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 .
Applicant’s preliminary amendment dated 16 June 2023 is acknowledged. Claims 1-13 as amended are pending.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8, drawn to catalyst component, catalyst, and method for catalyzing an olefin.
Group II, claim(s) 9-13, drawn to a propylene polymer.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. Group I is directed to a titanium based catalyst composition and general method for polymerizing olefins, and Group II recites a propylene polymer having specific characteristics; the two groups do not share technical features.
During a telephone conversation with Benjamin Berkowitz on 7 January 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claims 1-8 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.
Claim 1 (from which claims 2-8 depend) recites Formula (1) and the clause that m + x ≥ 4. However, there is nothing in formula (1) indexed by x. As such, this limitation is unclear.
For the purposes of applying prior art, it will be presumed that the phrase requires m + n ≥ 4, which appears to be consistent with claim 2.
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.
Claim(s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0203855 (“Matsunaga”).
As to claims 1 and 2, Matsunaga teaches a solid titanium catalyst comprising titanium, magnesium, halogen and an ester compound (abstract).
The ester compound has the structure
PNG
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151
230
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Greyscale
(para. 0036). This ester compound teaches R1 having the same definition of groups R1 and R2 in formula 1 as recited. The groups R may all be hydrocarbon groups and other substituents as recited for groups R4-R8 as recited. The index n in this formula range from 5 to 10, such that n-4 ranges from 1 to 6, which substantially overlaps the range for n in claims 1 and 2.
Matsunaga does not exemplify the griding group with a number of carbon atoms m. However, Matsunaga teaches that any of the R groups, including hydrocarbon groups may be mutually bonded rings (para. 0042). Matsunaga further teaches that the ring containing carbons to which OCOR1 is attached ranges from 5 to 10. Matsunaga, therefore, contemplates a bridging unit between carbons of 1 to 6 carbon atoms, which being hydrocarbons, may be substituted with hydrogen or other groups, the same as groups R as recited. This value substantially overlaps the range of 1 to 5 form in claim 1, and in claim 2. Given the ranges, the selection of a bridging group having 1 to 6 carbon atoms and 1 to 6 carbon atoms at the vertex, m plus n in excess of 4 is an obvious modification within the ranges suggested by Matsunaga.
As to claim 3, the groups R (corresponding to groups R4 to R8) are all independent (para. 0040). Since the groups R3 as recited can be viewed to be the unity of two groups R to form a bridging group, it is obvious that these groups should also be independent.
As to claim 4, R1 (corresponding to recited groups R1 and R2) is shown to preferred to be various unsubstituted alkyl groups (para. 0039).
As to claim 5, the groups R are defined with the same substituents as groups R4 to R8. Since Matsunaga teaches the groups R can be linked to form rings, the groups R3 would have a similar definition.
As to claim 6, Matsunaga teaches a catalyst for olefin polymerization including the solid titanium catalyst component and an organometallic compound catalyst (abstract) having the recited metal elements (para. 0096).
As to claim 7, Matsunaga further teaches the catalyst includes an electron donor (abstract, para. 0029).
As to claim 8, Matsunaga teaches polymerizing olefin in the presence of the catalyst (claim 8).
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 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/022,478 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 4 recites a solid titanium catalyst component comprising titanium , magnesium halogen and a cyclic multiple ester compound of formula (1). Groups R1 and R2 are defined similarly to groups R1 and R2. Claim 4 recites bridging groups A having one or more carbon atoms, or two or more carbon atoms with substituents. Groups R3, R4, R11, and R12 are defined the same as claimed groups R5 to R8. Groups Ca, Cb, R13-R16, Cc, and R are defined within the definition of the carbon atoms indexed by n in claimed Formula (1). Claim 4 recites that A may be a bridging group having 1-3 carbon atoms, including substituents meeting the definition of R3. Given the choices where m in the copending claim may only be 0 or 1, and A is of a limited set of bridging groups, it would be an obvious modification within the claim to choose m as 0 and one of the bridging groups having 1 to 3 carbon atoms. This necessarily results in the structure of the pending claimed formula having m being 1 or greater or 2 or greater as required by claim 2, and n is at least 2 such that m plus n is 4 or greater as required by claims 1 and 2.
Copending claim 4 also requires that the substituents are each independent as required by claim 3, and recites substituents for corresponding variables required by claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/022,478 in view of US 2009/0203855 (“Matsunaga”).
The discussion of copending claim 4 with respect to claim 1 is incorporated by reference.
Copending claim 4 does not recite the same specific substituents for groups R1 and R2. However, Matsunaga teaches similar solid titanium catalyst including magnesium, halogen, titanium and a similar cyclic diester compound. The structure of copending claim 4 falls within the general definition of the cyclic diester of Matusnaga, which teaches substituents for R1 (corresponding to recited groups R1 and R2) is shown to preferred to be various unsubstituted alkyl groups (para. 0039); as such, the recited substituents are an obvious modification suggested by the similar catalyst component of Matsunaga.
As to claims 6-8, copending claim 4 does not state the catalyst and method. However, Matsunaga teaches a similar solid titanium catalyst including magnesium, halogen, titanium and a similar cyclic diester compound. The structure of copending claim 4 falls within the general definition of the cyclic diester of Matusnaga. Matsunaga teaches using this component in a catalyst for olefin polymerization including the solid titanium catalyst component and an organometallic compound catalyst (abstract) having the recited metal elements (para. 0096) as required by claim 6. Matsunaga further teaches the catalyst includes an electron donor (abstract, para. 0029) as required by claim 7. Matsunaga teaches polymerizing olefin in the presence of the catalyst (claim 8) as required by claim 8. As such, the use of the catalyst component of copending claim 4 as modified in the olefin polymerization catalyst is an obvious end use suggested by Matsunaga.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie 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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/KREGG T BROOKS/Primary Examiner, Art Unit 1764