DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on July 22, 2026 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 10, please replace the open parenthesis mark with a comma.
Claim 1 is objected to because of the following informalities: In line 11, please replace “the total” with “a total”.
Claim 1 is objected to because of the following informalities: In line 12, delete the close parenthesis mark.
Claim 1 is objected to because of the following informalities: In line 12, please replace “the amount” with “an amount”.
Claim 1 is objected to because of the following informalities: In line 12, please replace “the sum” with “a sum”.
Claim 1 is objected to because of the following informalities: In line 16, it is unclear whether the sum of amounts of metallic magnesium introduced from the beginning to the (n-1)th. portion is also quantified in moles as per the amount of metal magnesium introduced in the nth portion (see line 18).
Claim 1 is objected to because of the following informalities: The symbol “(a)” in Equation 1 is not defined in lines 16 and 17 of claim.
Claim 1 is objected to because of the following informalities: In line 17, please replace “metallic” with “metal” so that the term is consistent with that written in lines 9, 10, 12, and 18.
Claim 3 is objected to because of the following informalities: In line 3, please replace “the reaction” with “a reaction”.
Claim 8 is objected to because of the following informalities: In line 2, delete “among”.
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.
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 1-3, 5-7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (KR 10-2012-0097100).
Example 2 of Kim et al. teaches a method of making a solid catalyst component comprising: (1) reacting diethoxymagnesium with TiCl4 in toluene, (2) contacting the reaction product with diisobutyl phthalate while raising the reaction temperature, and (3) contacting the reaction mixture with another portion of TiCl4. The diethoxymagnesium is prepared by reacting 10 g magnesium metal with 250 mL of anhydrous ethanol in the presence of N-bromosuccinimide initiator at a temperature of 70 ºC. The magnesium metal is added in three successive 10 g, 20 g, and 45 g portions. The weight (and mole) ratio N/W is (10 + 20)/45 = 0.67, which lies squarely within claimed range of 0.1 to 1.2. Claim 7 is subsumed under the rejection since it merely limits an optional component recited in claim 5. That is, there is no indication in claim that the reaction initiator is the halogen compound.
Example 4 is prepared in similar manner, except the magnesium metal is added in three successive 10 g, 25 g, and 30 g portions, corresponding to a ratio N/W of 1.17. Example 5 is prepared in similar manner, except the magnesium metal is added in three successive 15 g, 35 g, and 80 g portions, corresponding to a ratio N/W of 0.62. Finally, Example 6 is prepared in similar manner, except the magnesium metal is added in three successive 20 g, 25 g, and 45 g portions, corresponding to a ratio N/W of 1.0.
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 10-2012-0097100).
The discussion of the disclosure of the prior art from the preceding paragraph is incorporated here by reference. Kim et al. does not quantify the amounts of each catalyst component, however in view of the fact that the prior art catalyst is prepared with substantially the same method as that described in instant claims, reasonable basis exists to believe that prior art catalyst has substantially the same composition as that described in instant claims. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2010/0298509).
Example 1 (paragraph [0036]) of Kim et al. teaches a method of making a solid catalyst component comprising: (1) reacting diethoxymagnesium with TiCl4 in toluene, (2) contacting the reaction product with diisobutyl phthalate while raising the reaction temperature, and (3) contacting the reaction mixture with another portion of TiCl4. Prior art teaches all three steps recited in claim 1.
The dialkoxymagnesium is described in product-by-process format in lines 8-19 of claim 1 and is therefore not considered part of the three requisite steps of claimed method. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Claims 2, 3, and 5-7 are also rejected as they are part of the product-by-process limitation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
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/RIP A LEE/Primary Examiner, Art Unit 1762 September 24, 2026
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