CTNF 18/280,163 CTNF 98021 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This communication responds to the application filed September 28/2022 and amended claim set filed September 01, 2023. Claims 1-9 are currently pending. Priority This application is the national stage entry of PCT/JP2022/007625, filed February 24,2022, which claims priority to JP2021-032478 filed March 02, 2021 and JP2021-032479 filed March 02,2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 5, the second recited mol % range is indefinite because the lower limit of the linear α-olefins is 0, i.e. no present. However, claim 1 requires the presence of the of the linear α-olefins. Claim Analysis Summary of Claim 1: A 4-methyl-1-pentene polymer (A) being a copolymer of 4-methyl-1-pentene and at least one selected from linear a- olefins having 6 to 20 carbon atoms, the 4-methyl-l-pentene polymer (A) satisfying the following requirements (I) and (II): I) an endotherm end temperature (TmE) in a melting (endothermic) curve measured by DSC is 230 0 C or lower; and (II) an exotherm start temperature (TcS) in a crystallization (exothermic) curve measured by DSC is 210 0 C or lower. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-4, 6 and 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Funaya et al. (US 2015/0239996 (A1) as listed on the IDS dated 11/14/2025) . Regarding claim 1 , Funaya et al. teach a 4-methyl-1-pentene polymer (claims 1, 10 and 12) obtained by polymerizing at least one olefin selected from ethylene and α-olefins having 4 to 30 carbon atoms, in the presence of an olefin polymerization catalyst comprising at least one transition metal compound (A) selected from transition metal compounds and enantiomers thereof, wherein the 4-methyl-1-pentene polymer comprises 80-100 mol of constituent units derived from 4-methyl-1-pentene and the amount of constituent units derived from at least one selected from olefins having 2 to 30 carbon atoms (except 4-methyl-1-pentene) is 0 to 20 mol % (claim 15). Funaya et al. further teach the polymerization of 4-methyl-1-pentene with an olefin mixture including 1- hexadecane and 1-octadecene (which correspond to the at least one selected linear α-olefins having 6-20 carbon atoms), by using a catalyst solution containing 8-octamethylfluoren-12'-yl-(2-(adamantan-1-yl)-8-methyl-3,3b,4,5,6,7,7a,- 8 -octahydrocyclopenta[a]indene))zirconium dichloride (Catalyst D [0752], Synthesis example 4) activated with methylaluminoxane (TMAO-341) and triisobutylaluminum under hydrogen. The polymerization was performed at 60°C and was terminated by addition of methanol obtaining 4-methyl-1-pentene copolymer having an intrinsic viscosity of 2.5 dl/g, Tm of 153 °C and Tc of 119°C (Example 3E [0865], Table 7-1, Example ). It is noted that the molecular weight distribution of the olefin polymer of Funaya et al. is preferably 1.8-3.5, which is similar to the molecular weight distribution disclosed in the instant specification of 1.0-3.5 ([0087] of US20240076425 A1]); ([0155],[0474]-[0476], [0544], [0560], [0562], [0564]-[0565] of Funaya). Funaya et al . are silent on the endotherm end temperature and the exotherm start temperature of the 4-methyl-1 pentene polymer as recited in the instant claim. Funaya et al. teach a substantially identical metallocene-based catalyst system (see discussion above) and similar reaction conditions, and the melting point and intrinsic viscosity of the copolymer of examples 3E is within the claimed ranges. Thus, the resulting copolymer will satisfy the claimed requirements (I) and (II). Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) Regarding claims 2 and 4 , Funaya et al. teach the melting point (Tm ) of the 4-methyl-1-pentene polymer measured by a different scanning calorimeter is preferably from 100 to 260 °C, more preferably 110 °C to 250°C [0621], and Example 3E ,Table 7-1, pages 47-48 discloses a Tm of 221°C, as required by the instant claim. Regarding claim 3, Funaya et al. teach the intrinsic viscosity of the 4-methyl-1-pentene polymer is preferably from 0.5 to 8 dl/g [0626] and Example 3E ,Table 7-1, pages 47-48 discloses an intrinsic viscosity of 2.5 dl/g, as required by the instant claim. Regarding claim 6 , Funaya et al. teach the 4-methyl-1-pentene polymer is produced directly by copolymerization of 4-methyl-1-pentene with α-olefins and it is not post-modified including grafting or functionalization (example 3E, example 4E), as required by the instant claim. Regarding claim 9 , Funaya et al. teach the 4-methyl-1-pentene polymer is used as a film including a package film, release film, as well as coating compositions ([0631]-[0632]), as required by the instant claim . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Eto et al. (JP-2010-150436 (A) as listed on the IDS dated 04/01/2025; English Machine Translation provided by the Applicant) . Regarding claim 1 , Eto et al. teach an olefin resin containing a 4-methyl-1-pentene polymer as a constituent, wherein the 4-methyl-1-pentene polymer preferably comprises 50-100% by weight of structural units derived from 4-methyl-1-pentene and 0 to 50 wt.% of structural units derived from at least one olefin other than 4-methyl-1-pentene selected from linear or branched α-olefins having 2-20 carbon atoms ([0027]-[0029], claims 3-4). Eto et al. further teach in the examples A4 and A5 the copolymerization of 4-methyl-1-pentene with 1-decene for A4 , [0155] and the copolymerization of 4-methyl-1-pentene with a mixture of hexadene and octadecene for A5 [0156], (which correspond to the at least one selected linear α-olefins having 6-20 carbon atoms). Eto et al. use a metallocene catalyst as described in WO-A-01/53369, WO-A-012/27124, JP-A-03-193796 or JP-A-02-41303 [0044], which are referenced in the instant application as examples of the metallocene catalyst [(0093] of USPG Pub. US20240076425 A1)), wherein the production of the 4-methyl-1-pentene polymer is carried out using a catalyst component composed of (i) a metallocene compound represented by formulas (1) or (2) below ([0046]-[0047] of the original document), activated by at least one compound from an organometallic compound (i.e.trialkylaluminum), an organoaluminium oxy compound (i.e.MAO) or an ionizing compound that forms an ion pair with the metallocene, optionally supported on a particulate carrier as described in WO01/27124 [0059]. Eto et al. use Group 4 metallocene catalyst coordinated with cyclopendadienyl-type ligands such as octamethyloctahydrodibenzofluorenyl ([0051], [0155]-[0156), which is similar to the metallocene compound of the present invention. Eto et al. further teach the polymerization can be solution, solution polymerization or suspension or gas phase, wherein an inert hydrocarbon solvent is used in the preferred liquid polymerization [0060], the polymerization is performed at -50 to 400°C, preferably 10 to 250 °C, a pressure is usually from normal to 10 MPa, and it can be carried out by batch system, a semi-continuous system and a continuous system or in two or more stages having different reactions conditions, hydrogen is added to control the molecular weight and intrinsic viscosity ([0063]-[0066]). Furthermore, Eto et al. discloses in the Synthesis Example 5, the polymerization under nitrogen atmosphere with triisobutylaluminum as cocatalyst, and the 4-methyl-1-pentene with the α-olefins is fed in presence of hydrogen [0156]; wherein the molecular weight distribution (Mw/Mn) of the copolymer is between 1.0-5.0 ([0039] and Table 1), which is similar to the molecular weight distribution of the present invention of 1.0-3.5 ([0087] of US20240076425 A1) . Eto et al. are silent on the requirements (I) and (II) as recited in the instant claim. However, a copolymer characteristics are determined by the process by which the copolymer is polymerized, including the catalyst and the reaction conditions. Although the examples of Eto et al. do not disclose the same catalyst used in the examples of the present invention, the catalyst system of Eto et al. as taught in the broad disclosure, is substantially identical to the metallocene system of the claimed invention, and the reaction conditions are similar. Thus, the resulting copolymer is expected to satisfy the claimed requirements (I) and (II). Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).) PNG media_image1.png 284 332 media_image1.png Greyscale PNG media_image2.png 272 368 media_image2.png Greyscale PNG media_image3.png 216 630 media_image3.png Greyscale Regarding claim 2 , Eto et al. teach the melting point (Tm ) of the 4-methyl-1-pentene polymer measured by a different scanning calorimeter is preferably from 100 to 245 °C, more preferably 140 °C to 235°C [0041], and table 1 discloses a Tm of 208 °C and 192°C for examples A4 and A5 respectively. Regarding claim 3 , Eto et al. teach the 4-methyl-1-pentene polymer has an intrinsic viscosity of 0.5 dl/g to 3.0 dl/g [0041]. Eto et al. and the claims differ in that Eto et al. do not teach the exact claimed ranges for the intrinsic viscosity as recited in the instant claims. However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Eto et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05. Regarding claim 4, Eto et al. teach the melting point (Tm ) of the 4-methyl-1-pentene polymer measured by a different scanning calorimeter is preferably from 100 °C to 245°C, mor preferably 130 to 240°C [0041], which overlaps with the claimed range (200°C to 242°C), thereby a prima facie case of obviousness being established. MPEP 2144.05. Regarding claim 5 , Eto et al. teach the 4-methyl-1-pentene polymer comprises 50-100% by weight of structural units derived from 4-methyl-1-pentene and 0 to 50 wt.% of structural units derived from at least one olefin other than 4-methyl-1-pentene selected from linear or branched α-olefins having 2-20 carbon atoms ([0027]-[0029], claims 3-4), which overlaps with the claimed range (84-100 mol% of 4-methyl-1-pentene and 0-16 mol% of the linear α-olefins). 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Eto et al. Regarding claim 6 , Eto et al. teach the 4-methyl-1-pentene polymer is produced directly by copolymerization of 4-methyl-1-pentene with α-olefins and it is not post-modified including grafting or functionalization ([0010], examples), as required by the instant claim. Regarding claims 7-8 , Eto et al. teach a composition (olefin resin based paint) comprising 3-50 parts by weight of a the 4-methyl-1-pentene polymer in 100 parts by weight of an organic solvent, which is equivalent to 3 to 33 wt.% of the 4-methyl-1-pentene polymer and 67-97wt.% of the solvent. Regarding claim 9, Eto et al. teach a coating agent comprising the olefin resin ([006],[0008]-[0009]), as required by the instant claim . 07-21-aia AIA Claim s 5 is rejected under 35 U.S.C. 103 as being unpatentable over Funaya et al. (US 2015/0239996 (A1) as listed on the IDS dated 11/14/2025) . Regarding claim 5, Funaya et al. teach the 4-methyl-1-pentene polymer according to claim 1 as set forth above and incorporated herein by reference. Funaya et al. teach the 4-methyl-1-pentene polymer comprises 80-100 mol of constituent units derived from 4-methyl-1-pentene (U1) and the amount of constituent units derived from at least one selected from olefins having 2 to 30 carbon atoms (except 4-methyl-1-pentene) (U2) is 0 to 20 mol % (claim 15). Funaya et al. and the claims differ in that Funaya et al. do not teach the exact claimed ranges for the amounts of the constitutional units of the copolymer as recited in the instant claim. However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Funaya et al. overlap the instantly claimed ranges (84-100 mol % of U1 and 6-20 mol% of U2) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05 . 07-21-aia AIA Claim s 7-8 rejected under 35 U.S.C. 103 as being unpatentable over Funaya et al. (US 2015/0239996 (A1) as listed on the IDS dated 11/14/2025) in view of Eto et al. (JP-2010-150436 (A); English Machine Translation provided by the Applicant) . Regarding claims 7-8 , Funaya et al. teach the 4-methyl-1-pentene polymer is suitable used as material for products such as films and coatings ([0631]-[0632]). Funaya et al. are silent on the amounts of 4-methyl-1-pentene polymer (A) and solvent as recited in the instant claim. Funaya et al. are further silent on the organic solvent. However, Eto et al. teach a coating composition (olefin resin based paint) comprising 3-50 parts by weight of a 4-methyl-1-pentene polymer in 100 parts by weight of an organic solvent, which is equivalent to 3 to 33 wt.% of 4-methyl-1-pentene polymer and 67-97 wt.% of solvent. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the coating material (composition) according to Funaya et al. having a 3-50 pbw of 4-methyl-1-pentene polymer in 100 parts by weight of an organic solvent, as Eto et al. demonstrate this mass contents of the polymer and a solvent in a similar application with the expected result of obtaining a coating composition with an appropriated viscosity that results in a uniform coated surface [0016] , thereby arriving to the claimed invention . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure (listed on the IDS dated 11/14/2023) JP-2018-162408 by Mitsui Chemicals. Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00. 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, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /OLGA LUCIA DONAHUE/Examiner, Art Unit 1763 /CATHERINE S BRANCH/Primary Examiner, Art Unit 1763 Application/Control Number: 18/280,163 Page 2 Art Unit: 1763 Application/Control Number: 18/280,163 Page 3 Art Unit: 1763 Application/Control Number: 18/280,163 Page 4 Art Unit: 1763 Application/Control Number: 18/280,163 Page 5 Art Unit: 1763 Application/Control Number: 18/280,163 Page 6 Art Unit: 1763 Application/Control Number: 18/280,163 Page 7 Art Unit: 1763 Application/Control Number: 18/280,163 Page 8 Art Unit: 1763 Application/Control Number: 18/280,163 Page 9 Art Unit: 1763 Application/Control Number: 18/280,163 Page 10 Art Unit: 1763 Application/Control Number: 18/280,163 Page 11 Art Unit: 1763