyst concentration is a result-effective variable (MPEP 2144.5) since the amount used clearly affects the course of polymerization. Hence, the choice of a particular amount of Lewis acid catalyst (such as the amount in present claims) is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Regarding claim 8, Corberan et al teach that molar ratio of donor compounds to alkylaluminum halide (i.e., Lewis acid catalyst) is within the range of 0.4 to 1 to 2.0:1. It is also possible to work with a greater excess of donor compounds, often up to 10-fold excess, the excess amount of donor compounds then additionally acts as a solvent or diluent (paragraph 0206). The molar ratio of aluminum trihalide-donor complex effective as a polymerization catalyst is generally used such that molar ratio of metal in the Lewis acid donor complex to isobutene is in a range from 1:5 to 1:5000 (paragraph 0250). Therefore, given that donor compounds can function as a diluent and are present in excess amounts of 10 fold, and the molar ratio of metal in Lewis acid catalyst to isobutene is in a wide range of 1:5 to 1:5000, one skilled in art prior to the filing of present application would have a reasonable basis to expect amount of initiator system in the reaction mixture to overlap with the presently claimed range of 0.0007 to 0.02 wt% based on the total weight of the reaction mixture, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Alternatively, it is the Office’s position that amount of initiator system comprising Lewis acid catalyst and proton source is a result-effective variable (MPEP 2144.5) since the amount used clearly affects the course of polymerization. Hence, the choice of a particular amount of initiator system (such as the amount in present claims) is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art
Regarding claim 9, Corberan et al teach that molar ratio of donor compounds to iron trihalide (i.e., Lewis acid catalyst) is within the range of 0.4 to 1 to 2.0:1 (paragraph 0206). Examples of Lewis acid catalyst preferably include iron trichloride (paragraph 0137). Examples of donor compounds include at least one dihydrocarbyl ether (paragraph 0148) preferably diethyl ether (paragraph 0155). It is noted that iron trichloride and diethyl ether have a molecular weight of 162.20 g/mole and 74.12 g/mole. Hence, for a mole ratio of donor compound : Lewis acid catalyst of 0.4 :1, the weight ratio of Lewis acid catalyst to proton source is calculated to be 5.4: 1.
Regarding claim 10, examples of Lewis acid catalyst, in Corberan et al, preferably include aluminum trihalides such as aluminum trichloride (paragraphs 0135 and 0137).
Regarding claim 11, Corberan et al teach that in a preferred embodiment, the polymerization is performed in the presence of additional use of water (paragraph 0212).
Regarding claim 12, Corberan et al teach that in case the polymerization catalyst is not fully soluble in the solvent used it may be advantageous to disperse the polymerization catalyst in an organic solvent by vigorously stirring the dispersion using ultrasonic homogenizers (paragraph 0210). In a preferred embodiment ultrasonication of the Lewis acid-donor complex, preferably in an inert solvent prior to polymerization helps to improve polymerization conversion (paragraph 0211). Hence, it is the Office’s position that the initiator system is soluble in the reaction mixture.
Regarding claims 14 and 15, Corberan et al teach that mixture of donors preferably comprise compounds with at least one ether function (paragraph 0145) and include methyl tert-butyl ether (paragraph 0153) which reads on tertiary ether in present claim 14 and methyl t-butyl ether in present claim 15.
Regarding claims 16-19, examples of olefinically unsaturated monomers copolymerizable with isobutene include 4-methylstyrene (i.e., reads on p-methyl styrene in present claims 17 and 19), isoprene (i.e., reads on isoprene in present clam 16) and suitable comonomers include isoolefins having 5 to 10 carbon atoms such as 2-propyl heptane-1 (paragraph 0236) which reads on the additional copolymerizable monomer in present claim 18.
Regarding claim 20, Corberan et al teach that polymerization can be affected continuously (paragraph 0238).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764