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 . Per response dated 4/15/26, claims 1-9 are currently pending in the application.
Applicant’s election of Group I election in the reply filed on 4/15/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
It is noted that although claim 9 depends on claim 1, given that the preamble is drawn to a method and the body of the claim recites an active method step, claim 9 is interpreted as being dependent on claim 7 and combined with Group II invention. Thus, claims 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102 and 103
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.
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 1-3 are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Pannel et al. (US 2018/0051111 A1, of record).
The prior art to Pannel et al. (US 2018/0051111 A1) teaches a spray dried catalyst composition comprising one or more catalyst, one or more of a support, and an activator, wherein the catalyst may be for e.g., (pentamethylcyclopentadieryl)(propylcyclopentadienyl)MX₂, (tetramethylcyclopentadienyl)(propylcyclopentadienyl)MX2, wherein M may be hafnium, and X is a leaving group (read on formula (I)) (Title, [0006]-[0015], ref. claims 1, 18). Additionally, applicant's attention is drawn to MPEP 2131.02 (A) which states that "when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named". Ex Parte A, 17 USPQ2d 1716 (BPAI, 1990).
In light of above, the presently cited claims are anticipated by the reference.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Savatsky et al. (US 2017/0362353 A1).
Regarding claims 1 and 2, Savatsky teaches metallocene catalysts for producing polyolefins (Ab., ref. claims). Disclosed catalysts include metallocene catalysts, which may be supported and/or spray dried [0048]. Disclosed genus of metallocene catalysts include (n-propyl cyclopentadienyl)(n-butylcyclopentadienyl)hafnium Xn (i.e., an asymmetrical metallocene of formula (a)), wherein X is a leaving group, such as hydride, chloride, fluoride, phenyl, C1 to C12 alkyl etc. [0052]-[0071], [0077]. Disclosed metallocene catalysts may be used with an activator, such as methyl aluminoxane [0074], and may be supported on a porous support [0076].
Savatsky is silent on a spray dried catalyst hafnium metallocene catalyst composition as claimed in one single embodiment.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching on suitable catalysts including that of the claimed invention, form of providing the catalyst for polymerization and suitable components for use with the catalyst, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a spray dried catalyst compositions comprising an asymmetrical hafnium metallocene catalyst, an activator and a support within the scope of the claimed invention.
Regarding claim 3, in the disclosed (n-propyl cyclopentadienyl)(n-butylcyclopentadienyl)hafnium Xn compound, n-propyl cyclopentadienyl fragment may read on A substituted with one alkyl having 3 carbon atoms.
Regarding claims 4 and 5, the n-propyl group in the disclosed n-propyl cyclopentadienyl)(n-butylcyclopentadienyl)hafnium Xn compound may be interpreted as including a homolog of the alkyl of claim 4. Alternatively, in the disclosed compound, n-propyl may be considered as a homolog of CH3 and n-butyl as a homolog of and n-Pr of n the claimed structure (b). Additionally, disclosed leaving group X may be C1 alkyl [0055]-[0056].
Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). 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). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify metallocene compound to include homolog(s), as such compounds are expected to possess similar properties and have similar utility relative to the claimed compounds. Modification in this way would provide for the metallocene of claims 4 and 5.
Regarding claim 6, Savatsky teaches that the metallocene catalysts may be used with an activator [0074], [0077]. Although the claimed ratio is not explicitly disclosed, nevertheless, it is the examiner’s position that the amount of activator in the composition is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to a skilled artisan to utilize appropriately effective amount of a catalyst activator to provide for the desired level of catalyst activity, including in the amounts within the scope of the claimed invention, absent evidence to the contrary.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Pannel et al. (US 2018/0051111 A1, of record).
The discussion on Pannel from paragraph 6 above is incorporated herein by reference. In the disclosed compounds, the propylcyclopentadienyl fragment may read on either claimed A or B with a propyl substituent, i.e., the latter including a homolog of the alkyl of claim 4.
Additionally, the mole ratio of aluminum atoms (from the activator) to transition metal (from the catalyst compound) may be between about 10 and about 5000 [0175], i.e., may range from 10:1 to 5000:1 [0175].
Pannel is silent on a composition comprising a metallocene with claimed substituent (claim 4), and the claimed ratio (claim 6) in a single embodiment as claimed.
Incorporating the discussions on homologs and overlapping ranges from paragraph 13 and 10 above, respectively, given the teaching on suitable metallocene compounds and the prescribed mole ratio of the metals in the activator and the metallocene, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a composition comprising a metallocene compound within the scope of claim 4, or a composition satisfying the claimed molar ratio, absent evidence to the contrary.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-6, 8-11 of copending Application No. 19/099112 (reference application, preliminary amdt. dated 1/28/25). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites an assymetrical metallocene structure that encompasses those scope of instant claims 1-4, and encompasses homologs of the metallocene of presently claimed structure (b) of claim 5.
Copending claim 11 recites a composition comprising the metallocene catalyst of claim 1, that is spray dried and further comprising an activator and a support. Thus, copending claim 11 encompasses the composition of claims 1-4.
Regarding claim 5, incorporating the discussion on homologs from paragraph 13 above, although the copending claims are silent on the claimed compound, it would have been obvious to one of ordinary skill in the art to prepare a composition comprising a homolog of the recited metallocene, including that of instant claim 5.
Regarding claim 6, although copending claims are silent on the claimed ratio, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). To that end, the copending disclosure [0045] prescribes that the molar ratio of metal, e.g., aluminum, in the activator to Hf in the asymmetrical metallocene may be 1500:1.
Thus, it would have been obvious to one of ordinary skill in the art to prepare the composition of copending claim 11 satisfying the claimed molar ratio.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Harlan et al. (US 2020/0190128 A1) teach a dried slurry of the following supported metal complex and an activator:
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McCullough (US 2018/0237558A1) teaches hafnium metallocene catalyst compounds, such as (MeCp)(Me3SiCH2Cp)HfCl2, and an activator and a support therefor.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights