DETAILED ACTION
Claims 1-11 are pending
Claims 1-11 were subject to a restriction requirement mailed 03/17/2026
Applicants filed remarks in response to a restriction requirement on 08/17/2026
Claims 3 and 6-8 are withdrawn
Claims 1-2, 4-5, and 9-11 are rejected
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 .
Examiner’s Note
2. It is noted that the IDS filed 12/18/2024, the non-patent literature document S. KAUR, G. SINGH, U.C. MAKWANA, V. K. GUPTA, 'Immobilization of Titanium Tetrachloride on Mixed Support of MgCl2 -xEB/Poly(methyl aacrylate-co-1octene): Catalyst for Synthesis of Broad MWD Polyethylene', CATALYSIS LETTERS, KLUWER ACADEMIC PUBLISHERS PLENUM PUBLISHERS, June 26, 2009, pgs. 87-93, Vol. 132, No.1-2 was not attached. In order to further compact prosecution, the examiner has attached the non-patent literature document and has been considered in the rejection below.
Election/Restrictions
3. Applicant’s election without traverse of Species (a) in Category A and Species (c) in Category B in the reply filed on 08/17/2026 is acknowledged.
4. Claims 3 and 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/17/2026.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claim 1-7, 9, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10, and 12 of copending Application No. 18/482,696 (copending). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
7. Regarding claims 1 and 11, the claims of copending require a method for producing a solid catalyst component for the polymerization of olefins comprising: reacting the following compounds to form reaction product (A): (1) an alkoxymagnesium compound (i.e. providing one or more magnesium precursor); (2) one or more of an acyl halide, sulfinyl halide, or sulfonyl halide (i.e. providing one or more halogenation agents); and (3) one or more of an alkanol or an alkanediol (i.e. one or more organic solvents may be used prior to reacting to dissolve halogenation agents (B) wherein the one or more organic solvents is a heteroatom substituted hydrocarbon solvent); reacting the reaction product (A) with a halogen-containing titanium compound (i.e. providing one or more titanium compound) to obtain a solid catalyst component (C). (Claim 1).
8. Regarding claim 1, the claims of the copending further require the method of claim 1, wherein the titanium compound has the general formula TiXn(OR)4-n, wherein X is a halogen atom, wherein R is a linear or branched alkyl group having 1 to 20 carbon atoms, and wherein n is an integer from 1 to 4 (Claim 10).
9. Regarding claim 1, the claims of copending further require the method of claim 1, further comprising treating reaction product (C) with tetravalent titanium halide (i.e. Ti(OR2)qX4-q wherein X is a halogen atom and R2 is independently selected from aliphatic, aromatic, alicyclic, heteroaliphatic, heteroaromatic, or heteroalicyclic groups, wherein q is an integer from 0 to 4) (Claim 2).
10. Regarding claims 1 and 9, the claims of copending further require the method of claim 1, wherein the titanium compound comprises titanium tetrachloride (i.e. the titanium compound (C) comprises TiCl4). (Claim 12).
11. Regarding claims 2 and 4, the claims of copending further require the method of claim 1, wherein the alkoxymagnesium compound is of the general formula R1OMgOR2, wherein R1 and R2 are independently selected from aliphatic, aromatic, alicyclic, heteroaliphatic, heteroaromatic, or heteroalicyclic groups having 1 to 20 carbon atoms (Claim 3).
12. Regarding claim 3, the claims of copending further require the method of claim 1, wherein the alkoxymagnesium compound is of the general formula R1OMgX, wherein R1 is selected from aliphatic, aromatic, alicyclic, heteroaliphatic, heteroaromatic, or heteroalicyclic groups having 1 to 20 carbon atoms, and wherein X is a halogen (Claim 4).
13. Regarding claim 4, the claims of copending further require the method of claim 1, wherein the alkoxymagnesium compound comprises a dialkoxy magnesium compound (i.e. magnesium ethoxide is an alkoxymagnesium compound) (Claim 5).
14. Regarding claims 5 and 6, the claims of copending further require the method of claim 1, wherein the acyl halide comprises phthaloyl chloride (Claim 7).
15. Regarding claims 5 and 7, the claims of copending further require the method of claim 1, wherein the acyl halide is of the general formula RCOX, wherein R is a linear or branched alkyl or aromatic (i.e. RCOX with phenyl ring (aromatic) is benzoyl chloride) having 1 to 20 carbon atoms, and wherein X is halogen (i.e. one or more halogenation agents (B) is selected from acid chloride, carbonyl chloride, oxalyl chloride, phosphoryl chloride, phosphinic acid chloride, phosphonic dichloride, phosphonic dichloride, chloridophosphate, chlorothiophosphate, sulfuryl chloride, sulfonyl halide, thionyl chloride, chlorosulfate, silicon chloride, and chlorosilane) (Claim 6).
Claim Objections
16. Claims 1, 5, 9, and 11 are objected to because of the following informalities:
17. In order to provide further clarity, it is suggested to amend “the polymerization” to “polymerization” in Claim 1 - line 1.
18. In order to provide further clarity, it is suggested to amend “Ti(OR2)qX4-q” to “Ti(OR2)q X4-q” in Claim 1 - line 5.
19. In order to provide further clarity, it is suggested to amend “TiC14” to “TiCl4” in Claim 9 - line 1.
20. In order to provide further clarity and proper Markush group language in the claim, it is suggested to amend “the one or more halogenation agents (B) is selected from” to “the one or more halogenation agents (B) is selected from the group consisting of” in Claim 5 - lines 1-2. Appropriate correction is required.
21. In order to provide further clarity, it is suggested to amend “the reacting step” to “reacting” in Claim 11 - line 2.
Claim Rejections - 35 USC § 112
22. 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.
23. Claim 10 is 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.
24. Claim 10 recites, “further comprising providing one or more internal electron donors comprising O, Si, N, S, and/or P; and further comprising reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B), the one or more internal electron donors, and the one or more titanium compound (C) to form the catalyst component” (emphasis added). However, claim 1 already recites, “reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B) to form a modified magnesium precursor; and reacting the modified magnesium precursor with the one or more titanium compound (C) to form the catalyst component”.
Therefore, it is unclear if claim 10 requires reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B) to form a modified magnesium precursor; and reacting the modified magnesium precursor with the one or more titanium compound (C) to form the catalyst component and reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B), the one or more internal electron donors, and the one or more titanium compound (C) to form the catalyst component¸ or only requires all limitation of claim 1 and providing one or more internal electron donors comprising O, Si, N, S, and/or P. The examiner interprets claim 10 as reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B) to form a modified magnesium precursor; and reacting the modified magnesium precursor with the one or more titanium compound (C) to form the catalyst component, which are recited in claim 1 and providing one or more internal electron donors comprising O, Si, N, S, and/or P. Clarification is requested.
Claim Rejections - 35 USC § 102
25. 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.
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.
26. Claims 1-2, 4-5, 9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaur et al., Immobilization of Titanium Tetrachloride on Mixed Support of MgCl2 ·xEB/Poly(methyl acrylate-co-1-octene): Catalyst for Synthesis of Broad MWD Polyethylene (Kaur).
27. Regarding claims 1, 4, and 9, Kaur teaches a formation of solid catalysts (i.e. a method for preparing a catalyst component) (Kaur, Abstract) includes magnesium chloride and its alkoxide derivatives as a precursor (i.e. magnesium precursor) for an active support (Kaur, p. 87, left column, 1. Introduction), and active MgCl2 was generated in situ by the chemical modification of Mg(OEt)2 with benzoyl chloride (i.e. providing benzoyl chloride as a halogenation agent) (Kaur, p. 89, left column, 3.1 Preparation of MgCl2 · xEB Adduct and PMO) to obtain MgCl2 · ethyl benzoate (MgCl2 · xEB) mixed support adducts (Kaur, p. 88, left column, 2.2. Preparation of Active Magnesium Chloride Adduct with Ethyl Benzoate (MgCl2 · xEB));;
wherein the precursor is magnesium ethoxide (Mg(OEt)2) (i.e. providing magnesium ethoxide as a magnesium precursor) (Kaur, p. 88, left column, 2.1. Materials);
wherein TiCl4 was immobilized (i.e. providing one or more titanium compound (C) have a general formula Ti(OR2)qX4-q, wherein Cl is a halogen atom and R2 is independently selected from aliphatic, aromatic, alicyclic, heteroaliphatic, heteroaromatic, or heteroalicyclic groups, wherein q is an integer from 0 to 4) on different compositions of the mixed support adducts of MgCl2·xEB (i.e. a modified magnesium precursor) (Kaur, Abstract).
Kaur further teaches chemical modification of Mg(OEt)2 with benzoyl chloride to form the MgCl2 · xEB mixed support adducts (i.e. reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B) to form a modified magnesium precursor) (Kaur, p. 89, left column, 3.1 Preparation of MgCl2 · xEB Adduct and PMO)
wherein TiCl4 was immobilized (Kaur, Abstract) by addition of TiCl4 to a reaction mixture with the MgCl2 · xEB mixed support adducts to form titanium tetracholoride catalysts (i.e. reacting the modified magnesium precursor with the one or more titanium compound (C) to form the catalyst component) (Kaur, p. 88, right column, 2.3. Preparation of MgCl2 · xEB/PMO Supported Titanium Tetrachloride Catalysts).
Kaur further discloses the solid catalyst is used in a polymerization of ethylene (i.e., polymerization of alpha-olefin) (Kaur, p. 88, right col., section 2.4).
Alternatively, the recitation in the claims that the catalyst component is “for the polymerization or co- polymerization of alpha-olefin” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kaur discloses a formation of solid catalysts (i.e. a method for preparing a catalyst component) as presently claimed, it is clear that the solid catalysts of Kaur would be capable of performing the intended use, i.e. for the polymerization or co- polymerization of alpha-olefin, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
28. Regarding claim 2, Kaur further teaches the precursor is magnesium ethoxide (Mg(OEt)2) (i.e. one or more magnesium precursor (A) comprises R1OMgOR2, wherein R1 and R2 are aliphatic groups) (Kaur, p. 88, left column, 2.1. Materials).
29. Regarding claim 5, active MgCl2 was generated in situ by the chemical modification of Mg(OEt)2 with benzoyl chloride (i.e. one or more halogenation agents (B) is an acid chloride) (Kaur, p. 89, left column, 3.1 Preparation of MgCl2 · xEB Adduct and PMO).
30. Regarding claim 11, Mg(OEt)2 was reacted with benzoyl chloride in the presence of dry chlorobenzene (i.e. one or more organic solvents may be used prior to reacting to dissolve halogenation agents (B) wherein the one or more organic solvents is a heteroatom substituted hydrocarbon solvent).
31. Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaur taken in view of evidence by Lee et al., In Situ Formation of MgCl2 Support and Internal Donor during Preparation of Propylene Polymerization Catalysts (Lee).
32. Regarding claim 10, Kaur further teaches active MgCl2 was generated by the chemical modification of Mg(OEt)2 (i.e. reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B)) with benzoyl chloride to form MgCl2 · xEB mixed support adducts (i.e. conversion of Mg(OEt)2 with ethyl benzoate to MgCl2) (Kaur, p. 89, left column, 3.1 Preparation of MgCl2 · xEB Adduct and PMO)
wherein during conversion of Mg(OEt)2 with ethyl benzoate (EB) to MgCl2, benzoyl chloride (BC) is changed into a corresponding organic ester ethyl benzoate (EB) (Lee, Abstract)
wherein EB is an internal donor as evidenced by Lee (i.e. further comprising providing one or more internal electron donors comprising O, Si, N, S, or P) (Lee, p. 2643, left column, paragraph 1).
Kaur further teaches MgCl2 · xEB mixed support adducts (Kaur, Abstract) mix with TiCl4 to form titanium tetracholoride catalysts (i.e. reacting the one or more magnesium precursor (A) with the one or more halogenation agents (B), the one or more internal electron donors, and the one or more titanium compound (C) to form the catalyst component) (Kaur, p. 88, right column, 2.3. Preparation of MgCl2 · xEB/PMO Supported Titanium Tetrachloride Catalysts).
Conclusion
33. 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 a.m. - 5:00 p.m..
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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
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732 T
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