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 .
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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jun et al, KR20210128319.
The examiner notes that Jun, EP4047026, is part of the same patent family as KR20210128319 and has been used as an equivalent English translation thereof for the preparation of this Action.
Example 1 of Jun (¶0120, 0122, Tables 1 and 2) discloses an ethylene/1-butene copolymer, corresponding to the claimed ethylene/α-olefin copolymer (for claims 1, 8), which is characterized by a melting temperature (Tm) 64.1 °C (for claims 1, 4), a density of 0.878 g/cm3 (for claim 5), a melt index (190 °C. 2.16 kg) of 5.8 dg/min (for claim 6), melt flow ratio (MFRR; MI10/MI2.16) of 6.2 (for claim 7). The prior art composition may be used as an encapsulant (for claim 10) (¶0003-0006).
The prior art Example is made using a combination of catalysts having the structures shown below (Table 1; ¶0096, 0102).
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Note that these structures correspond to claimed catalysts of Formula 1-1 (for claims 12, 14) and Formula 2-5 (for claims 12, 15). The two catalysts were used in a molar ratio of 3:7 (i.e., 1: 2.33) (for claim 13) (¶0120).
Jun is silent regarding the d-spacing (for claim 1), crystallinity (for claims 1, 2), hardness (for claims 1, 3) and 1-butene content (for claim 9); however, it is reasonably expected that these properties are met by the prior art.
Regarding the claimed 1-butene content: note that Jun teaches that the α-olefin content of the prior art copolymer is in the range of greater than 0 to 99 mol% (¶0043); note that this range is identical to the claimed range. As the prior art range for the amount of α-olefin is the same as the claimed range, it is reasonably expected that the copolymer of Jun’s Example 1 will inherently have a 1-butene content within the claimed range.
Regarding the d-spacing, crystallinity, and hardness: As discussed above, the prior art Example 1 discloses a copolymer which comprises the same monomers combined in the same ratio as the claimed invention and is characterized by the same properties of melting temperature, melt index, MFRR, and density as copolymer of the instant claims. Said copolymer was made using a combination of catalysts which are identical to the catalysts disclosed by applicant for the production of the claimed copolymer; furthermore, note that the polymerization process of the prior art Example 1 was performed under similar conditions of temperature and pressure in the presence of the same cocatalyst components-triisobutylaluminum and dimethylanilinium tetrakis(pentafluorophenyl)borate- as used in the production of the copolymer of the instant claims (see for instance specification: ¶0230). The prior art therefore appears to teach a copolymer that is identical to the claimed invention.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). Given that the prior art polymer appears to be the same as the claimed invention and is made via a substantially similar process as that disclosed by applicant to make the claimed invention, it is reasonably expected that the properties of the prior art copolymer would inherently be the same as claimed. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed ethylene/α-olefin copolymer would not be present in the copolymer disclosed by Jun (for claims 1-3, 9).
Claim(s) 1-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jun et al, KR20210128320.
The examiner notes that Jun, EP4047051, is part of the same patent family as KR20210128319 and has been used as an equivalent English translation thereof for the preparation of this Action.
Example 1 of Jun (¶0154, Tables 1 and 2) discloses an ethylene/1-butene copolymer, corresponding to the claimed ethylene/α-olefin copolymer (for claims 1, 8), which is characterized by a melting temperature (Tm) 64.1 °C (for claims 1, 4), a density of 0.878 g/cm3 (for claim 5), a melt index (190 °C. 2.16 kg) of 5.8 dg/min (for claim 6), melt flow ratio (MFRR; MI10/MI2.16) of 6.2 (for claim 7). The prior art composition may be used as an encapsulant (for claim 10) (¶0003-0006).
The prior art Example is made using a combination of catalysts having the structures shown below (Table 1; ¶0096, 0102).
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Note that these structures correspond to claimed catalysts of Formula 1-1 (for claims 12, 14) and Formula 2-5 (for claims 12, 15). The two catalysts were used in a molar ratio of 3:7 (i.e., 1: 2.33) (for claim 13) (¶0154).
Jun is silent regarding the d-spacing (for claim 1), crystallinity (for claims 1, 2), hardness (for claims 1, 3) and 1-butene content (for claim 9); however, it is reasonably expected that these properties are met by the prior art.
Regarding the claimed 1-butene content: note that Jun teaches that the α-olefin content of the prior art copolymer is in the range of greater than 0 to 99 mol% (¶0045); note that this range is identical to the claimed range. As the prior art range for the amount of α-olefin is the same as the claimed range, it is reasonably expected that the copolymer of Jun’s Example 1 will inherently have a 1-butene content within the claimed range.
Regarding the d-spacing, crystallinity, and hardness: As discussed above, the prior art Example 1 discloses a copolymer which comprises the same monomers combined in the same ratio as the claimed invention and is characterized by the same properties of melting temperature, melt index, MFRR, and density as copolymer of the instant claims. Said copolymer was made using a combination of catalysts which are identical to the catalysts disclosed by applicant for the production of the claimed copolymer; furthermore, note that the polymerization process of the prior art Example 1 was performed under similar conditions of temperature and pressure in the presence of the same cocatalyst components-triisobutylaluminum and dimethylanilinium tetrakis(pentafluorophenyl)borate- as used in the production of the copolymer of the instant claims (see for instance specification: ¶0230). The prior art therefore appears to teach a copolymer that is identical to the claimed invention.
Given that the prior art polymer appears to be the same as the claimed invention and is made via a substantially similar process as that disclosed by applicant to make the claimed invention, it is reasonably expected that the properties of the prior art copolymer would inherently be the same as claimed. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed ethylene/α-olefin copolymer would not be present in the copolymer disclosed by Jun (for claims 1-3, 9); see In re Fitzgerald cited earlier in this Action.
Claim(s) 1-10 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gong et al, KR20210128325.
The examiner notes that Gong et al, US2022/0251355, is part of the same patent family as KR20210128319 and has been used as an equivalent English translation thereof for the preparation of this Action.
Example 1 of Gong (¶0185, Tables 1 and 2) discloses an ethylene/1-butene copolymer, corresponding to the claimed ethylene/α-olefin copolymer (for claims 1, 8), which is characterized by a melting temperature (Tm) 64.1 °C (for claims 1, 4), a density of 0.878 g/cm3 (for claim 5), a melt index (190 °C. 2.16 kg) of 5.8 dg/min (for claim 6), melt flow ratio (MFRR; MI10/MI2.16) of 6.2 (for claim 7). The prior art composition may be used as an encapsulant (for claim 10) (¶0003-0006).
The prior art Example is made using a combination of catalysts having the structures shown below (Table 1; ¶0096, 0102).
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Note that these structures correspond to claimed catalysts of Formula 1-1 (for claims 12, 14) and Formula 2-5 (for claims 12, 15). The two catalysts were used in a molar ratio of 3:7 (i.e., 1: 2.33) (for claim 13) (¶0185).
Gong is silent regarding the d-spacing (for claim 1), crystallinity (for claims 1, 2), hardness (for claims 1, 3) and 1-butene content (for claim 9); however, it is reasonably expected that these properties are met by the prior art.
Regarding the claimed 1-butene content: Note that Gong teaches that the α-olefin content of the prior art copolymer is in the range of greater than 0 to 99 mol% (¶0076); note that this range is identical to the claimed range. As the prior art range for the amount of α-olefin is the same as the claimed range, it is reasonably expected that the copolymer of Gong’s Example 1 will inherently have a 1-butene content within the claimed range.
Regarding the d-spacing, crystallinity, and hardness: As discussed above, the prior art Example 1 discloses a copolymer which comprises the same monomers combined in the same ratio as the claimed invention and is characterized by the same properties of melting temperature, melt index, MFRR, and density as copolymer of the instant claims. Said copolymer was made using a combination of catalysts which are identical to the catalysts disclosed by applicant for the production of the claimed copolymer; furthermore, note that the polymerization process of the prior art Example 1 was performed under similar conditions of temperature and pressure in the presence of the same cocatalyst components-triisobutylaluminum and dimethylanilinium tetrakis(pentafluorophenyl)borate- as used in the production of the copolymer of the instant claims (see for instance specification: ¶0230). The prior art therefore appears to teach a copolymer that is identical to the claimed invention.
Given that the prior art polymer appears to be the same as the claimed invention and is made via a substantially similar process as that disclosed by applicant to make the claimed invention, it is reasonably expected that the properties of the prior art copolymer would inherently be the same as claimed. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed ethylene/α-olefin copolymer would not be present in the copolymer disclosed by Gong (for claims 1-3, 9); see In re Fitzgerald cited earlier in this Action.
Claim Rejections - 35 USC § 103
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jun et al, KR20210128319.
As discussed earlier in this action, Jun teaches the production of an ethylene/olefin copolymer which is reasonably expected to have the required properties of d-spacing, crystallinity, and hardness.
Jun does not specifically disclose the production of a copolymer wherein the mole ratio of ethylene to olefin is in the range of 1: 1.14 to 1: 3.00.
As noted earlier in this Action, Jun teaches that the prior art copolymer contains olefin comonomer in an amount in the range of greater than 0 to 99 mol% (¶0043); it is therefore deduced that the prior art copolymer comprises ethylene in an amount of 1 to less than 100 mol%. The ratio of ethylene to olefin therefore ranges from less than 100:1 to 1: 99 or less, overlapping the claimed range.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a copolymer having the claimed ratio of ethylene to olefin in view of the teachings of Jun.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jun et al, KR20210128320.
As discussed earlier in this action, Jun teaches the production of an ethylene/olefin copolymer which is reasonably expected to have the required properties of d-spacing, crystallinity, and hardness.
Jun does not specifically disclose the production of a copolymer wherein the mole ratio of ethylene to olefin is in the range of 1: 1.14 to 1: 3.00.
As noted earlier in this Action, Jun teaches that the prior art copolymer contains olefin comonomer in an amount in the range of greater than 0 to 99 mol% (¶0045); it is therefore deduced that the prior art copolymer comprises ethylene in an amount of 1 to less than 100 mol%. The ratio of ethylene to olefin therefore ranges from less than 100:1 to 1: 99 or less, overlapping the claimed range.
The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a copolymer having the claimed ratio of ethylene to olefin in view of the teachings of Jun; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gong et al, KR20210128325.
As discussed earlier in this action, Gong teaches the production of an ethylene/olefin copolymer which is reasonably expected to have the required properties of d-spacing, crystallinity, and hardness.
Gong does not specifically disclose the production of a copolymer wherein the mole ratio of ethylene to olefin is in the range of 1: 1.14 to 1: 3.00.
As noted earlier in this Action, Gong teaches that the prior art copolymer contains olefin comonomer in an amount in the range of greater than 0 to 99 mol% (¶0045); it is therefore deduced that the prior art copolymer comprises ethylene in an amount of 1 to less than 100 mol%. The ratio of ethylene to olefin therefore ranges from less than 100:1 to 1: 99 or less, overlapping the claimed range.
The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a copolymer having the claimed ratio of ethylene to olefin in view of the teachings of Gong; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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