DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 08/15/2023. Following entry of the preliminary amendment filed on 12/15/2023, original claims 1-4, 8-11 and 14-15, and amended claims 5-7 and 12-13 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 08/15/2023, 09/05/2023, 08/21/2025 and 12/18/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Objection – Specification
The disclosure is objected to because of the following informalities: referring to paragraph [0029], typographical errors are noted in the compound names triethylaluminu“ and triisobutylaluminu“. Appropriate correction is required.
Claim Rejections – 35 U.S.C. 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 1-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 provides for a “[u]se of a biphenylphenol polymerization catalyst to make a polymer in a gas-phase or slurry phase polymerization process …,” but, since the claim does not set forth any steps involved in the process, it is unclear what process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claims 2-11 are subsumed under the rejection.
Claims 1-11 also are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See, for example, Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections – 35 U.S.C. 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.
Claims 7-8 are 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.
Claims 7 and 8 respectively recite that “L comprises a C4 alkyl,” and that “the C4 alkyl is selected from … 2-methyl-pentyl.” As such, both claims fail to include all the limitations of their parent claim, including the limitation that L is a saturated C4 alkyl (cf. claim 1, line 9). In fact, by using “comprises” in its definition of L, claim 7 attempts to improperly broaden the definition of L to encompass alkyl-substituted C5 alkyls like the 2-methyl-pentyl of claim 8.
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.
Claim Rejections – 35 U.S.C. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Demirors et al (WO 2014/105413 A1).
Regarding Claim 12, reference to Demirors et al has already disclosed embodiments of metal-ligand complexes which correspond identically to claimed precatalyst structures (i) and (iii) as shown below:
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180
299
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181
291
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(Demirors, pages 21-22). While the above embodiments are included in a broader description of a variety of alternative metal-ligand complexes on pages 21-29, it is firmly established that where a species embraced by a claim is clearly named in a reference, the claim is anticipated no matter how many other species are named therein. See MPEP 2131.02 (I)-(II). Such is the case herein, and therefore claim 12 is deemed fully met by Demirors et al.
Claim 12 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Padilla-Acevedo et al (US 2023/0098987 A1; relying on 119(e) priority date of 12/18/2019).
Regarding Claim 12, reference to Padilla-Acevedo et al has already disclosed a biphenylphenol precatalyst of Structure (vii) which corresponds identically to claimed precatalyst structure (ii) as shown below:
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356
756
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(Padilla-Acevedo et al, ¶ [0087]). As the description in a reference of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes, see In re Luckach, 169 USPQ 795 (CCPA 1971), claim 12 is deemed fully met by Padilla-Acevedo et al.
Claim Rejections – 35 U.S.C. 102/103
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 1-11 and 13-15 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Padilla-Acevedo et al (US 2023/0098987 A1; relying on 119(e) priority date of 12/18/2019).
Regarding Claims 1, 10 and 13; reference to Padilla-Acevedo et al is drawn to the use of a supported, gas-phase biphenylphenol polymerization catalyst to make a polymer in a gas-phase polymerization process conducted in a single gas-phase polymerization reactor (see ¶ [0034]), wherein the biphenylphenol polymerization catalyst is made from a gas-phase biphenylphenol polymerization precatalyst of defined Formula I (see ¶¶ [0004]-[0005]), and wherein the precatalyst may be contacted, under activating conditions, with an activator so as to activate the gas-phase biphenylphenol polymerization precatalyst represented by the Formula I (see ¶ [0008]), thereby making the gas-phase biphenylphenol polymerization catalyst [per claim 13]. In specific embodiments (see ¶¶ [0087], [0100], [0114] (Table 1: EX7)), a gas-phase biphenylphenol polymerization precatalyst of Structure (vii) was synthesized and used to prepare an activated, supported gas-phase biphenylphenol polymerization catalyst, which was then used to conduct gas-phase polymerization of ethylene with 1-hexene in an autoclave polymerization reactor. Disclosed Structure (vii) is seen to correspond identically to claimed Formula I when: R2 and R13 are each a C8 alkyl; R1, R3, R4, R6, R9, R11, R12, and R14 are each hydrogen; each of R5 and R10 is halogen (-F); each of R15 and R16 is a 2,7-disubstituted carbazole-9-yl; L is a saturated C4 alkyl that forms a bridge between the two oxygen atoms to which L is covalently bonded; each X is a (C1-C20)alkyl; R7 is a C1 alkyl and R8 comprises hydrogen; and M is Zr [per claim 10].
As such, Padilla-Acevedo et al specifically disclose the instant “use” as claimed, but are silent as to the biphenylphenol polymerization catalyst having a kinetic induction time of greater than 40 seconds as determined by a least squares fit of a first-order exponential for a rate of increase of an instantaneous polymerization rate for the gas-phase or slurry-phase polymerization process (Claim 1, final four lines). Nevertheless, the reference teaches the same “use” as claimed, using a biphenylphenol polymerization catalyst made from a specific species of the same precatalyst as defined in present claim 1. Therefore, it is plausible to infer that the claimed kinetic parameter would be implicitly achieved by the disclosed embodiment of Padilla-Acevedo et al utilizing the same gas-phase biphenylphenol polymerization catalyst as claimed. Where a reference discloses all the limitations of a claim except for a property or function, and examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to applicant. See MPEP 2112-2112.02. Thus, if it is 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 there is no adequate teaching as to how to obtain the claimed kinetic parameter with only the claimed biphenylphenol polymerization catalyst made from a precatalyst of Formula I.
Regarding Claims 2-3, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein each of R5 and R10 is halogen, namely fluorine, as claimed.
Regarding Claim 4, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein R7 or R8 comprises a C1 alkyl and the other of R7 or R8 comprises a hydrogen, as claimed (see ¶ [0087], Structure vii).
Regarding Claim 5, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein each of R2 and R13 comprises 1,1-dimethylethyl, as claimed (see ¶ [0087], Structure vii).
Regarding Claim 6, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein each of R15 and R16 comprises a 2,7-di-t-butylcarbazol-9-yl, as claimed (see ¶ [0087], Structure vii).
Regarding Claims 7-8, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein L comprises a C4 alkyl, specifically n-butyl, as claimed (see ¶ [0087], Structure vii).
Regarding Claim 9, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, wherein each X comprises a C1 alkyl, specifically Me, as claimed (see ¶ [0087], Structure vii).
Regarding Claim 11, Padilla-Acevedo et al disclose the use of claim 1 as discussed above, but do not specifically disclose a biphenylphenol polymerization precatalyst of Formula I, wherein M is Hf. Nevertheless, Padilla-Acevedo et al explicitly teach the alternativeness between Zr and Hf as the only two choices for M in Formula I (see ¶¶ [0006]-[0007]) which generically encompasses the aforementioned gas-phase biphenylphenol polymerization precatalyst of Structure (vii) (wherein M is Zr), used to make the gas-phase biphenylphenol polymerization catalyst employed in the gas-phase polymerization of Example 7 (EX7). Because Padilla-Acevedo et al teach Hf as a viable alternative to Zr as M of generic Formula I, it would have been obvious to one of ordinary skill in the art at the time of effective filing to modify the exemplified use of EX7 by utilizing a gas-phase biphenylphenol polymerization catalyst made from the corresponding Hf analogue of the Structure (vii) precatalyst, with a reasonable expectation of success.
Regarding Claims 14-15, Padilla-Acevedo et al disclose the biphenylphenol polymerization catalyst of claim 13 as discussed above. Padilla-Acevedo et al further disclose a method of making polyethylene, comprising: polymerizing an olefin monomer in a polymerization reactor in the presence of the biphenylphenol polymerization catalyst of claim 13 to make a polyethylene composition (see ¶¶ [0100], [0107] and [0114] (Table 1: EX7)); and wherein the biphenylphenol polymerization catalyst of claim 13 is introduced into the polymerization reactor in the form of a spray dried catalyst composition including the biphenylphenol polymerization catalyst (see ¶ [0094] (Example 1 – gas-phase biphenyphenol polymerization precatalyst of structure I was added and the mixture … was spray-dried using a Buchi Mini Spray Dryer B-290 …); and ¶ [0100] (Example 7 - prepared the same as Example 1 with the change that the activated and supported gas-phase biphenylphenol polymerization catalyst of Example 7 (Precatalyst structure vii) was utilized at the conditions as indicated in Table 1)).
Conclusion
Claims 1-15 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/02-24-26