DETAILED ACTION
Restriction/Election
Applicant’s election without traverse of the invention of Group I, claims 1-6, in the reply filed on 09/10/2026 is acknowledged.
Claims 7-10 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 09/10/2026.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 01/18/2024 and 12/19/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Common Ownership Notice
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections – 35 U.S.C. 102/103
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2010-195952A (‘JP ‘952’) (citing infra to machine-generated English translation, furnished herewith).
JP ‘952 relates to a method for producing olefin polymers using a gas-phase polymerization reactor having an enlarged section (¶ [0001]). JP ‘952 in Comparative Example 1(1) (¶ [0032]) details production of an ethylene-1-hexene copolymer [for claim 6/1] having a density of 910.6 kg/m3 and a MFR (melt flow rate) of 0.31 g/10 min. [for claim 5/1]. While the reported MFR fulfills requirement (iv) of present claim 1, JP ‘952 is silent as to claim requirements (i) (Vicat softening point of 85.0oC or lower), (ii) (value of X + 6.5 x Ln (Y) is 23.0 or less) and (iii) (ratio of a sum of peak heights of a middle molecular weight distribution component (component B) and a high molecular weight component (component C) to a peak height of a low molecular weight component (component A) is 10.00 or more). Nevertheless, it is firmly established that where a claimed and prior art product are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977).
As evident from the instant specification (see, e.g., ¶¶ [0057]-[0058]), an ethylene-α-olefin copolymer according to the present invention is made by copolymerizing ethylene and an α-olefin having 3 to 20 carbon atoms in the presence of an olefin polymerization catalyst, the method including
adjusting polymerization conditions such that a value A defined by the formula (1) in paragraph [0058] is 67.0 or more and 100.0 or less. As further stated in paragraph [0060], the value A defined by the formula (1) can be adjusted to a predetermined range by adjusting the concentration of an α-olefin having 3 to 20 carbon atoms, the concentration of an alkane, the concentration of ethylene, and the concentration of a gas other than a hydrocarbon in a polymerization reaction gas, and a polymerization temperature.
In Comparative Example 1(1) of JP ‘952, an ethylene-1-hexene copolymer is manufactured by supplying the prepolymerization catalyst obtained in Example 1(3) to a reactor of the same type used by Applicant (i.e., a fluidized bed gas phase reactor; cf., Spec., ¶ [0083]) and triethylamine is used as an electron donor and triisobutylaluminum as the cocatalyst. Example 1(1)-(3) of JP ‘952 details the synthesis of said catalyst, i.e., racemic-ethylene bis(1-indenyl) zirconium diphenoxide, on a carrier and subsequent prepolymerization of ethylene (¶¶ [0028]-[0030]). Thereby, a prepolymerized catalyst component is obtained which is essentially identical to the Applicant’s (cf., Spec., ¶ [0157]). Further, the polymerization was carried out with ethylene and 1-hexene under polymerization conditions as follows:
-polymerization temperature: 80oC;
-concentration of ethylene: 90.7 mol%;
-concentration of 1-hexene: 1.32 mol%;
-concentration of hydrogen: 1.34 mol%;
-concentration of nitrogen: 6.34 mol%; and
-concentration of hexane: 0.3 mol%
(JP ‘952, ¶ [0032]).
With respect to the value of polymerization temperature and the concentrations of ethylene, 1-hexene, hydrogen and hexane cited above, it is noted that they fall within the Applicant’s respective preferred ranges for the corresponding conditions (cf., Spec., ¶¶ [0086], [0088]-[0089]); while the cited concentration of nitrogen falls within the Applicant’s broad range for nitrogen concentration (cf., Spec., ¶ [0089]). Therefore, the value A defined by the Applicant’s formula (1) would be fulfilled by Comparative Example 1(1) where the number of short chain branches (SCB) is 21.0 or more (cf., Spec., [0062]). It is acknowledged that JP ‘952 is silent as to SCB in the final copolymer; however, inasmuch as the above process conditions are identical in all other respects, it is plausible to infer, as a prima facie matter, that the SCB is implicitly fulfilled in the copolymer of Comparative Example 1(1); hence, that copolymer is manufactured by substantially the same polymerization conditions as an ethylene-α-olefin copolymer according to the present invention. Accordingly, the burden of proof is properly shifted to Applicant to show that the property requirements used to define the ethylene-α-olefin copolymer of the elected invention would not be present in the copolymer made according to Comparative Example 1(1) of JP ‘952. See MPEP 2112 (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…” as that required with respect to product-by-process claims. In re Fitzgerald, 205 USPQ 594, 596 (CCPA 1980)).
Conclusion
Claims 1-6 are rejected. Claims 7-10 stand withdrawn from further consideration as drawn to a non-elected invention. Accordingly, no claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-25-26
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