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 1-20 of Y. Shirakami et al., US 18/470,063 (Sep. 19, 2023) are pending. Claims 13-20, to non-elected invention of Group (II), are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 1-12 are under examination on the merits and are rejected.
Election/Restrictions
Applicant elected Group (I), claims 1-12, drawn to a polyolefin resin, without traverse in the Reply to Restriction Requirement filed on May 8, 2026. Claims 13-20, to non-elected invention of Group (II) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is made FINAL.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112, the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
The Claim Limitation of “melt tension (MT)” Is Unclear
Claims 1-12 are rejected pursuant to 35 U.S.C. 112(b), as indefinite because the claim 1 limitation of “melt tension” or “MT” is a manipulatable value under the general recitations of claim 1 that cannot be unambiguously determined. MPEP § 2173.05(g).
Claim 1 recites “melt tension” as bolded below:
1. A polyolefin resin satisfying Expression 1 below,
[Expression 1]
MT > 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
wherein in Expression 1 above,
MT is a melt tension (gf) of the polyolefin resin,
SR is the ratio of melt flow index of a polyolefin resin (SR
MIF/MIE),
MIE is a melt flow index (g/10 min) measured according to ASTM D1238 (190 °C, 2.16 kg) , and
MIF is a highload melt flow index (g/10 min) measured according to ASTM D1238 (190°C, 21.6 kg).
The subject functional claim limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used. MPEP § 2173.05(g). The use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. MPEP § 2173.05(g).
The art teaches that polymer “melt tension” (also referred to in the art as melt strength) is recognized as an important processing parameter. M. Lau et al., 38 Polymer Engineering and Science, 1915-1923 (1998) (“Lau”) (see page 1915, col. 2); see also, S. Muke et al., 50 Polymer International, 515-523 (2001). Micic teaches that
An important parameter in processing polyethylene and polyethylene blends is the “melt strength”. In industry, the term “melt strength” is used to describe the behaviour of a polymer melt in processes where the predominant deformation is elongation, i.e. drawing and stretching of the melt. The melt must have sufficient strength to withstand the high strain arising from the drawing device, and if the tension within the melt exceeds the melt rupture stress, then the melt will tear. Melt strength is defined as the force at the break point and is indicative of the relative extensional performance of polymer melts. It is inversely related to the draw-down or extensibility of the melt, i.e. the ability of the melt to be drawn down to thin gauges.
P. Micic et al., 1 Intern. Polymer Processing XI, 14-20 (1996) (see page 14, col. 2) (emphasis added). Micic teaches that melt strength has shortcomings as a well-defined rheological parameter.
It is obvious that the melt strength test does not produce a well defined rheological parameter that could be used as a material characteristic in elongational flow. Apart from the varying temperature along the strand as it cools and the non-uniform stress and drawing, there is a significant influence of preshearing on the polymer’s subsequent extensional response. Polymers are materials with memory of what has been done to them prior to the new deformation. Their extensional properties change tremendously depending on the amount of shear in the extruder prior to extension.
Micic at page 16, col. 1 (emphasis added). Similarly, Lau teaches that the melt strength of a polymer is affected by several parameters such as melt temperature, extrusion rate, ambient temperature and the distance between the capillary die and melt strength tester. Lau at page 1917 (col. 1). M. Wagner et al., 36 Polymer Engineering and Science, 925-935 (1996) (“Wagner”) teaches that in general, the measured tensile force F depends on the properties of the polymer melt, the geometry of die entrance, die land and spinline, as well as the processing conditions (especially temperature T, extrusion pressure p, mass flow rate or die exit velocity vo, and drawdown velocity v. Wagner at paragraph bridging pages 926-927; see also, R. Gupta et al., Journal of Polymer Engineering, 89-105 (2007) (see page 89, Abstract: “melt strength of highly elastic PP is sensitive to changes in die geometry and that die diameter has greater effect on melt strength than on the length of the die”)
Here. claim 1 is unclear because it does not specify any of the critical processing condition necessary to arrive as single, unambiguous value for melt tension.1 The claim 1 melt tension recitation is therefore not a single unambiguous value because it can vary for the same polyolefin resin depending upon the processing conditions used for its determination. Thus, one of ordinary skill cannot unambiguously conclude whether or not the claim 1 equation of:
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
is in fact met by a prior art polyolefin resin or an alleged infringing resin should claim 1 be patented. MPEP § 2173.05(g). In sum, absent a clear experimental definition in claim 1, the melt tension value for any particular polyolefin resin is variable/manipulatable. MPEP § 2173.05(g). Dependent claims 2-12 do not cure the issue. Dependent claims 2-12 do not cure the issue.
Claim Rejections 35 U.S.C. 112(a) – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
For an originally filed claim, 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.2 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. MPEP § 2163(II)(A)(3)(a)(ii). A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The § 112(a) rejection
Claims 1-12 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because Applicant is not in possession of the full scope of the claimed genera of polyolefin resins as of the effective filing date.
Claims 1, 7, 11 and 12 recite as follows:
1. A polyolefin resin satisfying Expression 1 below,
[Expression 1]
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
wherein in Expression 1 above,
MT is a melt tension (gf) of the polyolefin resin,
SR is the ratio of melt flow index of a polyolefin resin (SR
MIF/MIE),
MIE is a melt flow index (g/10 min) measured according to ASTM D1238 (190 °C, 2.16 kg) , and
MIF is a highload melt flow index (g/10 min) measured according to ASTM D1238 (190°C, 21.6 kg).
7. The polyolefin resin of claim 1, wherein in the polyolefin resin, the number of long chain branches per 1,000,000 carbon atoms (LCB/106 carbon atoms) measured under a condition of 0.01 rad/s shear viscosity is in a range of 0.1 to 4. 4.
11. The polyolefin resin of claim 10, wherein
a ratio (Mw/Mn) of a weight average molecular weight (Mw) and a number average molecular weight (Mn) measured by gel permeation chromatography is in a range of 2. 0 to 10.0 and
a ratio (Mz/Mw) of a Z-average molecular weight (Mz) and the weight average molecular weight (Mw) measured chromatography is in a range of 1.0 to 5.0.
12. The polyolefin resin of claim 1, wherein
the polyolefin resin has a comonomer orthogonal index (COI) value of 2 to 10 calculated by Expression 2 below,
[Expression 2]
COI = (number of SCBs in Mz - number of SCBs in Mn) / (log Mz - log Mn)
wherein in Expression 2 above, the number of SCBs in Mz is an average number of side branches derived from comonomers per 1,000 carbon atoms in a Z-average molecular weight (Mz),
the number of SCBs in Mn is the number of side branches derived from comonomers per 1,000 carbon atoms in a number- average molecular weight (Mn), and logMz and logMn are log values of Mz and Mn, respectively.
Here claims 1, 7, 11 and 12 (and their dependents) define the invention by functional language specifying the desired result of “polyolefin resins” that satisfy the claimed equations and numerical values in terms of the claim 1 expression MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, and the other dependent claimed numerical values relating to long chain branching, density, melt flow index (MIE), high-load melt flow index (MIF), ratios (Mw/Mn) and (Mz/Mw), and the comonomer orthogonal index (COI) value. But the disclosure only describes narrow species, with no evidence that the full genera are contemplated or achievable. MPEP § 2163.03(V). The disclosure in combination with the art fails to sufficiently teach how the full scope of polyolefin resins meeting the claimed numerical values is achieved. MPEP § 2163.03(V). Rather the disclosure teaches how the claimed numerical values are achieved for a narrow set of three species, prepared by a specific catalyst system.
Guidance the Specification Body
The specification is directed to preparation of linear low-density polyethylene copolymer (LLDPE) having excellent processability (can melt, flow and by shaped into products), toughness, and bubble stability (the ability of the extruded, molten polymer tube to maintain a uniform shape and size during blown film extrusion). Specification at page 1; see also, O. Olabisi et al., Polyolefins, in Handbook of Thermoplastics, 1-52 (2016); R. Kolarik et al., 56 International Journal of Heat and Mass Transfer, 694-708 (2013); US 6,930,137 (2005).
The specification teaches that linear low-density polyethylene copolymers (LLDPEs) are produced by copolymerizing ethylene and alpha-olefins (e.g., 1- butene, 1-hexene, and 1-octene) at low pressure using a polymerization catalyst, and it is a resin with a narrow molecular weight distribution and almost no long-chain branches (LCB). Specification at paragraph bridging pages 1-2.
The specification teaches that prior art single-active-site hafnium and zirconium metallocene catalysts give a narrow molecular weight distribution, and good physical properties, but the processability is poor; on the other hand, multi-site Ziegler-Natta catalysts which give a wide molecular weight distribution and good processability but poor physical properties. Specification at page 2, lines 14-20.
The specification teaches that long chain branching (LCB) give advantageous LLDPE bubble stability but there is a tradeoff because excessive LCB leads to lower toughness. Specification at page 3, lines 15-21.
The specification teaches that the claimed polyolefin resin may be prepared using a carrier supported metallocene catalyst composition in which a zirconium-based organometallic compound (Formula 1), a hafnium-based organometallic compound (Formula 2), and an aluminoxane-based compound are supported on a carrier. Specification at page 5, lines 1-5; Id. at page 25, lines 15-25.
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The specification teaches that with the disclosed catalyst composition, in an appropriate ratio, the most desirable level of long chain branching (LCB) can be obtained (with improved bubble stability), but use of either catalyst alone gives either too much or too little LCB. Specification at page 25, lines 15-25; Id. at page 33, lines 8-13. The specification teaches that aluminoxane-based compound serves as an activator or cocatalyst. Specification at page 26, lines 9-17. The specification teaches that the carrier may be at least one selected from the group consisting of silica, alumina, silica-alumina, clay, and modified clay. Specification at page 7, lines 6-8.
The specification teaches that the catalyst composition/combination has the following amounts of components on the carrier support: (1) aluminum (Al) derived from aluminoxane 5 to 30 wt%; (2) zirconium derived from the zirconium-based organometallic compound may be 0. 01 to 2 wt%; (3) hafnium derived from the hafnium-based organometallic compound may be 0.01 to 2 wt%, where the supported metallocene catalyst composition may be added in an amount of 0.01 to 0.005 parts by weight of the total monomers (ethylene+ alpha olefin). Specification at pages 34-35.
Guidance the Specification Working Examples
Specification supported catalyst Preparation Example 1 teaches that racemic-dimethylsilyl bis(tetrahydroindenyl) zirconium dichloride (organometallic compound 1) (CAS No. 126642-97-5); bis(n-propylcyclopentadienyl)hafnium dichloride (organometallic compound 2) (CAS No. 85722-06-1); and methylaluminoxane (MAO) in toluene were mixed to form a reaction solution and the support silica (SiO2, PD18048, PQ) was added, and the solid silica catalyst composition washed and dried to give a free-flowing solid powder supported-catalyst composition. Specification at pages 40-41. Preparation Examples 2-3 were conducted in the same manner as Example 1 except the support was calcined silica (SiO2, ES-70X, PQ). Preparation Example 4 was conducted in the manner of Example 1 but no hafnium component was included. Specification at page 41, lines 14-17. The Examiner summarizes specification catalyst composition Preparation Examples 1-4 as follows.
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Specification supported catalyst Preparation Example 5 (this catalyst does not produce a claimed polyolefin resin in combination with the same hafnium catalyst) teaches preparation in a similar manner but with a different zirconium catalyst (aromatic groups not linked by group T as required by Formula 1) and using including Ethanox330, which the Examiner summarizes as follows.
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In polyolefin resin Preparation Example 1, the specification teaches preparation of LLDPE using catalyst 1, where liquid 1-hexene and ethylene and hydrogen as gas were mixed together in a pipe and injected into a gas line and the prepolymer3 was supplied in an amount of about 2 to 5 wt% with respect to the total weight of the main polymerization composition. Specification at pages 43-44.
Polyolefin Preparation Examples 2 and 3, involve a similar preparation of LLDPE but using catalyst 2 [and presumably catalyst 3], in a different prepolymerization-reactor setup (two prepolymerization reactors). Specification at pages 46-47.
Comparative Example 1 was performed in the same manner as Preparation Example 1, but using catalyst 4 (i.e., dimethylsilyl bis(tetrahydroindenyl) zirconium dichloride, alone). Specification at page 44, line 19-22.
Comparative Example 2 was performed in the as Preparation Example 1, but using catalyst 5. Specification at page 44, line 19-22.
Comparative Examples 3 and 4 were performed in the same manner as Preparation Example 2, but using catalyst 3. Specification at page 47, lines 13-17.
Below, the Examiner summarizes the MT, SR, and MIE data taken from specification Tables 1-5.
Example 1
(catalyst 1)
Example 2
(catalyst 2)
Example 3
(catalyst 3)
Comparative Example 1
(catalyst 4)
Comparative Example 2
(catalyst 5)
Comparative Example 3
(catalyst 3)
Comparative Example 4
(catalyst 3)
MT
4.12
4.3
4.4
3.37
1.4
3.3
3.2
SR
53
39.0
36.7
44.3
20
53.1
50
MIE
0.48
0.59
0.84
0.55
0.83
0.52
0.51
The Examiner finds that specification Examples 1-3 meet the claim 1 equation MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, whereas Comparative Examples 1-4 do not. Notably, catalyst system 5, where the zirconium metallocene lacks the Formula 1 variable T linking group does not perform per the claim 1 equation MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97.
The specification teaches that referring to Tables 1 to 6, the polyolefin films of Preparation Examples 1 to 3 (catalysts 1 and 2) have higher melt tension than the calculated value of Expression (1) and thus have excellent bubble stability, whereas the polyolefin films of the Comparative Examples 1 to 7 have lower melt tension than the calculated value of Expression (1) and thus have poor bubble stability. Specification at page 51, lines 1-10.
Guidance in the Art
Pertinent art is discussed below in the § 102 rejections. L. Cady et al., US 6,462,161 (2002) and V. Ker et al., CA 2,780,508 (2012) (“Ker”) disclose particular metallocene catalyst systems that result in polyolefin resins meeting the instantly claimed numerical values. The working Examples of these references (as discussed below), as with those of the instant specification’s, are generally limited to copolymerization of ethylene and typical alpha-olefin monomers, such as 1-hexene, with particular metallocene catalyst systems in order to achieve polyolefin resin species having the claimed numerical values. Neither Ker nor Cady, nor any other art filed by Applicant or reviewed during Examiner searches discloses a well-known correlation between the catalyst or the polymerization reaction conditions (or combinations of these) permitting one of skill to recognize Applicant’s possession of the full scope of those species of polyolefins (from within the large genus of polyolefins) having the particularly claimed numerical values.
Claim Breadth
Claim breath is relevant to the instant § 112(a) written description rejection. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)).
Here the genus of polyolefin resins is vast. The polyolefin resin genus of linear low-density polyethylene (LLDPE) is produced by copolymerizing ethylene and alpha-olefins in a particular manner. Specification at page 1, lines 22-23. The possible structural variations (e.g., molecular weight distributions, long- and short-chain branching, etc.) of the resulting polyolefin are vast and heavily dependent upon catalyst identity and polymerization conditions. Specification at pages 1-3; see also, O. Olabisi, "Polyolefins." Handbook of Thermoplastics, 1-52 (2016). The polyolefin structure results in vast functional differences such as melt flow and processability. Id.
Predictability
The specification teaches that significant unpredictability is baked into achieving polyolefin resins having the claimed numerical values.
As discussed above, specification Examples 1-3, directed to copolymerization of ethylene and 1-hexene with the catalyst system of dimethylsilyl bis(tetrahydroindenyl) zirconium dichloride (organometallic compound 1) (CAS No. 126642-97-5) and bis(n-propylcyclopentadienyl)hafnium dichloride (organometallic compound 2) (CAS No. 85722-06-1), achieved polyolefin resins that meet the claim 1 equation MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97. On the other hand, comparative Examples 1-4 (directed to similar co-polymerizations) do not meet the claim 1 equation. Thus, the specification teaches that simply varying the catalyst identity from one zirconium metallocene to another, using the disclosed zirconium metallocene in the absence of a hafnium counterpart, or even varying the relative amounts of the zirconium and hafnium metallocene catalysts, takes the resulting polyolefin resin outside the claimed numerical values. The specification explains that to achieve the claimed values (with respect to long chain branching, which in turn affect melt flow (MIF/MIE)), the metallocene catalysts must be specifically and correctly chosen. Specification at page 25, lines 15-25.
Original Claims 1-12 Lack Adequate Written Description Support
Original claims 1-12 lack adequate written description support because the specification, at the effective filing date,
Here claims 1, 7, 11 and 12 (and their dependents) define the invention by functional language specifying the desired numerical parameters of the “polyolefin resins” but the disclosure only describes only three polyolefin resin species, with no evidence that the full genera are contemplated or achievable. MPEP § 2163.03(V). That is, the specification discloses only the following three species of polyolefin resin (Examples 1-3) that the meet the claimed numerical parameters, with a single species of catalyst system.
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Polyolefin species
Example 1
(catalyst 1)
Example 2
(catalyst 2)
Example 3
(catalyst 3)
MT(gf)
4.12
4.3
4.4
SR
53
39.0
36.7
MIE (g/10 min)
0.48
0.59
0.84
These three disclosed polyolefin resin species (all having close MT, SR, and MIT values) are clearly not representative of the vastly claimed scope of polyolefin resins, which encompasses diverse structural variability (e.g., molecular weight distributions, long- and short-chain branching, etc.). When there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. MPEP § 2163(II)(A)(3)(a)(ii).
The disclosure in combination with the art fails to sufficiently teach how the full scope of polyolefin resins meeting the claimed numerical values is achieved, because the required disclosed or art known correlations are lacking. MPEP § 2163.03(V). Absent a known or disclosed correlation between catalyst system and the claim 1 expression MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, and the other claimed numerical parameters relating to long chain branching, density, melt flow index (MIE), high-load melt flow index (MIF), molecular weight ratios (Mw/Mn) and (Mz/Mw), and the comonomer orthogonal index (COI) value, one of ordinary skill cannot recognize passion of the full claim scope.
Claim Rejections - 35 USC § 112, First Paragraph, Scope of Enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1-12 are rejected under 35 U.S.C. 112(a) because the specification, while enabling one of skill in the art to practice:
A method of making a polyolefin resin satisfying Expression 1 below,
[Expression 1]
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
wherein in Expression 1 above,
MT is a melt tension (gf) of the polyolefin resin,
SR is the ratio of melt flow index of a polyolefin resin (SR
MIF/MIE),
MIE is a melt flow index (g/10 min) measured according to ASTM D1238 (190 °C, 2.16 kg) , and
MIF is a highload melt flow index (g/10 min) measured according to ASTM D1238 (190°C, 21. 6 kg)
comprising polymerizing ethylene with an alpha-olefin in the presence of a supported catalyst system comprising dimethylsilyl bis(tetrahydroindenyl) zirconium dichloride and bis(n-propylcyclopentadienyl)hafnium dichloride,
does not reasonably enable one of skill in the art to make and use the full scope of claims 1-12 directed to any polyolefin resin that satisfies the claim 1 expression MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, and the other dependent claimed numerical values relating to long chain branching, density, melt flow index (MIE), high-load melt flow index (MIF), ratios (Mw/Mn) and (Mz/Mw), and the comonomer orthogonal index (COI) value.
Factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue” include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
MPEP. § 2164.01(a); In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); In re Wright, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993).
Breadth of the Claims
Claim breadth is discussed above.
State of the Prior Art/Level of Predictability in the Art
Predictability is discussed above.
Guidance in the Specification and Working Examples
Guidance in the specification is discussed above.
The Quantity of Experimentation Needed Is Undue
In the current case, claims 1-12 are properly rejected under 35 U.S.C. § 112(a), for lack of enablement because upon balancing the above-discussed factors, the specification at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of claims 1, 7, 11 and 12 (or their dependents) which recite as follows:
1. A polyolefin resin satisfying Expression 1 below,
[Expression 1]
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
wherein in Expression 1 above,
MT is a melt tension (gf) of the polyolefin resin,
SR is the ratio of melt flow index of a polyolefin resin (SR
MIF/MIE),
MIE is a melt flow index (g/10 min) measured according to ASTM D1238 (190 °C, 2.16 kg) , and
MIF is a highload melt flow index (g/10 min) measured according to ASTM D1238 (190°C, 21.6 kg).
7. The polyolefin resin of claim 1, wherein in the polyolefin resin, the number of long chain branches per 1,000,000 carbon atoms (LCB/106 carbon atoms) measured under a condition of 0.01 rad/s shear viscosity is in a range of 0.1 to 4. 4.
11. The polyolefin resin of claim 10, wherein
a ratio (Mw/Mn) of a weight average molecular weight (Mw) and a number average molecular weight (Mn) measured by gel permeation chromatography is in a range of 2. 0 to 10.0 and
a ratio (Mz/Mw) of a Z-average molecular weight (Mz) and the weight average molecular weight (Mw) measured chromatography is in a range of 1.0 to 5.0.
12. The polyolefin resin of claim 1, wherein
the polyolefin resin has a comonomer orthogonal index (COI) value of 2 to 10 calculated by Expression 2 below,
[Expression 2]
COI = (number of SCBs in Mz - number of SCBs in Mn) / (log Mz - log Mn)
wherein in Expression 2 above, the number of SCBs in Mz is an average number of side branches derived from comonomers per 1,000 carbon atoms in a Z-average molecular weight (Mz),
the number of SCBs in Mn is the number of side branches derived from comonomers per 1,000 carbon atoms in a number- average molecular weight (Mn), and
logMz and logMn are log values of Mz and Mn, respectively.
without undue experimentation. The claims are broadly directed any polyolefin resin which satisfies the claimed numerical parameters.
The ability of one of skill in the art to make and use the full scope of the subject claims is considered undue in primarily in view of the following Wands factor: lack of guidance provided to one of skill in the art – either in the specification or art of record -- regarding catalyst and polymerization conditions required to make the claimed polyolefin resins having the claimed numerical parameters.
The specification discloses how to prepare only three species of polyolefin resin (Examples 1-3) that the meet the claimed numerical parameters, with a single species of catalyst system.
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Polyolefin species
Example 1
(catalyst 1)
Example 2
(catalyst 2)
Example 3
(catalyst 3)
MT(gf)
4.12
4.3
4.4
SR
53
39.0
36.7
MIE (g/10 min)
0.48
0.59
0.84
Neither the specification nor the art of record teaches how to extend the instantly disclosed syntheses to other polyolefin resin species falling within the claimed numerical ranges (e.g., the expression MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, and values relating to long chain branching, density, melt flow index (MIE), high-load melt flow index (MIF), ratios (Mw/Mn) and (Mz/Mw), and the comonomer orthogonal index (COI) value).
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1) Rejection over S. Matsuura et al., EP 1632505 (2016) (“Matsuura”)
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by S. Matsuura et al., EP 1632505 (2016) (“Matsuura”).
Matsuura teaches that the melt flow rate is [MFR2] under a load of 2.16 kg at 190°C. Matsuura at page 6, [0028]; Id. at page 27, [0144]. These are the same units that claim 1 recites for MIE. Thus, Matsuura’s variable MFR2 is the same as claim 1 variable MIE (melt flow index). Matsuura teaches that the melt flow rate is [MFR20 (g/10 min)] at 190°C under a loading of 21.6 kg. Matsuura at page 6, [0028]; Id. at page 27, [0144]. Thus, Matsuura’s variable MFR20 is the same as claim 1 variable MIF (high-load melt flow index). Matsuura teaches that the melt flow rates (MFR2 and MFR20) were performed according to JISK7210, whereas claim 1 requires these measurements according to ATMD1238. However, these two procedures are considered equivalent in the art.4 See e.g., US 5,563,194 at col. 4, lines 54-60 (indicating close correspondence between the two methods); US 5,464,891 at col. 6, lines 48-50; US 5,219,968 at col. 8, lines 5-10; US 2010/0204406, at page 5, [0080] (2010).
With respect to measurement of melt tension (MT) Matsuura teaches that:
[0145] Melt tension (MT) is determined by measuring the stress upon stretching a molten ethylene-based polymer at a constant speed. That is, the measurement was conducted using a MT measuring machine manufactured by Toyo Seiki Seisaku-sho, Ltd., under conditions where the resin temperature was 190°C, the extrusion speed was 15 mm/min., the take-up speed was 7.85 m/min., the nozzle diameter was 2.09 mmϕ, and the nozzle length was 8 mm.
Matsuura at page 27, [0145].
Since claim 1 defines SR as MIF/MIE, the Examiner finds that the claim 1 equation MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97 can be simplified as follows:
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In Example 1 Matsuura teaches copolymerization of ethylene and 1-hexene using catalyst P [i.e., zirconium compound 6 supported on silica] with cocatalyst triisobutyl aluminum to produce a polyolefin resin. Matsuura at page 29, lines 34-41. The physical properties of the ethylene-based polymers synthesized in Matsuura’s Examples are shown in Table 3. Matsuura at page 32.
Per Table 3, Matsuura Example 1 teaches a MFR2 (same as the claim 1 MIE) of 0.37 g/10 min and a MFR20 of 66 g/10 min (same as the claim 1 MFI).
Thus, Matsuura’s Example 1 value of:
[0.01 [Symbol font/0xB4] (SR/MIE) + 2.97] is 7.79.
Matsuura’s Example 1 value of MT is 9g (grams force), which are the same units per claim 1 (gf or grams force). Matsuura’s MT value of 9g is greater than 7.79, so Matsuura Example 1 discloses a polyolefin resin that meets each and every limitation of claim 1.
Dependent claims 2-6 are anticipated for the following reasons. These claims recite additional product-by-process limitations regarding how the polyolefin resin is prepared. MPEP § 2113(I). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). For example, claim 2 recites:
2. The polyolefin resin of claim 1, wherein the polyolefin resin is prepared using a supported metallocene catalyst composition in which a zirconium-based organometallic compound, a hafnium-based organometallic compound, and an aluminoxane-based compound are supported on a carrier.
These product-by-process limitations cannot distinguish over the cited art because it is the product itself that is compared.
§ 102(a)(1)/(2) Rejection over L. Cady et al., US 6,462,161 (2002) (“Cady”)
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by L. Cady et al., US 6,462,161 (2002) (“Cady”).
Cady teaches polyolefin copolymer composition produced with a catalyst having a metallocene complex in a single reactor in a process for the polymerization of an α-olefin monomer with one or more olefin comonomers, the composition having long chain branches along the polymer backbone and a molecular weight maximum which occurs in that 50 percent by weight of the composition which has the highest weight percent comonomer content. Cady at col. 2, lines 50-58.
Each of Cady working Examples 100-107 anticipates claim 1. In working Examples 100-107, Cady teaches preparation of polyolefin resins by copolymerizing ethylene and n-hexene with a supported titanium or zirconium metallocene catalyst, in a continuous fluidized bed reactor. Cady at col.32, line 55 through col. 34, line 45. Cady presents the characterization data in Table 1A, which is reproduced in part below.
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Cady at col. 33, Table 1A. Cady teaches that the above I2.16 and I21.6 values were determined by ASTM D-1238 and the density by ASTM D-1505. Here, Cady’s variable I(2.16) is the same as claim 1 variable MIE (melt flow index). And Cady’s variable I(21.6) is the same as claim 1 variable MIF (high-load melt flow index). In Cady’s units of dg/min, the prefix "deci" (d) means one-tenth and since the time is converted from 1 minute to 10 minutes, these two factors cancel each other out. Therefore, Cady’s numerical values in dg/min are the same as the claim 1 values in g/10 min.
The equation of claim 1, MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97, this equation can be written/simplified as follows:
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For each of Cady’s Example 100-107, the value of the right side of the claim 1 equation [i.e., the value of 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97] is calculated by the Examiner as shown in the table below:
Cady Example
Examiner Calculated Value of the Claim 1 Equation Half 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
Ex100
3.3
Ex101
3.3
Ex102
3.04
Ex103
3.05
Ex104
3.11
Ex105
3.2
Ex106
3.19
Ex107
3.23
The issue is whether Cady’s melt tension (MT) is greater than the above table values so as to meet claim 1 equation 1:
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
In this regard, Cady teaches that the compositions of this invention have desirable properties and can be easily processed into a film or other article of manufacture which has a melt strength of greater than 4 cN. Cady at col. 5, lines 5-8. Cady states the following with respect to the working Examples:
Films and other articles of manufacture produced with the 50 polyolefin copolymer compositions of this invention desirably have a melt strength of greater than 4 CNN, preferably equal to or greater than 7, more preferably equal to or greater than 9.
Cady at col. 36, lines 60-64. Note that for comparison to claim 1, which claims melt tension in units gf (grams force), Cady’s unit 1 cN ≈ 1.0197 gf; so units of cN are essentially interchangeable with units of gf. Thus, each polyolefin resin of Cady Examples 100-107 is asserted by the Examiner to meet the claim 1 formula:
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97
and each therefore anticipates claim 1. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Alternatively, Cady Example 3 anticipates claim 1. In working Example 3, Cady teaches preparation of polyolefin resin by copolymerizing ethylene and n-hexene with a supported titanium metallocene catalyst, in a fluidized bed reactor. Cady at col. 28, line 59 through col. 30, line 24.
Cady teaches that the obtained polyolefin resin has the following properties:
Properties of the Example 3, Polyolefin Resin
I(2.16) dg/min*
(same as claim 1 MIE)
I(21.6) dg/min*
(same as claim 1 MIF)
Density g/cc*
Melt Strength, cN#
(same as claim 1 MT)
0.91
29.1
0.912
7
*See Cady Table 1, at col. 29.
#See Cady Table 3, at col. 36 (Melt Strength at 190° C and 120 mm/s velocity).
Putting these numbers into the claim 1 equation:
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97]
the following relationship is obtained 7 (MT) > 3.3. Cady Example 3 therefore anticipates claim 1.
Dependent claims 2-6 are anticipated by the polyolefin resin of any of Cady Examples 3 or 100-107 for the following reasons. These claims recite additional product-by-process limitations regarding how the polyolefin resin is prepared. MPEP § 2113(I). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). These product-by-process limitations cannot distinguish over the cited art because it is the product itself that is compared.
Dependent claim 7 is anticipated for the following reasons. Claim 7 recites as follows:
7. The polyolefin resin of claim 1, wherein in the polyolefin resin, the number of long chain branches per 1,000,000 carbon atoms (LCB/106 carbon atoms) measured under a condition of 0.01 rad/s shear viscosity is in a range of 0.1 to 4. 4.
The specification teaches that long-chain branching in LLDPE is advantageous because entablement provides good bubble stability, but excessive long-chain branching leads to a problem of low toughness. Specification at page 3, lines 15-21.
Cady teaches that:
Long chain macromolecular α-olefins can be vinyl terminated polymeric remnants formed in situ during continuous solution polymerization reactions. Under suitable processing conditions such long chain macromolecular units may be polymerized into the polymer product along with ethylene and other short chain olefin monomers to give small quantities of long chain branching in the resulting polymer.
Cady at col. 20, lines 20-27. Cady does not specifically disclose the number of long chain branches per 1,000,000 carbon atoms for Examples 3 or 100-107. However, Cady teaches ranges of long chain branching that overlap with the claimed range; for instance, Cady teaches “preferably from about 0.01 to about 3 long chain branches per 1000 carbon atoms along the polymer backbone”. Cady at col. 26, lines 30-46. Cady teaches generally, that the empirical effect of the presence of long chain branching in the copolymers of this invention is manifested as enhanced theological properties which are indicated by higher flow activation energies, and greater I21/I2 than expected from the other structural properties of the compositions. Cady at col. 23, lines 54-59. Cady further teaches that the improved processability observed for the composition of Example 3 are due to the presence of long chain branching in the polymer. Cady at col. 35, lines 50-55. These factors are consistent with the assertion that Cady’s polyolefin resins of Examples 3 or 100-107 have the claim 7 range of long-chain branching, subject to Applicant’s rebuttal.5 MPEP § 2112(V)
Dependent claim 8 is anticipated by the polyolefin resin of any of Cady Examples 3 or 100-107 because the disclosed densities fall within the claimed range and Cady teaches that their densities fall within the claimed range and were determined by AST D1505.
The further limitations of claim 9 are clearly met by each of the polyolefin resin of Cady Examples 3 or 100-107.
§ 102(a)(1) Rejection over V. Ker et al., CA 2,780,508 (2012) (“Ker”)
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by V. Ker et al., CA 2,780,508 (2012) (“Ker”).
Ker teaches that a single phosphinimine catalyst can provide an ethylene copolymer having a multimodal comonomer distribution profile and medium molecular weight distribution when used in a single reactor. Ker at page 11. Ker teaches that the ethylene copolymer is made by a process for polymerizing ethylene and an alpha olefin having 3-8 carbon atoms in a single reactor in the presence of a polymerization catalyst system comprising a single transition metal catalyst, a support, and a catalyst activator; and wherein the single transition metal catalyst is a group 4 phosphinimine catalyst. Ker at page 12.
Significantly, Ker teaches the following polyolefin resin characteristics: a density of from 0.916 g/cc to 0.930 g/cc, a melt index (I2) of from 0.1 to 1.0 g/10min, and a melt flow ratio (I21/I2) of from 32 to 50. Kerr at pages 11-12.
In Inventive Example 1, Ker teaches that a silica supported catalyst [1-C6F5CH2-indenyl)((t-Bu)3P=N)TiCl2]/MAO was used in the continuous copolymerization of ethylene and 1-hexene to provide a polyolefin resin, where the polymer data for the resulting inventive resin 1 are provided in Ker Table 2. Ker at pages 70-72. The relevant portion of Ker Table 2 is reproduced below.
Relevant Values from Ker Table 2
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Ker at pages 76-78 (Table 2). Ker teaches that the above I2 and I21 values were determined by ASTM D-1238, at 190 °C, respectively at 2.16 and 21.6 kilogram weight. Ker at lines bridging pages 64-65. Here, Ker’s variable I2 is the same as claim 1 variable MIE (melt flow index). And Ker’s variable I21 is the same as claim 1 variable MIF (high-load melt flow index). Also note that for comparison to claim 1, which claims “melt tension” (synonymous with melt strength) in units gf (grams force), Ker’s unit 1 cN ≈ 1.0197 gf; so units of cN are essentially interchangeable with units of gf.
Putting Ker’s above Table 2 numbers into the claim 1 equation (where I21 is calculated by the Examiner to be 26.7 g/10 min):
MT> 0.01 [Symbol font/0xB4] (SR/MIE) + 2.97]
the following relationship is obtained 5.74 (MT) > 3.7. Ker’s polyolefin resin of Inventive Example 1 therefore anticipates claim 1.
Dependent claims 2-6 are anticipated by the polyolefin resin of any of Ker Inventive Example 1 for the following reasons. These claims recite additional product-by-process limitations regarding how the polyolefin resin is prepared. MPEP § 2113(I). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP § 2113(I). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP § 2113(I) (citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)). These product-by-process limitations cannot distinguish over the cited art because it is the product itself that is compared.
Dependent claim 7 is anticipated for the following reasons. Claim 7 recites as follows:
7. The polyolefin resin of claim 1, wherein in the polyolefin resin, the number of long chain branches per 1,000,000 carbon atoms (LCB/106 carbon atoms) measured under a condition of 0.01 rad/s shear viscosity is in a range of 0.1 to 4. 4.
The specification teaches that long-chain branching in LLDPE is advantageous because entablement provides good bubble stability, but excessive long-chain branching leads to a problem of low toughness. Specification at page 3, lines 15-21.
Ker does not disclose the number of long chain branches per 1,000,000 carbon atoms. With respect to long-chain branching, Ker teaches that
In terms of processability, the inventive resin 1 extrudes with a higher specific output rate at lower head pressure than unblended comparative resin 2 which has a lower melt flow ratio (see Table 3).
Inventive resin 1 has a similar specific output rate relative to comp. resin 3, but at lower extruder head pressure.
Comp. resin 4 is a melt blend comprising a linear low density resin LLDPE and 5 wt% of high pressure low density polyethylene (HPLDPE) resin which is known to impart improved processability to a LLDPE due to the presence of long chain branching.
Nevertheless, inventive resin 1 shows higher specific output even at lower extruder head pressure than comparative resin 4 (see Table 3).
Ker at pages 87-88. The resin of Ker Inventive Example 1 is prepared from copolymerization of ethylene and 1-hexane; the same reaction as the specification working examples. Specification at pages 43-44. Further, Ker’s polyolefin resin of Inventive Example 1 shows good processability and an Mw/Mn value of 4.78, within the instant specification’s preferred range of 2.5 to 5. Specification at page 8, line 1. Ker’s polyolefin resin of Inventive Example 1 also meets the instant claim limitations respecting MIE, MIF, MT, SR, Mw/Mn and density. In this regard, instant claims 1-6 and 8-11 are found to be clearly anticipated. These factors are consistent with the assertion that Ker’s polyolefin resin of inventive Example 1 has the claim 7 range of long-chain branching, subject to Applicant’s rebuttal. MPEP § 2112(V) (see footnote 5).
Dependent claim 8 is anticipated by the polyolefin resin of Ker Inventive Example 1 because the disclosed density of 0.9208 g/cc falls within the claimed range.
The further limitations of claim 9 are clearly met by each of the polyolefin resin of Ker Inventive Example 1 where the MIE (I2) is 0.6 g/10 min; the MIF (I21) is 26.7 g/10 min, both measured according to ASTM D1238.
The limitations of claim 10 are met by the polyolefin resin of Ker Inventive Example 1 because the melt flow ratio (I21/I2, which is the same as the claim 10 “SR”) is 44.5.
Claim 11 is anticipated for the following reasons. Claim 11 recites as follows:
11. The polyolefin resin of claim 10, wherein
a ratio (Mw/Mn) of a weight average molecular weight (Mw) and a number average molecular weight (Mn) measured by gel permeation chromatography is in a range of 2. 0 to 10.0 and
a ratio (Mz/Mw) of a Z-average molecular weight (Mz) and the weight average molecular weight (Mw) measured chromatography is in a range of 1.0 to 5.0.
Ker reports the following molecular weight data for Inventive Example 1 in Table 2:
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Ker at page 77. Ker’s Mw/Mn of 4.78 and Mz/Mw of 2.33 both fall within the claim 11 range. Ker Claim 11 is therefore anticipated.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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 7 is rejected under AIA 35 U.S.C. 103 as being unpatentable over L. Cady et al., US 6,462,161 (2002) (“Cady”).
Dependent claim 7 further limits claim 1 as follows:
7. The polyolefin resin of claim 1, wherein in the polyolefin resin, the number of long chain branches per 1,000,000 carbon atoms (LCB/106 carbon atoms) measured under a condition of 0.01 rad/s shear viscosity is in a range of 0.1 to 4. 4.
The specification teaches that long-chain branching in LLDPE is advantageous because entablement provides good bubble stability, but excessive long-chain branching leads to a problem of low toughness. Specification at page 3, lines 15-21.
Cady et al., US 6,462,161 (2002) (“Cady”)
Cady is discussed above in detail. As discussed above; in working Examples 100-107, Cady teaches preparation of polyolefin resins by copolymerizing ethylene and n-hexene with a supported titanium or zirconium metallocene catalyst, in a continuous fluidized bed reactor. Cady at col.32, line 55 through col. 34, line 45. Also as discussed above; in working Example 3, Cady teaches preparation of polyolefin resin by copolymerizing ethylene and n-hexene with a supported titanium metallocene catalyst, in a fluidized bed reactor. Cady at col. 28, line 59 through col. 30, line 24. As discussed above, the polyolefins of each of Examples 3 and 100-107 anticipate claim 1.
With respect to long chain branching, Cady teaches that:
Long chain macromolecular α-olefins can be vinyl terminated polymeric remnants formed in situ during continuous solution polymerization reactions. Under suitable processing conditions such long chain macromolecular units may be polymerized into the polymer product along with ethylene and other short chain olefin monomers to give small quantities of long chain branching in the resulting polymer.
Cay at col. 20, lines 20-27. However, Cady teaches ranges of long chain branching that overlap with the claimed range; for instance, Cady teaches “preferably from about 0.01 to about 3 long chain branches per 1000 carbon atoms along the polymer backbone”. Cady at col. 26, lines 30-46. Cady teaches generally, that the empirical effect of the presence of long chain branching in the copolymers of this invention is manifested as enhanced theological properties which are indicated by higher flow activation energies, and greater I21/I2 than expected from the other structural properties of the compositions. Cady at col. 23, lines 54-59. Cady further teaches that the improved processability observed for the composition of Example 3 are due to the presence of long chain branching in the polymer. Cady at col. 35, lines 50-55.
Differences between Cady and Claim 7
Cady differs from claim 7 in that it does not specifically disclose the number of long chain branches per 1,000,000 carbon atoms for Examples 3 or 100-107.
Obvious Rationale
Claim 7 is obvious because the Cady’s disclosed long chain branching ranges (e.g., “preferably from about 0.01 to about 3 long chain branches per 1000 carbon atoms along the polymer backbone”) overlaps with the instantly claimed range of 0.1 to 4. 4. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. MPEP § 2144.05(I). Here, one of ordinary skill is motivated optimize the number of long chain branches per 1,000,000 carbon atoms to within Cady’s preferred ranges so as to arrive at the invention of claim 7.
Prior Art is Not Cited Against Claim 12
As a symptom of the § 112(a), written description rejection, claims 1-12, defined by numerical parameters relating to experimentally determinable melt flow properties, are not fully searchable by the Office. Claims 1-12 are only searchable with respect to prior art that discloses sufficient experimentally determined melt flow data permitting the Examiner to perform the instantly claimed calculations. Stated differently, there is insufficient disclosure (in the specification and art) permitting the Examiner to visualize or recognize whether prior art polyolefin resins meet the claimed numerical parameters. A “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010).
This is especially pronounced with claim 12, where art cannot be cited because there is no way for the Office to determine the value of COI for prior art polyolefin resins. Claim 12 recites:
12. The polyolefin resin of claim 1, wherein
the polyolefin resin has a comonomer orthogonal index (COI) value of 2 to 10 calculated by Expression 2 below,
[Expression 2]
COI = (number of SCBs in Mz - number of SCBs in Mn) / (log Mz - log Mn)
wherein in Expression 2 above, the number of SCBs in Mz is an average number of side branches derived from comonomers per 1,000 carbon atoms in a Z-average molecular weight (Mz),
the number of SCBs in Mn is the number of side branches derived from comonomers per 1,000 carbon atoms in a number- average molecular weight (Mn), and
logMz and logMn are log values of Mz and Mn, respectively.
The specification teaches that:
The COI is a measure showing how the content of a comonomer such as alpha olefin is distributed according to molecular weight, and the average number of side branches is the sum of the number of short chain branches (SCB) having 1 to 6 carbon atoms and the number of long chain branches (LCB) having 7 or more carbon atoms.
Specification at page 30, lines 19-24.
Both of V. Ker et al., CA 2,780,508 (2012) (“Ker”) and L. Cady et al., US 6,462,161 (2002) (“Cady”) disclose polyolefin resins that anticipate claim 1. However, the Examiner cannot determine one way or the other whether these Ker or Cady polyolefin resins also fall within the scope of claim 12. This is because neither Cady nor Ker calculate the degree of side chain branching, which must be determined experimentally, and the Office is not so equipped to make this determination.
For example, Cady teaches that:
Long chain macromolecular α-olefins can be vinyl terminated polymeric remnants formed in situ during continuous solution polymerization reactions. Under suitable processing conditions such long chain macromolecular units may be polymerized into the polymer product along with ethylene and other short chain olefin monomers to give small quantities of long chain branching in the resulting polymer.
Cady at col. 20, lines 20-27. Cady teaches that the improved processability observed for the compositions of Example 3 are due to the presence of long chain branching in the polymer and the presence of long chain branching results in higher melt strength which was measured by a Goettfert Rheotens apparatus. Cady at col. 35, lines 51-59. Cady teaches generally, that the empirical effect of the presence of long chain branching in the copolymers of this invention is manifested as enhanced theological properties which are indicated by higher flow activation energies, and greater I21/I2 than expected from the other structural properties of the compositions. Cady at col. 23, lines 54-59. Cady gives preferred ratios of long branches. Cady at col. 26, lines 30-46. Cady teaches that the short chain branching distribution of a polyolefin composition is due to the incorporation of an α-olefin comonomer during the polymerization of an α-olefin monomer [with ethylene]. Cady at col. 2, lines 40-44.
In view of Cady’s disclosure, it may very well be that the polyolefins of working Cady Examples 3 and 100-107 meet the claim 12 limitation of “comonomer orthogonal index (COI) value of 2 to 10 calculated by Expression 2”. However, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. MPEP § 2112(IV),
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The specification teaches that melt tension (MT) in the working examples was measured using Capirograph lB manufactured by Toyoseiki. Specification at page 40, lines 3-8. However, critical melt tension processing conditions also appear to be missing from this specification procedure. In any case, this specification embodiment cannot be imported into the claims. MPEP § 2111.01 (II).
2 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
3 The specification body teaches that a prepolymer/catalyst composition is used in the LLDPE production, which comprises prepolymerizing ethylene and the alpha olefin monomer with the supported metallocene catalyst composition in a slurry polymerization reactor, where the resulting prepolymer/catalyst is subsequently mixed with the monomer feed to form the polyolefin resin. Specification at page 8, lines 21-25; Id. at page 8, lines 1-5; Id. at page 32-33.
4 There are small differences between these methods, but they essentially perform the same function of establishing the mass of polymer, in grams, flowing in ten minutes through a capillary of a specific diameter and length under a pressure applied via a certain weight at a certain temperature and these methods give comparable results. Datasheet for the decision in 00900909.3, page 23 (2018).
5 Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP § 2112(V) (citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the prior art reference. MPEP 2112(V), see also, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Chudik, 674 F. App'x 1011, 1012 (Fed. Cir. 2017) (both citing In re Swinehart, 439 F.2d 210, 212, 58 C.C.P.A. 1027 (C.C.P.A. 1971)).
Prosecution Insights