DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
3. Claims 1, 5-6 have been amended, claims 2, 4, 7-9, 15-17 have been cancelled, new claims 21-28 have been added, and claims 1, 3, 5-6, 10-14, 18-28 are pending as amended on 07/06/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 07/06/26. In particular, claim 1 has been amended to include features from dependent claims 2, 4, 7-9, 17. Now, the scope of independent claim 1 and the claims depends from claim 1 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a 371 of PCT/US2022/022108 03/28/2022; PCT/US2022/ 022108 has PRO 63/168,603 03/31/2021.
Information Disclosure Statement
8. The information disclosure statement (IDS) submitted on 04/09/26 and 07/07/26 were filed after the mailing date of the non-final Office action on 04/07/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
9. Applicant's amendment filed on 11/25/13, has been fully considered and entered.
Response to Arguments
10. Applicant's arguments with respect to rejection of claims 1-7, 9-10, 19-20 under 35 U.S.C. 102(a)(1) as being anticipated by McLennaghan (US 2017/0240781; hereinafter called “McLennaghan-1”), claims 8, 11-14 under 35 U.S.C. 103 as being unpatentable over McLennaghan-1 in view of Fontaine (US 2020/0017611), and claims 15-18 under 35 U.S.C. 103 as being unpatentable over McLennaghan-1 in view of Spencer (US 2015/0307643), filed on 07/06/26, have been fully considered but are moot in view of amendment. The previous rejections have been withdrawn. However, in view of amendment to claims and response, a new ground(s) of rejection is made. Applicants have argued: a person of ordinary skill in the art would not be motivated to combine Spencer to McLenneghan-1, because the skilled person would expect that higher comonomer incorporation at higher polymerization temperature would reduce isotacticity, which contradicts the purpose of the present application. Further, The instant application notes that "a common feature of many known polypropylene
catalysts is the negative impact of increasing reactor temperature on isotacticity." [0091]. Said another way, higher solution polymerization temperatures decrease isotacticity. Spencer highlights that solution polymerization temperatures greater than 160 °C yield higher molecular weight and higher comonomer incorporation [0002]. Consolidating these teachings, the skilled person would consider solution polymerization temperatures greater than 160 °C to correlate to higher comonomer incorporation and lower isotacitity in the polypropylene polymer. Moreover, the skilled person would know that greater comonomer incorporation reduces isotacticity, because it increases rubber like properties such as ductility and flexibility. Applicants arguments are respectfully considered but are not persuasive. Although applicants specification states (para [0091]) “A common feature of many known polypropylene catalysts is the negative impact of increasing reactor temperature on isotacticity. Therefore, further experiments conducted at about 130° C., at 160° C., and at 190° C.(Reactor Conditions I, J, and K of Table 2) illustrate the abilities of many procatalysts according to formula (I) of this disclosure to produce highly isotactic polypropylenes even at increased reaction temperatures,” nothing in applicants specification direct person of ordinary skill that a comonomer incorporation effectively lower isotacticity of the polypropylene. Further, this statement is not backed by any experimental evidence. Further, nothing in the claims examined or the primary reference requires such conditions. Applicants assessment of the person of ordinary skill would know or would not know is nothing more than mere assumptions. It is quite possible to observe higher comonomer incorporation at higher polymerization temperature without a corresponding decrease in polypropylene isotacticity. The key is that comonomer incorporation and stereoregularity are not necessarily controlled by the same kinetic step. The possible reasons are: (i) the catalyst’s stereoselectivity is relatively insensitive to temperature. A highly stereospecific catalyst can maintain essentially the same propylene insertion geometry over the temperature range studies. In that case, temperature may increase comonomer insertion without substantially changing the probability of isotactic propylene insertion. (ii) higher comonomer incorporation does not automatically mean more stereochemical defects. Isotacticity describes the configuration of successive propylene derived units, whereas comonomer content describes composition. An ethylene unit, for example interrupts a PP sequence, but the propylene units on either side can still be inserted predominantly isotactically. (iii) comonomer incorporation may occur preferentially at particular sites, for example, at site that are still highly isotactic. (iv) changes in active-site populations can compensate for the expected loss in stereoselectivity. (v) comonomer can modify the catalyst environment, for example, alter the insertion kinetics. So in short, the increase in comonomer incorporation with the polymerization temperature increase does not necessarily imply a corresponding decrease in stereoregularity or isotacticity, because comonomer/propylene insertion selectivity and stereoselectivity are governed by different kinetic factors.
Applicants arguments about unexpected results have been respectfully considered but are not persuasive. It has been noted that the discussion of table 2 in remarks represents very narrow features of the too broad claim 1. Nothing from the 3 discussed represented samples from discussed table 2 are reflected in broad claim 1. Thus, the support presented in arguments for the experimental results does not commensurate in scope with the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
Applicant's arguments with respect to rejection of claims 1-7, 9-10, 15-16, 19 under 35 U.S.C. 102(a)(1) as being anticipated by McLennaghan (US 2018/ 0201773; hereinafter called McLennaghan-2) and claims 20 under 35 U.S.C. 103 as being unpatentable over McLennaghan-2 filed on 07/06/26, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5-6, 10, 18-20, 27 are rejected under 35 U.S.C. 103 as being unpatentable over McLennaghan (US 2017/0240781; hereinafter called “McLennaghan-1”) in view of Spencer (US 2015/0307643).
Regarding claims 1, 3, 5-6, 10, 18, McLennaghan-1 discloses a propylene polymerization process comprising polymerizing propylene and alpha olefin, wherein propylene content is 87.9 wt% (para [0047], table 2, PBPE3) in presence of catalyst system comprising
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(table 1). McLennaghan-1 does not disclose wherein the polymerizing is performed at a polymerization temperature of greater than or equal to 160°C (regarding claim 1) or temperature of from 160°C to 190°C (regarding claim 18).
However, Spencer discloses a polymerization process comprising polymerizing propylene-based monomer in the presence of same catalyst as McLennaghan-1 and instantly claimed, wherein the polymerization performed at greater than, or equal to, 160 °C for high comonomer incorporation (para [0002], [0010]-[0020], [0073], [0146], [0164]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to perform polymerization at greater than, or equal to, 160 °C in McLennaghan-1, as taught by Spencer. The rationale to do so would have been motivation provided by of Spencer that to do so would provide high comonomer incorporation during polymerization.
A prima facie case of obviousness exists for the propylene polymerization process, wherein Spencer discloses polymerization temperature of greater than or equal to 160°C, encompassing the requirement of claim 18. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding claims 19-20, McLennaghan-1 discloses a propylene having 95.6 % isotactic triads (table 2, PBPE3), read on claim 19 range of greater than 90% or claim 20 range of greater than 95%.
Regarding claim 27, McLennaghan-1 discloses propylene homopolymer (para [0071]).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over McLennaghan-1 in View of Spencer as applied to claim 1 above, and further in view of Fontaine (US 2020/0017611).
McLennaghan-1 includes the features of claim 1 above.
Regarding claims 11-14, McLennaghan-1 discloses L is -(CH2)3- but does not disclose L is –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- wherein Rc is isopropyl.
However, Fontaine discloses a polymerization process comprising polymerizing propylene-based monomer in the presence of same catalyst as McLennaghan-1 and instantly claimed, wherein Fontaine expressly discloses L is -(CH2)3- and functionally equivalent –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- at claimed position of the catalyst (para [0003], [0005]-[0009], [0019-[0022], [0025], [0044], [0046], [0068]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used L as –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- of the claims in the composition of McLennaghan-1 because Fontaine teaches that the claimed –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- and -(CH2)3- of McLennaghan-1 are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Claims 21, 23-26, 28 are rejected under 35 U.S.C. 103 as being unpatentable over McLennaghan-1 in view of Fontaine.
Regarding claims 21, 25-26, McLennaghan-1 discloses a propylene polymerization process comprising polymerizing propylene and alpha olefin, wherein propylene content is 87.9 wt% (para [0047], table 2, PBPE3) in presence of catalyst system comprising
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(table 1). McLennaghan-1 discloses L is -(CH2)3- but does not disclose L is –(CH2CH(RC)CH2)- with for example Rc is methyl, or –(CH2Ge(RC)2CH2)- wherein for example Rc is isopropyl.
However, Fontaine discloses a polymerization process comprising polymerizing propylene-based monomer in the presence of same catalyst as McLennaghan-1 and instantly claimed, wherein Fontaine expressly discloses L is -(CH2)3- and functionally equivalent –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- at claimed position of the catalyst (para [0003], [0005]-[0009], [0019-[0022], [0025], [0044], [0046], [0068]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used L as –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- of the claims in the composition of McLennaghan-1 because Fontaine teaches that the claimed –(CH2CH(RC)CH2)- with Rc is methyl, or –(CH2Ge(RC)2CH2)- and -(CH2)3- of McLennaghan-1 are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Regarding claims 23-24, McLennaghan-1 discloses a propylene having 95.6 % isotactic triads (table 2, PBPE3), read on claim 23 range of greater than 90% or claim 24 range of greater than 95%.
Regarding claim 28, McLennaghan-1 discloses propylene homopolymer (para [0071]).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over McLennaghan-1 in view of Fontaine as applied to claim 21 above, and further in view of Spencer.
McLennaghan-1 includes the features of claim 21 above.
Regarding claim 22, McLennaghan-1 does not disclose wherein the polymerizing is performed at a polymerization temperature of greater than or equal to 160°C.
However, Spencer discloses a polymerization process comprising polymerizing propylene-based monomer in the presence of same catalyst as McLennaghan-1 and instantly claimed, wherein the polymerization performed at greater than, or equal to, 160 °C for high comonomer incorporation (para [0002], [0010]-[0020], [0073], [0146], [0164]).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to perform polymerization at greater than, or equal to, 160 °C in McLennaghan-1, as taught by Spencer. The rationale to do so would have been motivation provided by of Spencer that to do so would provide high comonomer incorporation during polymerization.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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