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 .
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.
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Claims 1-3, 5-6, and 9-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, and 12-19 of co-pending Application No. 18/065,676 (reference application) in view of Meng ’16 (RSC Advances 2016, 6, 19351-19356).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 13, claim 12 of the reference application teaches the polymerization of isoprene utilizing a method which only differs from instant claim 13 because it is silent with regard to the incorporation of norbornene. However, this difference does not render claim 13 patentably distinct in view of Meng ’16 (RSC Advances 2016, 6, 19351-19356). Meng ’16 teaches copolymers of norbornene with isoprene (Abstract), and teaches that the incorporation of the two monomers together are useful – the norbornene units provide thermal stability and tensile strength, while the isoprene units provide elasticity, solubility, and glass transition characteristics (p. 19351, Introduction section, right column). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate norbornene into the polymerization process of claim 12 of the reference application to arrive at the process of claim 13.
Regarding claims 14-20, the claims are respectively unpatentable over claims 13-19 of the reference application as modified by Meng ’16, above.
Regarding claim 1, the claim is unpatentable over claim 1 of the reference application as modified by Meng ’16, above. This includes the newly amended limitation requiring a random molecular architecture, as said architecture will result due to polymerization conditions employed during synthesis. Since the claims of the prior art, as modified by Meng ’16, teaches a substantially identical polymerization process, the claimed molecular architecture will inherently be present as claimed.
Regarding claims 2 and 3, the claims are unpatentable over claims 4 and 5 of the reference application as modified by Meng ’16, above.
Regarding claims 5 and 6, the claims are unpatentable over claim 3 of the reference application as modified by Meng ’16, above.
Regarding claims 9 and 10, the claims are unpatentable over claim 1 of the reference application as modified by Meng ’16, above.
Regarding claim 11, the claim is unpatentable over claim 1 of the reference application as modified by Meng ’16, above.
Regarding claim 12, the claim is unpatentable over claim 7 of the reference application as modified by Meng ’16, above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-6, 8-11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shiba (US 2019/0256628 A1) in view of Meng ‘16 (RSC Advances 2016, 6, 19351-19356).
Regarding claims 1 and 13-14, Shiba teaches a method for producing a conjugated diene polymer having a high content of cis-1,4 structures (abstract), comprising a ternary catalyst system including a gadolinium catalyst ((A), Abstract), an ionic compound which may be inter alia borate salt complexes such as ammonium tetrakis (pentafluorophenyl)borate ((B), [0068]-[0069]), and an organic metal compound, which may be an organic aluminum compound, and which may be a trialkyl aluminum such as triisobutyl aluminum ((C), [0081]). Shiba teaches that the inventive polymer may comprise a conjugated diene such as 1,3 butadiene and isoprene ([0099]) and an olefin compound such as norbornene ([0101]).
Shiba teaches the incorporation of 1,3 diene components as described above ([0099]), and teaches at least partial incorporation thereof as cis-1,4 repeat units (e.g., [0038]). Further, Shiba teaches copolymers having cis-1,4 structures in excess of 94.5% and provides examples having cis-1,4 structures in excess of 95% (p. 10, [0183], and p. 17, Table 1). Additionally, this characteristic is one which arises as a result of the polymerization method utilized in the production of the inventive polymer (e.g., p. 23, Table 4 of Shiba, which shows a distinct variation of cis/trans ratio with respect to the alkyl aluminum compound utilized in the reaction procedure). Two polymers which are produced using the same procedure, using the same components and ratios, will be structurally identical to one another. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the claimed characteristic regarding cis/trans ratio will inherently be present in the prior art if the prior art polymer is produced by a process which is identical or substantially identical to the process by which the claimed polymer is produced.
As described above, Shiba teaches that the catalyst (A) is a gadolinium catalyst (Abstract), which differs from the catalyst system used in the instant application (c.f. claim 13, which contemplates the use of a titanium catalyst. However, Shiba does teach that conjugated diene polymers having high amounts of cis-1,4 structures are obtainable with titanium catalysts in combination with organic aluminum compounds ([0003]).
In the same field of endeavor, Meng ‘16 teaches a copolymer of Isoprene and norbornene (Abstract), which is produced using a catalyst system containing a bis(phenoxy-imine) titanium complex (Abstract). Meng ‘16 further teaches the use of triisobutyl aluminum within the catalyst system (Abstract), and refers to prior publications indicating that ternary systems comprising a catalyst complex/alkyl aluminum/borate salt complex are useful for the polymerization of norbornene and isoprene (p. 19351, Introduction section, right column). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the bis(phenoxy-imine) titanium catalyst of Meng ‘16 in place of the gadolinium catalyst within the formulation of Shiba, as Meng ‘16 teaches said titanium catalyst as a suitable catalyst for the polymerization of norbornene and isoprene.
The titanium catalyst taught by Meng ‘16 reads on the catalyst required by the polymerization method claim (claim 13), because it is identical to the claimed catalyst when:
The structure falls within the scope of claimed formula (Ia)
M is titanium
X is a halogenide (chloride)
LA and LB are identical to one-another and fall within the scope of claimed formula (II), and wherein, in claimed formula (II),
m is 2
n is 0
R groups are chosen from hydrogen (in the meta-positions, with respect to the oxygen substituent, on the benzene ring directly attached to oxygen and all other positions with respect to the nitrogen substituent on the benzene ring directly attached to nitrogen) and t-butyl groups (in the ortho-position which is not a imine-bearing substituent, and the para-position, with respect to the oxygen substituent on the benzene ring directly attached to oxygen)
This catalyst is recognized as the same catalyst described by claimed formula (IIIa) in claim 14, wherein M is titanium, each X is a chlorine atom, R1-2, R4, and R7 are all hydrogen atoms and R3, R5, R6, and R8 are all t-butyl groups.
In substituting the bis(phenoxy-imine) catalyst of Meng ‘16 in place of the gadolinium catalyst of Shiba, the formulation taught by Shiba in view of Meng ‘16 meets all of the compositional characteristics of the claimed polymer: it comprises the polymerization of norbornene and isoprene, and is catalyzed via the same ternary system as that contemplated by the instant Application (c.f. claims 1, 10, 13, and 15, wherein the polymer is indicated as containing norbornene and isoprene, bis(phenoxy-imine) catalyst described above, a borate ester including ammonium tetrakis (pentafluorophenyl)borate, and triisobutyl aluminum). Furthermore, Shiba teaches the mixing of the borate compound (component (C) of Shiba) with the catalyst (component (A) of Shiba, which is the bis(phenoxy-imine) catalyst of Shiba in view of Meng ‘16, as described above) ([0094]). This reads on the claimed method step “(C) activating the catalyst to obtain an activated catalyst” because the instant Specification states that activating the catalyst entails mixing said catalyst with an activator ([0096]), and indicates that ammonium tetrakis (pentafluorophenyl)borate is a suitable activator ([0027]; also c.f. claim 15). Shiba finally teaches the polymerization of the monomers (e.g., [0100] and [0102]).
Therefore, the polymer of Shiba as modified by Meng ‘16 is produced by a substantially identical process as claimed, and utilizes all of the claimed materials. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed amount of cis 1,4 diene repeat units and the random molecular architecture within the claimed polymer will therefore necessarily be present in the polymer of Shiba as modified by Meng ‘16, and as applied above.
Regarding claims 2-3, 5-6, 8-11, and 18, as described above, the polymer of Shiba as modified by Meng ‘16 is produced by a substantially identical process as claimed, and utilizes all of the claimed materials. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed molecular weight, glass transition temperature, and molecular architecture characteristics will therefore necessarily be present in the polymer of Shiba in view of Meng ‘16.
Regarding claim 15, as described above, Shiba teaches the use of triisobutyl aluminum ([0081]) and ammonium tetrakis (pentafluorophenyl)borate ([0068]-[0069]), which read on the claimed lists of “co-catalyst” compounds and “activator” compounds, respectively.
Regarding claim 16, Shiba further teaches that the mixing of the catalytic components (A) and (C) with an inert solvent (described as aging these components, which explicitly involves their mixing, see [0091]) may be performed at temperatures ranging from -50 to 120°C ([0091]), which encompasses the claimed range of “1°C to 50°C,” establishing a prima facie case of obviousness. Shiba further teaches many orders of addition which include the third component of the tertiary catalyst system (e.g., [0094]-[0098]). Shiba then teaches mixing the catalyst system with the monomers any polymerization of the mixture ([0100] and [0103]), and teaches that the temperature of polymerization may range from -30 to 150°C ([0103]), which encompasses the claimed range of “20°C to 125°C,” establishing a prima facie case of obviousness.
Regarding claim 17, As described above, Shiba teaches a copolymer which may include norbornene and diene components.
Regarding claims 19-20, Shiba teaches example compositions containing 50 parts of inventive polymer, 50 parts of natural rubber, and 50 parts of carbon black (p. 32, Table 10), and teaches that the carbon black is a reinforcing filler for the composition ([0010]). Because the inventive polymer and natural rubber collectively comprise the rubbers within the formulation, the example formulations include 50 phr of the inventive diene-norbornene polymer, 50 phr of natural rubber, and 50 phr of carbon black. In each case, these amounts fall within the claimed ranges of “at least 5 phr” and “5 to 95 phr,” of the claimed “diene-norbornene copolymer,” “at least 20 phr” and “25 phr to 200 phr” of the claimed “filler” and “filler comprising one or more of carbon black and silica,” and “5 to 95 phr” of the claimed “at least one polymer,” respectively, establishing prima facie cases of obviousness.
Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shiba (US 2019/0256628 A1) in view of Kaita (US 2013/0197157 A1).
Regarding claims 4 and 12, Shiba as modified by Meng ‘16 is silent with regard to the amounts of norbornene incorporated within the polymer.
In the same field of endeavor, Kaita teaches copolymers of conjugated dienes and non-conjugated olefins (Abstract), comprising greater than 70.5 mol% of cis-1,4 conjugated diene units and 10 mol% or more of the non-conjugated olefin. Kaita specifies the use of Isoprene ([0019]), states that the incorporation of greater than 70.5 mol% of cis-1,4 content provides better crack resistance ([0029]), and states that greater than or equal to 10 mol% of the non-conjugated olefin improves the weather resistance ([0029]). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the isoprene and norbornene of Shiba in the amounts taught by Kaita for the purpose of improving both the crack resistance and weather resistance properties of the inventive polymer.
A polymer containing between 70.5 and 90 mol % of isoprene and between 10 and 29.5 mol % of norbornene would also contain between about 63.4 and 86.7 weight % of isoprene and between about 13.3 and 36.6 weight % of norbornene. These amounts overlap the claimed ranges or norbornene required by claim 4, establishing prima facie cases of obviousness. Furthermore, these ranges overlap all of the claimed ranges of norbornene and 1,4 isoprene within the listing of claim 12, establishing prima facie cases of obviousness.
Response to Arguments
Applicant's arguments regarding non-statutory double patenting, filed January 16, 2026 have been fully considered but they are not persuasive.
Applicant argues that the non-statutory double patenting rejection is improper because said rejection relies upon a third-party non-patent literature document (Meng ’16). Applicant thereby asserts that a non-statutory double patenting rejection would only be proper if said rejection only included However, a nonstatutory double patenting rejection is analogous to a failure to meet the nonobviousness requirement of 35 USC 103, as described by the Applicant. Furthermore, a secondary reference is explicitly allowed in supporting the obviousness analysis for a nonstatutory double patenting rejection (see MPEP 804(II)(B)(3)). Therefore, the prior art document (Meng ’16) has been appropriately utilized in the non-statutory double patenting rejection of the previous and current Office Actions.
Applicant’s arguments regarding 35 USC 102 have been fully considered and are persuasive. The 35 USC 102 rejection of claims 1-3, 5-6, and 8-10 has been withdrawn.
Applicant's arguments regarding 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that the previous Office Action is silent with regard to a teaching within the combined references which reads on the limitation within the claims which requires a “random” copolymer. However, as described in the previous Office Action and as described above, Shiba as modified by Meng teaches copolymers which meet all of the claimed compositional limitations required by the claims. Additionally, this randomness characteristic is one which arises as a result of the polymerization method utilized.
As described above, Shiba as modified by Meng utilizes a synthetic method which is substantially identical to that of the instant disclosure. Two polymers which are produced using the same procedure, using the same components and ratios, will be structurally identical to one another. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Therefore, the claimed “random” characteristic will inherently be present in the prior art if the prior art polymer is produced by a process which is identical or substantially identical to the process by which the claimed polymer is produced. Therefore, the polymer of Shiba as modified by Meng teaches the claimed composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762