DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/KR2022/004249 filed 3/25/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. KR 10-2021-0039664 and KR 10-2022-0037392 filed 3/26/2021 and 3/25/2022 respectively, which papers have been placed of record in the file.
Claims 1-19 are pending.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 recites “alk” and it appears Applicant intended to recite “alkyl.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 17 requires R2 to R7 are hydrogen. However, base claim 6 recites R5 is C6-C20 aryl substituted with C1-20 alkyl. Therefore, claim 17 does not further limit the subject matter of claim 6 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/267,926 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1: While a xylene soluble ranges from 4.5-7.5% by weight, claim 1 of copending 926 arrives at claim 1 of the present invention in an anticipatory type manner.
Regarding claims 2-5: See claims 2-9 of copending 926. With regards to claim 2, an elongation of 500% of more would be inherent from the claims of copending 926.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-11, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Burkhardt et al. (US 6,492,465).
Regarding claim 1: Burkhardt is directed to a propylene resin composition having:
A molecular weight (Mw/Mn) of less than 4.0 (col. 3 ll. 42-49)
A xylene (X.S.) of 4.5% by weight to 8.0% by weight (Table 3)
A content of ethylene of 10% by weight or less (col. 2 ll. 45-54)
A melt index measured by ASTM 1238 is preferably higher than 50 dg/min (50 dg/10 min) (equivalent to a melt index MI2.16 measured according to the ASTM D 1238 at 230 ˚C under a load of 2.16).
A crystallization temperature are not mentioned.
However, the melting point of the polypropylene homopolymer is at least 155 ˚C, and therefore it can be determined the crystallization temperature must be less than at least 155 ˚C. Further, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, i.e. a metallocene polymerized polypropylene homopolymer with the same molecular weight distribution.
Case law holds that 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).
Hence, Burkhardt suggests a composition having a crystallization temperature within the scope of the claims. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 2: Burkhardt doesn't specifically recite an elongation. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having an elongation measured according to ASTM D 638 of 500% or more. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 3: Burkhardt doesn't specifically recite a haze value. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having haze value measured according to ASTM D 1003 of 60% or less. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 4: The melting point is melting point of at least 155 ˚C.
Regarding claim 5: The composition comprises a propylene homopolymer and a propylene copolymer, wherein the propylene copolymer B is produced in the presence of the propylene homopolymer (A) (equivalent to the ethylene propylene copolymer dispersed in the propylene homopolymer).
Regarding claim 6: A method of producing the polypropylene resin composition, the method comprising the steps of:
Preparing a propylene homopolymer in the presence of a catalyst composition including one or more metallocene compound and
Preparing an ethylene-propylene copolymer in one or more of a second reactor in the presence of the catalyst composition.
The catalyst used incudes formula I although wherein R1 and R5 are aryl groups although are not substituted with C1-20 alkyl, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride (col. 6 ll. 19-29), and therefore R1 and R5 are independently C12 aryl groups and not substituted with a C1-20 alkyl group. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the instant case, the claimed catalyst is very similar in structure to the claimed catalyst, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride wherein R1 and R5 are independently C12 aryl and substituted with C1-20 alkyl (present invention) vs H (Burkhardt). Further, no evidence is provided that demonstrates the compounds would have different properties. Therefore, a prima facia case of obviousness is provided.
Regarding claim 7: Burkardt’s metallocene catalyst is a metallocene catalyst wherein A is silicon.
The formula in rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride is show below:
PNG
media_image1.png
434
407
media_image1.png
Greyscale
Regarding claim 8: The catalyst used incudes formula I although wherein R1 and R5 are aryl groups although are not substituted with C1-20 alkyl, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride (col. 6 ll. 19-29), and therefore R1 and R5 are independently C12 aryl groups and not substituted with a C1-20 alkyl group. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the instant case, the claimed catalyst is very similar in structure to the claimed catalyst, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride wherein R1 and R5 are independently C12 aryl and substituted with C3-6 branched alkyl (present invention) vs H (Burkhardt). Further, no evidence is provided that demonstrates the compounds would have different properties. Therefore, a prima facia case of obviousness is provided.
Regarding claims 9-10: The catalyst used incudes formula I although wherein R9 and R10 are methyl and therefore not C2-6 alkyl, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride (col. 6 ll. 19-29), However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the instant case, the claimed catalyst is very similar in structure to the claimed catalyst, i.e. rac-diphenylsiladiyl (2-methyl-4-[1-naphthyl]indenyl)2 zirconium dichloride wherein R9 and R10 are C1 alkyl and therefore not C3-6 branched alkyl (claim 9) or ethyl (claim 10). Further, no evidence is provided that demonstrates the compounds would have different properties. Therefore, a prima facia case of obviousness is provided.
Regarding claim 11: The metallocene catalyst of Burkhardt is represented by the formula
PNG
media_image1.png
434
407
media_image1.png
Greyscale
which is slightly different than the claimed catalyst. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the instant case, the claimed catalyst is very similar in structure to the claimed catalyst, and therefore a prima facia case of obviousness is provided.
Regarding claim 13: The propylene and ethylene are fed at a weight ratio 3.6/1.4 in Run #37, which is a weight ratio of about 7:3, and therefore slightly outside the claimed ratio of 7/3. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In the present case, there is reason to conclude the copolymer produced from a weight ratio of about 7/3 would be different from a copolymer produced from a weight ratio of 7/3.
Regarding claim 14: The composition comprises a propylene homopolymer and a propylene copolymer, wherein the propylene copolymer B is produced in the presence of the propylene homopolymer (A) (equivalent to the ethylene propylene copolymer dispersed in the propylene homopolymer).
Regarding claim 15: Burkhardt doesn't specifically recite a tensile strength. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having tensile strength of 250 kg/cm2 and 500 kg/cm2 or less as measured according to ASTM D 638 method. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 16: The compositions have improved notched Izod values, although a Izod impact values are not mentioned.
Regarding claims 17-18: The metallocene catalyst of Burkhardt is represented by the formula
PNG
media_image1.png
434
407
media_image1.png
Greyscale
wherein R2 to R7 are hydrogen and X1 and X2 are chlorine, and M is zirconium.
Regarding claim 19: The composition comprises a propylene homopolymer and a propylene copolymer, wherein the propylene copolymer B is produced in the presence of the propylene homopolymer (A) by introducing propylene and ethylene.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Burkhardt as applied to claim 6 above, and further in view of Gahleitner et al. (US 2021/0171750).
Regarding claim 12: Burkardt mentions the first reactor is a slurry reactor and the second reactor is a gas phase reactor, although doesn’t mention the first reactor is a loop reactor in particular.
Gahleitner is directed to polymerization of polypropylene utilizing metallocene catalysts. Gahleitner teaches the first polymerization reactor can be a slurry loop reactor in particular. One skilled in the art would have been motivated to have selected a loop reactor in Burkardt since Gahleitner teaches that loop reactors are utilized in the process of making polypropylene. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a loop rector in Burkhardt.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT T BUTCHER/ Primary Examiner, Art Unit 1764