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 .
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.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-7, 9, and 10 are 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 4: Claim 4 depends from claim 1 and states that a polymerization temperature T is 210 °C or higher. As written, it is unclear whether the phrase “ a polymerization temperature T” is intended to further limit the polymerization temperature T recited in the parent claim, or if it is intended to refer to a separate temperature. Note that the first interpretation would only narrow the range of polymerization temperature, whereas the second interpretation could be interpreted to require that the process requires polymerization be done at least two different temperatures. The scope of the claims is therefore unclear. In the event applicant intended claim 4 to further limit the temperature range recited in independent claim 1, it is suggested that claim 4 be amended to state “the polymerization temperature” instead of “a polymerization temperature.
Regarding claims 5 and 6: Claims 5 and 6 each depend from claim 1 and recite limitations regarding “a polymerization temperature T”. These claims are indefinite per the same rationale as outlined in the previous paragraph with respect to claim 4.
Claim 7 depends from claim 1 and states that the scavenger corresponds to claimed chemical formula 1. Note that the claim states that variable R4 may be nitrogen (N); however, R4 is only bonded to two substituents. One of ordinary skill in the art will recognize that nitrogen forms 3 bonds or, when quaternized, 4 bonds. The structure of the scavenger is therefore indefinite when R4 is nitrogen, as it is unclear is there is supposed to be some other group bonded to the nitrogen or if it is intended to form a double bond in order to fill the empty valence.
Claim 9 recites the limitations "the first scavenger" and "the second scavenger" in line 2. There is insufficient antecedent basis for these limitations in the claim. The parent claim does not recite the phrases “first scavenger” and second “scavenger”; it is therefore unclear which components these phrases are intended to refer to. The examiner notes that “first scavenger” has been interpreted to refer to the scavenger in the claimed first mixture and “second scavenger” has been interpreted to refer to the scavenger in the claimed second mixture, for the purposes of examination on the merits.
Claim 10 recites the limitations "the first scavenger” and “the second scavenger” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. The phrases “first scavenger” and “second scavenger” are not recited in the parent claim. Furthermore, note that claim 10 depends from claim 1, which only recites the use of a single scavenger as part of the claimed first mixture. It is therefore unclear what the phrases first scavenger” and “second scavenger” are intended to refer to, particularly in view of the fact that the parent claim only recites a single scavenger.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 depends from claim 8 and states that the “the first scavenger and the second scavenger are chemically the same or different from each other.” Parent claim 8 only requires the inclusion of second scavenger in the claimed second mixture; no limitations are recited that would limit the chemical structure/identity of the scavenger in the second mixture. As such, claim 8 allows the scavenger of the second mixture to be the same as or different from the scavenger in the first mixture. Claim 9 therefore does not further limit the scope of the parent claim, as there is any combination of compounds being used as the first and second scavengers that would fall within the scope of claim 9 would also fall within the scope of claim 8.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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(s) 1-3, 7-9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zboril et al, EP0057050.
Example XI (page 17: lines 15-38) discloses a process of making a polymer (for claim 1), wherein said process comprises the steps of adding first and second mixtures to a stirred reactor (for claim 1) and polymerization of a monomer mixture to form an ethylene copolymer, corresponding to the claimed manufacturing step (for claim 1). Said polymerization was performed at 200 °C (for claim 1).
Regarding the claimed first mixture: The prior art second mixture comprises a monomer stream of ethylene (for claim 1) and butene, corresponding to the claimed monomer (for claim 1); cyclohexane, corresponding to the claimed solvent (for claims 1, 3); and triethyl aluminum, corresponding to the claimed scavenger (for claim 1). The second mixture of the prior art process therefore corresponds to the claimed first mixture (for claim 1).
Regarding the claimed second mixture: The prior art first mixture comprises an unsupported Ziegler Natta catalyst (for claim 1) comprising titanium tetrachloride/vanadium oxytrichloride and diethylaluminum chloride. The prior art first mixture therefore corresponds to the claimed second mixture (for claim 1).
Regarding claim 2:Note that the claimed invention does not state that the process comprises step(s) of recycling and/or purifying the solvent; rather it states that the solvent is a purified and recycled solvent. As noted above, the prior art process is performed using the solvent cyclohexane, which is the same solvent disclosed by applicant for performing the claimed process (see for instance claim 3). Further note that Zobril teachings that the solvent is purified (page 11: line 15-19). As the prior art solvent is the same chemical as used by applicant, the burden is shifted to applicant to provide evidence that the descriptor “recycled” inherently requires a material and unobvious difference in structure between the claimed solvent and the prior art solvent (MPEP § 2113).
Regarding claim 7: As noted above, the prior art second mixture comprises triethyl aluminum; note that this compound corresponds to the claimed formula R2 and R3 are both C1 alkyls, R1 is hydrogen, and R4 is a C2 alkylene.
Regarding claims 8, 9: As noted above, the prior art first mixture comprises diethylaluminum chloride; note that this compound can be considered a proton scavenger and therefore falls within the scope of the claimed second scavenger (for claim 8) which is different from the first scavenger (for claim 9).
Regarding claim 11: As noted above, the prior art first mixture comprises diethylaluminum chloride, which falls within the scope of the claimed cocatalyst.
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.
Claim(s) 4-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zboril et al, EP0057050.
As discussed in paragraphs 16-22 of this Action, Example XI discloses the production of an ethylene copolymer via a process comprising the addition of first and second mixtures to a stirred reactor. Note that Zboril broadly teaches that polymerization is performed at a temperature in the range of 150 to 300 C (abstract), overlapping the claimed range (for claims 4-6)
Example XI of Zboril does not specifically disclose a process comprising the addition of two mixtures as required combined with a polymerization temperature in the recited range (for claims 4-6) and a ratio of first to second scavenger in the recited range (for claim 10).
Regarding the claimed temperature: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art temperature range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to perform the prior art polymerization at the required temperature (for claims 4-6).
Regarding the claimed ratio of scavengers: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05).
Zboril discloses a process for producing ethylene (co)polymers, wherein said process comprises adding first and second mixtures comprising scavengers to a stirred reactor. Note that Zboril teaches 1) the amount of scavenger in each mixture can be varied within broad ranges in order to maintain the ratio of aluminum to titanium and vanadium within desired ranges (Page 5: lines 24-36) and 2) to maintain a high level of activity in order to reduce the amount of catalyst needed and, as a result, reduce the amount of leftover catalyst present as an impurity in the final product (page 2: line 27 to page 3: line 29). As the activity of the catalyst will depend on the amount of cocatalyst present, it would have been obvious to one of ordinary skill in the art to vary the amount of organoaluminum compound in the prior art first and second mixtures, corresponding to the claimed second and first scavengers, through routine experimentation to optimize the catalytic activity of the system (for claim 10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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