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 amendment dated 3/13/26, claims 1-9 are currently pending in the application.
Claim Rejections - 35 USC § 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, 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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO2019/098703 A1), in view of Hosen et al. (US 5,919,983, cited in the IDS dated 9/28/23) (references of record.
At the outset, it is noted that the WIPO publication to Kim et al. is not in English and therefore, US 11,220,566 B2 is relied upon as its equivalent in the rejection herein below.
Kim teaches a catalyst composition comprising as a cocatalyst, a boron compound of the general formula:
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wherein Rf is C5-C7 heteroaromatic radical, i.e., encompasses pyridine and imidazole structures, Re is a phenyl which may be substituted with 3 to 5 fluoro substituents or C1-10 alkyl substituted by fluoro. Additionally, disclosed examples of the boron compounds include pyridinium tetrakis(pentafluorophenyl)borate (col. 6, lines 4-14, col. 6, line 64-col. 7, line 54). Kim teaches the use of a catalyst composition comprising the cocatalyst for preparing an ethylene-based copolymer (Ab., col. 8, lines 12-56, Examples, ref. claims).
Kim is silent on a 5- or 6-membered monocyclic nitrogen-containing aromatic heterocyclic compound having a total carbon number of not less than 25 and substituted by the same or different, two or more C₁-3₀ alkyl groups or C₁-₃₀ alkoxy groups as in the claimed invention.
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.
In a related field of endeavor, the secondary reference to Rosen is directed to a soluble olefin polymerization cocatalyst activator comprising a Bronsted acid capable of donating a proton and an inert, compatible, non-coordinating, anion (Ab.), of the general formula:
[L*-H]+ [BQ14]-
wherein L* is a nitrogen-containing neutral base, B is boron in an oxidation state of 3, and Q is a fluorinated aryl group, such as pentafluorophenyl group. Rosen further teaches that by incorporating into the Bronsted acid, L, one or more oleophilic groups, such as two long chain alkyl groups preferably of C10-40 alkyl groups and from 21 to 90 total carbons, the solubility of the catalyst activators in aliphatic compounds is increased, thereby improving the effectiveness in catalyst activation (col. 3, lines 12-39).
Given the teaching in Rosen on advantages of incorporating one or more oleophilic groups into the Bronsted acid, and given the teaching in Kim on boron compounds that are suitable for use as a cocatalyst in olefin polymerization, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to incorporate two or more C10-40 alkyl groups in Kim’s heteroaromatic radicals of the boron compounds, for e.g., in the pyridnium moiety of pyridinium tetrakis(pentafluorophenyl)borate.
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 1-5, 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,577,264. Although the claims at issue are not identical, they are not patentably distinct from each other because patent claim 1 is drawn to a composition comprising the following compound below:
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Thus, the compound (II) in the composition of patent claim 1 falls within the scope of claimed compound of pending claim 1.
Limitations of pending claims 2, 3, and 5 are met by patent claims 4, 5, and 7, respectively.
Additionally, patent claims 2, 3, 6, 8-18 further limit the scope of patent claim 1 or include, directly or indirectly, the composition of patent claim 1 comprising the compound (II).
Response to Arguments
In view of the amendment dated 3/13/26, objection of claim 1 and the 112(b) rejection of claim 4 are all withdrawn. Applicant’s arguments regarding the art rejections and the double patenting rejections of record have been duly considered.
Applicant argues that Kim describes a cocatalyst of formula (D) and specifically disclosed pyridinum tetrakis(pentapheny)borate,
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but does not disclose or suggest disubstitution of the heterocycle with two or C₁-30 alkyl groups or C₁-₃₀ alkoxy groups, wherein a total number of carbon atoms of the (A-H)+ is not less than 25. Referring to Hosen’s cocatalyst of formula:
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Applicant argues that Hosen discloses ammonium and anilinium compounds wherein the long chain group is directly bonded to the “N”, and never suggests substituted heterocyclic compounds where the alkyl chain is bonded to the ring structure.
In response, it is noted that Hosen is in an analogous field, and teaches a cocatalyst comprising an anion that overlaps in scope with those of Kim. Additionally, Rosen teaches that incorporating into the Bronsted acid, L, one or more oleophilic groups, such as two long chain alkyl groups preferably of C10-40 alkyl groups and from 21 to 90 total carbons, the solubility of the catalyst activators in aliphatic compounds is increased, thereby improving the effectiveness in catalyst activation (col. 3, lines 12-39).
Thus, one of ordinary skill in the art would have found it obvious to include one or more, e.g., two such oleophilic substituents in the Bronsted acid “L” of Kim, including as ring substituents of pyridine or imidazole structures of the Bronsted acid of Kim’s cocatalysts so as to provide for increased solubility, absent evidence to the contrary.
Regarding the obviousness double patenting rejections of record, it is noted that the rejections of record are withdrawn as application no. 17/941067 has matured to US Pat. No. 12,577,264. Furthermore, it is noted that the statement of rejection in paragraph 14 of the previous office action inadvertently cited incorrect claim numbers. Appropriate corrections are made in the statement of rejection herein above.
Examiner acknowledges Applicant's request that double patenting rejections be held in abeyance until otherwise allowable subject matter is identified. However, per MPEP 804 (I) (B) (1), “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated”. Therefore, the rejections will be maintained until such time that Applicants address the obviousness-type double patenting rejection and the arguments are either persuasive or a terminal disclaimer is filed.
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 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. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762
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