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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, in the reply filed on Mar. 31, 2026 is acknowledged.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Mar. 31, 2026.
Claim Rejections – 35 U.S.C. §§ 101, 112
The following is a quotation of 35 U.S.C. § 101:
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.
Claims 1-4 are rejected under 35 U.S.C. § 101 as being drawn to a nonstatutory subject matter and 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.
The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to a “use”, and a “use” is not one of the four categories of patent eligible subject matter. The claims thereby fail to comply with 35 U.S.C. § 101. The claims also do not set forth any particular steps of a method of performing the recited “use”, and therefore the claims do not inform one skilled in the art about the scope of the recited “use” with reasonable clarity.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,428,504 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
US ‘504 claims a method of making a polymer comprising polymerizing ethylene with a supported catalyst according to the presently recited chemical formula to make a polymer via slurry-phase polymerization (see claim 3 of US ‘504). Claim 3 of US ‘504 thus reads on present claim 1 in an anticipatory manner.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending application serial no. 17/907,480. Although the claims at issue are not identical, they are not patentably distinct from each other.
US ‘480 claims a method of making a polyolefin polymer comprising contacting a monomer with a catalyst under slurry-phase polymerization conditions (see claim 15 of US ‘480). US ‘480 further claims methods of making catalysts that are supported (see claim 11 of US ‘480) and of making catalysts that have a structure according to the presently recited chemical formula (see claim 3 of US ‘480).
US ‘480 does not specifically claim a method of using a supporting catalyst having a structure according to the presently recited chemical formula in a slurry-phase polymerization.
In light of the recitation in the claims of US ‘480 of each of these features (slurry-phase polymerization; a catalyst; and a support), one of ordinary skill in the art would have merely exercised ordinary creativity by using any of the recited catalysts with the recited support to perform the recited slurry-phase polymerization. It would have been obvious to one of ordinary skill in the art to have performed the slurry-phase polymerization claimed in claim 15 of US ‘480 using a catalyst according to claim 3 of US ‘480 and having a support as recited in claim 11 of US ‘480.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections – 35 U.S.C. § 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 of this title, 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 1-2 are rejected under 35 U.S.C. § 103 as being unpatentable over WO 2021/242792 A1 (herein “Baillie”).
As to claims 1-2: Baillie describes a method of using a supported catalyst according to the presently recited chemical formula (see Ex. No. IE1a in Table 1 in ¶ [00145] and the methods in ¶¶ [00135] and [00138]). Baillie further discloses that the catalysts described therein are useful for slurry-phase or gas-phase polymerization (see ¶ [0032]).
Baillie does not specifically disclose a slurry-phase polymerization of the cited catalyst. In light of the disclosure that the catalysts described therein are useful for slurry-phase or gas-phase polymerization, one of ordinary skill in the art would have been motivated to use the cited catalysts in either a slurry-phase or gas-phase polymerization. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the cited catalyst to perform a slurry-phase polymerization.
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over WO 2018/170208 A1 (herein “Devore”).
Devore describes a method of using a supported catalyst in slurry-phase polymerizations (see ¶¶ [00180], [00182], and [00187]-[00188]). Devore further discloses several catalysts, including catalysts that are according to the presently recited chemical formula (e.g. see the third structure down on the right of p. 92).
Devore does not specifically disclose an embodiment of a slurry-phase polymerization using one of the catalysts according to the presently recited chemical formula.
In light of Devore’s disclosure of slurry-phase polymerizations with supported catalysts and of Devore’s disclosure various catalysts, one of ordinary skill in the art would have been motivated to use any of the catalysts described in Devore to perform the disclosed slurry-phase polymerizations, including those catalysts that are according to the presently recited chemical formula. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed a slurry-phase polymerizations with a supported catalyst according to the presently recited chemical formula.
Claim Objections
Claim 3 is objected to because of the following informalities.
Claim 3 lacks a period at the end of the claim.
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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, Arrie (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.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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