DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a supported catalyst, classified in B01J 31/00.
II. Claim 13-20, drawn to a method of making a transition metal compound, classified in B01J 37/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In this case, product as claimed in group I can be made by another and materially different process in group II. Such as, as a method of making a transition metal compound that comprises a reaction medium at a temperature of -80
°
C.
3. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
4. This application contains claims directed to the following patentably distinct species:
Category A
Species (a) – the transition metal compound has a formula (A)
Species (b) – the transition metal compound has a formula (B)
The species are independent or distinct because Category A is drawn to transition metal compounds with a different molecular formula. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1 and 4-20 are generic.
5. There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
6. The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with David Dockter on January 6, 2026 a provisional election was made with traverse to prosecute the invention of group I, species (b), claims 1 and 3-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2 and 13-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
7. Claim 10 is objected to because of the following informality:
In order to provide consistency of the term “the catalyst” recited in claim 1, line 1, it is suggested to
amend “the catalyst” to “the supported catalyst” in claim 10, line 2. Appropriate correction is required.
Claim Rejections - 35 USC § 102
8. 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.
9. 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.
10. Claims 1, 3-8, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holtcamp et. al. (US 20210179650 A1) (Holtcamp(1)).
10. Regarding claims 1, 3, Holtcamp(1) teaches a catalyst system (Holtcamp(1), Abstract) for olefin polymerization (Holtcamp(1), [0029]) that optionally includes at least one catalyst support (Holtcamp(1), [0030])
wherein the catalyst compound is represented by Formula (I) (i.e. formula (B)) as shown below (Holtcamp(1), [0011])
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222
338
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Formula (I)
wherein the metal center (i.e. M) is Fe.
Holtcamp(1) further teaches that each X1 and X2 (i.e. R) group are independently a substituted hydrocarbyl group that referring to a group in which at least one hydrogen atom of the hydrocarbyl radical has been substituted with at least one heteroatom (such as halogen, e.g., Br, Cl, F or I) or heteroatom-containing group (such as a functional group, e.g., —NR*2, —OR*, —SeR*, —TeR*, —PR*2, —AsR*2, —SbR*2, —SR*, —BR*2, —SiR*3, —GeR*3, —SnR*3, —PbR*3, —(CH2)q—SiR*3 (i.e. a hydrocarbylsilyl group), where q is 1 to 10, and each R* is independently a hydrocarbyl or halocarbyl radical (Holtcamp(1), [0019])
wherein a hydrocarbyl group may be used interchangeably to mean a group including hydrogen and carbon atoms only (Holtcamp(1), [0057])
wherein a hydrocarbyl can be a C1-C100 radical that may be linear, branched, cyclic aromatic, or cyclic non-aromatic (Holtcamp(1), [0057]).
Holtcamp(1) further teaches that L is a tridentate ligand (see Formula (I) above) (Holtcamp(1), [0011])
wherein one ligand is bound (i.e. x is equal to 1).
11. Regarding claim 4, X1 and X2 (i.e. R) group is independently a substituted hydrocarbyl wherein a hydrocarbyl can be a C1-C100 radical that may be linear, branched, cyclic aromatic, or cyclic non-aromatic (Holtcamp(1), [0057]). Holtcamp(I) further teaches examples of such hydrocarbyl groups may include groups such as methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl, pentyl, iso-amyl, hexyl, octyl cyclopropyl, cyclobutyl, cyclopentyl, cyclohexyl, cyclooctyl, and aryl groups, such as phenyl, benzyl, naphthyl (Holtcamp(1), [0057]).
12. Regarding claim 5, X1 and X2 (i.e. R) can be any suitable silane, such as (trialkylsilyl)C1-C20 alkyl-, (trialkylsilyl)C1-C10 alkyl-, (trialkylsilyl)C1-C5 alkyl- (Holtcamp(1), [0094])
wherein specific examples include X1 and X2 independently as (trimethylsilyl)methyl- (i.e. CH2SiMe3) (Holtcamp(1), [0094]).
Holtcamp(1) further teaches X1 and X2 (i.e. R) group are independently a substituted hydrocarbyl group (Holtcamp(1), [0019])
wherein a hydrocarbyl group may be used interchangeably to mean a group including hydrogen and carbon atoms only (Holtcamp(1), [0057])
wherein a hydrocarbyl can be a C1-C100 radical that may be linear, branched, cyclic aromatic, or cyclic non-aromatic (Holtcamp(1), [0057]).
Holtcamp(1) further teaches examples of alkyl groups that include methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl, pentyl, iso-amyl, hexyl, octyl cyclopropyl, cyclobutyl, cyclopentyl, cyclohexyl, cyclooctyl, phenyl, benzyl, and naphthyl groups (Holtcamp(1), [0057]).
13. Regarding claim 6, Holtcamp(1) teaches groups R6- and R12 (i.e. R’) and groups R7 and R11 (i.e. R”) (Holtcamp(1), [0075]);
wherein R6, R7, R11, and R12 is independently hydrogen, C1-C22 alkyl, C2-C22 alkenyl, C6-C22 aryl (Holtcamp(1), [0075]);
wherein arylalkyl groups include alkyl has from 1 to 10 carbon atoms and aryl has from 6 to 20 carbon atom (Holtcamp(1), [0075]).
Holtcamp(1) further teaches examples of R6- and R12 (i.e. R’) and groups R7 and R11 (i.e. R”) include hydrogen, methyl, ethyl, propyl, butyl, pentyl, hexyl, heptyl, octyl, nonyl, decyl, undecyl, dodecyl, phenyl, substituted phenyl, biphenyl groups or isomers thereof (Holtcamp(1), [0092]).
14. Regarding claim 7, Holtcamp(1) further teaches E1, E2, and E3 in Formula (I) that are independently carbon nitrogen or phosphorus
wherein when E1, E2, and E3 are phosphorus it is a phosphorus-containing ligand.
15. Regarding claim 8, Holtcamp(1) further teaches the support material (i.e. solid support) can be an inorganic oxide (i.e. solid oxide) in a finely divided form (Holtcamp(1), [0140])
wherein suitable inorganic oxide materials may include groups 2, 4, 13, and 14 metal oxides, such as silica, alumina, and mixtures thereof (Holtcamp(1), [0140]).
Holtcamp(1) further teaches other inorganic oxides may be employed either alone or in combination with the silica, or alumina can be magnesia, titania, zirconia (Holtcamp(1), [0140]).
Holtcamp(1) further teaches suitable supports (i.e. solid support) comprising inorganic oxides (i.e. solid oxide) include magnesia, titania, zirconia, montmorillonite, phyllosilicate, zeolites, talc, clays (Holtcamp(1), [0140]).
16. Regarding claim 10, Holtcamp(1) further teaches a synthesis of (E)-N-(2-chloro-4,6-dimethylphenyl)-1-(6-((E)-1-(mesitylimino)ethyl)pyridin-2-yl)ethan-1-imine iron-silylneopentyl (Catalyst 1) (Holtcamp(1), [0205]) corresponding to the structure in the formula below (Holtcamp(1), [0096]);
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160
275
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Greyscale
Structure of Catalyst 1
wherein the molecular weight of catalyst 1 is 648.26 g/mol and the atomic mass of Fe is 55.85 g/mol;
wherein the calculated molecular weight % Fe is (55.85 / 648.26) x 100 = 8.62% based on the weight of catalyst 1, which falls within the recited range.
Holtcamp(1) further teaches catalyst 1 is supported (Holtcamp(1), [0209]).
Claim Rejections - 35 USC § 103
17. 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.
18. 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.
19. 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.
20. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Holtcamp(1) as applied to claim 1 above, and further in view of Holtcamp et al. (US 20190144577 A1) (Holtcamp(2)).
21. Regarding claim 9, Holtcamp(1) further teaches all of claim 1 with a solid support. However, Holtcamp(1) does not teach that the solid support comprises a chemically- treated solid oxide comprising fluorided alumina, chlorided alumina, bromided alumina, sulfated alumina, fluorided silica-alumina, chlorided silica-alumina, bromided silica-alumina, sulfated silica-alumina, fluorided silica-zirconia, chlorided silica-zirconia, bromided silica-zirconia, sulfated silica-zirconia, fluorided silica-titania, fluorided silica-coated alumina, fluorided- chlorided silica-coated alumina, sulfated silica-coated alumina, phosphated silica-coated alumina, or any combination thereof.
With respect to the difference, Holtcamp(2) teaches an iron tridentate (Holtcamp(2), Title) transition metal catalyst contacting with a support material (Holtcamp(2), [0159])
wherein the support material is treated with an electron-withdrawing component such as anions (Holtcamp(2), [0164]).
Holtcamp(2) further teaches that the electron-withdrawing anions can be sulfate, bisulfate, fluoride, chloride, bromide, iodide, fluorosulfate, fluoroborate, phosphate, fluorophosphate, trifluoroacetate, triflate, fluorozirconate, fluorotitanate, phospho-tungstate, or mixtures thereof (Holtcamp(2), [0164])
wherein examples of the support material include fluorided alumina, chlorided alumina, bromided alumina, sulfated alumina, fluorided silica-alumina, chlorided silica-alumina, bromided silica-alumina, sulfated silica-alumina, fluorided silica-zirconia, chlorided silica-zirconia, bromided silica-zirconia, sulfated silica-zirconia, fluorided silica-titania, fluorided silica-coated alumina, sulfated silica-coated alumina, phosphated silica-coated alumina that are chemically-treated solid oxides (Holtcamp(2), [0165]).
Holtcamp(2) expressly teaches that treating the support material increases the Lewis or Brønsted acidity of the support material (Holtcamp(2), [0164])
wherein combinations of one or more different electron-withdrawing anions, in varying proportions, can be used to tailor the specific acidity of the support material to a desired level (Holtcamp, [0167]) with a catalyst activator-support (Holtcamp(2), [0165]).
Holtcamp(1) and Holtcamp(2) are analogous art as they are all drawn to transition metal catalysts for polymerization on a support.
In light of the motivation for tailoring the specific acidity of the support material as disclosed by Holtcamp(2), it therefore would have been obvious to one of ordinary skill in the art to modify supported catalyst of Holtcamp(1) to have a specific acidity of the support material with a catalyst activator-support, and thereby arrive at the claimed invention.
22 Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Holtcamp(1).
23. Regarding claim 11, Holtcamp(1) further teaches a catalyst system (i.e. supported catalyst) comprising a transition metal compound and largely a support material (Holtcamp(1), [0030]);
wherein the support material has a pore volume from about 0.1 cm3/g to about 4.0 cm3/g (Holtcamp(1), [0141]), which overlaps with the recited range;
wherein the support material has an average particle size of from about 5 μm to about 500 μm (Holtcamp(1), [0141]), which encompasses the claimed range;
wherein the support material has a surface area of from about 10 m2/g to about 700 m2/g (Holtcamp(1), [0141]).
Although there is no disclosure that the test method is conformity with BET surface area, given that the Holtcamp(1) discloses surface area as the presently claimed and absent evidence criticality how the BET surface area is measured, it is an examiner's position that surface area disclosed by Holtcamp(1) to meet the claim limitation.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
24. Regarding claim 12, Holtcamp(1) further teaches a support material (Holtcamp(1), [0030]);
wherein the support material has a pore volume from about 0.1 cm3/g to about 4.0 cm3/g (Holtcamp(1), [0141]), which overlaps with the recited range;
wherein the support material has an average particle size of from about 5 μm to about 500 μm (Holtcamp(1), [0141]), which encompasses the claimed range;
wherein the support material has a total BET surface area of from about 10 m2/g to about 700 m2/g (Holtcamp(1), [0141]).
Although there is no disclosure that the test method is conformity with BET surface area, given that the Holtcamp(1) discloses surface area as the presently claimed and absent evidence criticality how the BET surface area is measured, it is an examiner's position that surface area disclosed by Holtcamp(1) to meet the claim limitation.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Remy Frederic Lalisse whose telephone number is (571)272-1819. The examiner can normally be reached Monday - Friday, 10:00 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.L./Examiner, Art Unit 1732
/KELING ZHANG/Primary Examiner, Art Unit 1732