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 .
DETAILED ACTION
Claims 1-12 of Y. Kim et.al. US 18/344,614 (06/29/2023) are pending. Claims 8-12 are withdrawn as directed to nonelected Groups (II)-(III). Claims 1-7 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I (claims 1-7), without traverse, in the reply filed on 02/02/2026. Claims 8-12 drawn to Groups (II)-(III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement is made as FINAL.
Claim Rejections - 35 USC § 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.
Claims 1-2 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by H. G. Alt, et al, (1996). 522(1), Journal of organometallic chemistry, 39-54 (1996)(“Alt”). Alt is published in German, a copy of machine translation is attached as the second part of the reference, which results the full reference has a total page of 31, the format for citation of the reference as XX/31.
Alt teaches metallocene complexes catalyst precursors for the syndiospecifi polymerization of propylene. The catalyst are substituted in the positions of 2 and 7 of the fluorenylidene fragment by MeO-,halogen-, alkyl- and aryl group. Alt at page 1/31, Abstract.
Alt teaches that the metallocene complexes catalyst precursor 31b has a chemical structure as indicated below. Alt at page7/31, Fig. 2., compound 31b.
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The Alt teaches catalyst precursor 31b maps the Chemical Formula 1 in claims 1-2 and 6-7 as:
M is Zr that is a Group 4 transitional metal,
Both R1 and R2 are 1-methyl-1-phenylethyl group that is a (C6-C20)aryl(C1-C20)alkyl;
Both R3 and R4 are phenyl group that is a (C6-C20)aryl;
Both X1 and X2 are chloride;
Which meets each and every limitation of claims 1-2, therefore, claims 1-2 are anticipated.
Per Table 5, Alt teaches that the catalyst precursor 31b was used for the bulk polymerization of propylene. Alt at page 10/31 and 26/31 Table 5 and page 25/31, right col. 2.5. Polymerization of Propylene and Comparison of Catalytic Properties, line 1-3.
Alt teaches that the catalyst was prepared as follows:
3.10.1. Preparation of the Catalyst
The respective metallocene dichloride complex was weighed (usually 1-2 mg ± 0.1 mg) and activated under an argon atmosphere with MAO (usually 1 ml MAO (30%) per 1 mg metallocene dichloride complex). The solution was diluted 2-10 times with toluene. 10 ml of each of these solutions were used for polymerization within 60 minutes.
Alt at page 31/31 left. col. 3.10.1. Preparation of the Catalyst, emphasis added.
Thus, Alt also teaches a composition comprising the catalyst precursor 31b and Methyl aluminoxane (MAO), which meets each and every limitation of claims 6-7, therefore, claims 6-7 are also anticipated. With regarding the claim 6 preamble recitation of “for producing a copolymer of ethylene and a-olefin”, which does not impose any structural limitations on the claimed composition and therefore is interpreted merely as a statement of suggested use rather claim limitation. See MPEP § 2111.02(II).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over by H. G. Alt, et al, (1996). 522(1), Journal of organometallic chemistry, 39-54 (1996)(“Alt”) as applied for the rejection of claim 1 above. Alt is published in German, a copy of machine translation is attached as the second part of the reference, which results the full reference has a total page of 31, the format for citation of the reference as XX/31.
H. G. Alt, et al, (1996). 522(1), Journal of organometallic chemistry, 39-54 (1996)(“Alt”)
As mentioned above that Alt teaches metallocene complexes catalyst precursors for the syndiospecifi polymerization of propylene. The catalyst are substituted in the positions of 2 and 7 of the fluorenylidene fragment by MeO-,halogen-, alkyl- and aryl group. Alt at page 1/31, Abstract and Fig. 2 at page 7/31.
Alt compared the catalytic functions of the synthesized metallocene complexes catalyst precursors and teaches that substituted groups at the 2 and 7 positions of the fluorenylidene fragment effect the catalytic activities of the metallocene complexes catalyst precursors; activity and molar mass of the polymer increase in the series Me<sub>Ph </sub> <tert-butyl < mesityl for the isopropylidene-bridged catalysts and Me<sub>Ph</sub> < tert-butyl <PhMe2C for the diphenylmethylene-bridged catalysts. Alt at page 26/31, paragraph 2 under Table 4, line 9-10, emphasis added.
Alt also teaches that:
The hafnium compounds 26c and 30c are about half as active as the analogous zirconia complexes 26b and 30b, but the number of chain terminations is not as high and the molecular weight of polypropylene is significantly higher.
Alt at page 26/31, paragraph 2 under Table 4, last sentence to page 27/31, left col. line 4, emphasis added.
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See Alt Fig. 2 at page 7/31 and Table 5 at page 26/31.
Difference Between Alt and Claims 3-5
The Alt the complex 26c differs from the instant claims in that it does not comprise the claimed R1 and R2; the Alt the complex 31b differs from the instant claims only in that the Zr metal is not the claimed Hf.
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Obviousness Rationales of the Claims 3-5
Obviousness of a claimed compound can also be supported where there is motivation to substitute particular chemical moieties in a prior art compound for others so as to arrive at a claimed compound. MPEP § 2143(I)(B). For example, in the pharmaceutical arts, the rational is stated as motivation to select a known compound and also motivation to structurally modify the selected compound in a particular way to achieve a claimed compound. MPEP § 2143(I)(B) (see for example, MPEP § 2143(I)(B) Example 9, citing Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 87 USPQ2d 1452 (Fed. Cir. 2008).
Claims 3-5 are obvious because one of ordinary skill seeking polypropylene having higher molecular weight is motivated to modify the Alt the complex 26c or the Alt the complex 31b as indicated below, thus arrive at the first claimed species of claim 5, which meets each and every limitation of claims 3-5, therefore claims 3-5 are obvious.
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One ordinary skill has a motivation to do so with a reasonable expectation of success because Alt teaches that:
(i). polypropylene formed under the catalyzation of hafnium compounds has higher molecular weight; and
(ii). diphenylmethylene-bridged catalysts with substituted groups of 1-methyl-1-phenylethyl at the positions of 2 and 7 of the fluorenylidene fragment has higher catalytic activities.
Rationales supporting the modification is simple substitution of one known element for another to obtain predictable results. MPEP 2143. I (B).
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692