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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-17 in the reply filed on 16 June 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 18 and 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Rejections - 35 USC § 112
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.
Claims 2, 4-6, 10, 12, 13, and 15-17 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 2 recites the broad recitation “R1 and R2 are independently selected . . .”, and the claim also recites “preferably R1 and/or R2 are/is a group represented by formula A”, which is the narrower statement of the range/limitation. Claim 2 has a similar issue in the definition of groups R1-R5 of formula A, group X, group R11, group R12, and Group R3.
Claim 4 has a similar issue in the definition of Groups R1-R11, and in the definition of Groups R5-R10 of formula III”.
Claims 6 and 13 have a similar issue in the definition of C1-C6 alkyl, C1-C6 alkoxy, and halogen.
Claim 10 has a similar issue in the definition of Groups R1 and R2, and in Groups R1-R5 of Formula A, of group X, and of Group R12.
Claim 12 has a similar issue in the definition of Groups R1-R10, R21-R24.
Claim 15 (from which claims 16 and 17 depend) has a similar issue in the definition of the olefin, and of Groups L1-L5.
Claim 16 has similar issues in the definition of the substituent of L1-L3 groups, the pendent group of L4, and a substituent of the pendent group of L4, the organoaluminum compound, organoboron compound, molar ratio of aluminum in the cocatalyst to M, molar ratio of boron in the cocatalyst to M in the main catalyst, reaction temperature, and reaction time.
Claim 17 has similar issues with respect to the definition of the alkane solvent, concentration of the main catalyst, and concentration of carboxylic ester monomer.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 6 and 13 each provide definition to “the substituent”. However, there are numerous references to a substituent in claim 1, and therefore it is unclear to which substituent this refers.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 4, and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Formula III of claim 3 (from which claims 4 and 7 depend), appears to be a narrower version of either Formula I or Formula I” of claim 1. However, Formula 1 and Formula 1” have only one possible substituent on the terminal cyclohexyl groups of Formula I or the terminal cyclopentyl groups of Formula I”. The compound of Formula III as defined appears to allow for two substituting groups on the terminal cyclohexyl or cyclopentyl groups. Formula III’, which appears to be a narrower version of Formula I’ of claim 1, also encompasses two substituents on the cyclohexyl groups, where Formula I’ only disclosed one. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
(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.
Claim(s) 1-4, 6, 7, and 9-17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2021/083358 A1 (“Gao”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The applied reference has a common applicant and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The citations to Gao are to English language equivalent US 2022/0396646.
As to claims 1, 2, 15, and 16, Gao teaches polymerizing an olefin and a polar monomer in the presence of main catalyst and optional cocatalyst, the main catalyst being a diiimine metal complex of Formula I of I’ (paras. 0006-0010), with the substituents defined in the same manner as recited. Gao teaches that the polar monomer may be a compound of Formula G’ (para. 0250), which meets the recitation of Formula G of claim 15, and thus may be considered an unsaturated carboxylic ester.
As a specific example, example 53 of Gao (para. 0423) teaches polymerizing ethylene and 2,2-dimethyl-7-octenoic acid (which meets Formula G where L1-L3 are H, L4 is a C5 alkylene group with pendent methyl groups (as required by claims 15 and 16), and L5 is hydrogen). Gao teaches polymerizing in the presence of complex Ni11, which meets Formula I where R1 and R2 are each substituted C6 hydrocarbyl, R5-R8 are each unsubstituted C20 hydrocarbyl, with R5 and R7, and R6 and R8 joined to form rings, Y is oxygen, R12 are ethyl (presumed from starting material of (DME)NiBr2), M is Ni, and each X is Br as required by claims 1 and 2.
As to claims 3, 4, and 7, Gao exemplifies polymerizing ethylene and 2,2-dimethyl-7-octenoic acid with complex Ni1 (para. 0366), which meets Formula III (para. 0313, 0316) where R1 and R3 are ethyl, R2, R4-R7, R10 are hydrogen, R8, R9, and R11 are methyl; R12 is ethyl, M is nickel, Y is O, and X is Br.
As to claim 6, Gao teaches the same substituents (para. 0020). Example 53 teaches a complex where R1 and R2 are substituted with C3 alkyl.
As to claim 9 and 10, the complex of Example 53 of Gao meets formula IV where R1 and R2 are each substituted C6 hydrocarbyl, R21-R24 are hydrogen, each R12 is C2 alkyl, Y is O, M is Ni, and X is Br, a halogen, which meet the requirements of claims 9 and 10.
As to claims 11, 12, and 14, the complex of Example 53 of Gao meets Formula V where R1, R3, R4 and R6 are isopropyl, R2, R5, R7-R10 are hydrogen, R21-R24 are hydrogen, X is Br, R12 is ethyl, Y is oxygen, M is Ni.
As to claim 13, Gao teaches the same substituents (para. 0020). Example 53 teaches a complex where R1 and R2 are substituted with C3 alkyl.
As to claim 17, Example 53 of Gao teaches polymerization in hexane, a C6 alkane solvent (para. 0423).
Claims 1, 2, 5, 6, 8, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112745420 A (“Gao B”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 2, 15, and 16, Gao B teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0126), the latter of which meets Formula G of claims 15 and 16 where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao B teaches polymerizing in the presence of catalyst Ni1, which (para. 0123-0124) has a structure of Formula I” where R1 and R2 are C6 hydrocarbyl with substituent, R5-R7 are C1-C20 hydrocarbyl, and R5, R6, and R7 are joined to one another to form rings, R11 is ethyl, Y is oxygen, and Group VIA non-metal, M is Ni, a Group VIII metal, and X is Br, a halogen as required by claims 1 and 2.
As to claims 5 and 8, the Ni1 complex meets Formula III’” where R1and R3 are methyl, R2 and R4-R10 are each hydrogen, M is Ni, Y is O, X is Br, and R11 is ethyl.
As to claim 6, the substituent of R1 and R2 in formula III are methyl.
As to claim 17, Gao B teaches polymerizing in hexane (para. 0126).
Claims 1, 3, 4, 7, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112745429 A (“Gao E”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 15, and 16, Gao E teaches polymerizing olefin and a carboxylic acid, where the carboxylic acid monomer meets Formula G of claims 15 and 16 (para. 0050-0052) in the case where L5 is H. Gao E teaches the catalyst is a metal diimine complex meeting recited Formula I (paras. 0006-0008).
As to claims 3, 4, and 7, Gao E teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0114), the latter of which meets Formula G of the specification where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao E teaches polymerizing in the presence of catalyst Ni1, which (para. 0105-0109) has a structure of Formula III having the same substituents as the second species of claim 7, and thus meets the recitation of the diimine metal complex.
Claims 1, 2, 6, and 9-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112745424 A (“Gao F”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 2, 15, and 16, Gao F teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0158), the latter of which meets Formula G of claims 15 and 16 where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao F teaches polymerizing in the presence of catalyst Ni1, which (para. 0143-0156) has a structure of recited Formula I where R1 and R2 are C6 hydrocarbyl with substituent, R5-R7 are C1-C20 hydrocarbyl, R5 and R7, and R6 and R8 are joined to one another to form rings, R12 is ethyl, Y is oxygen, and Group VIA non-metal, M is Ni, a Group VIII metal, and X is Br, a halogen as required by claims 1 and 2.
As to claim 6, the substituent of R1 and R2 in formula III are isopropyl.
As to claims 9, 10, and 13, the complex Ni1 meets Formula IV where R1 and R2 are C6 hydrocarbyl with substituent, R21-R24 are hydrogen, R12 is ethyl, M is Ni, X is Br, Y is O, the substituent on R1 and R2 being isopropyl as required by claim 13.
As to claims 11, 12, and 14, the complex Ni1 meets formula V having the substitutions required by claims 12 and 14 (specifically, the first species listed in claim 14).
As to claim 17, Gao F teaches polymerizing in hexane (para. 0158).
Claims 1, 3, 4, 7, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112745430 A (“Gao G”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 15, and 16, Gao G teaches polymerizing olefin and a carboxylic acid, where the carboxylic acid monomer meets Formula G of claims 15 and 16 (para. 0064-0066) in the case where L5 is H. Gao E teaches the catalyst is a metal diimine complex meeting recited Formula I (paras. 0006-0008).
As to claims 3, 4, and 7, Gao G teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0137), the latter of which meets Formula G of the specification where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao G teaches polymerizing in the presence of catalyst Ni1, which (paras. 0019, 0029, 0128) has a structure of Formula III’ having the same substituents as the second species of claim 7, and thus meets the recitation of the diimine metal complex.
Claims 1, 2, 6, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112745423 A (“Gao H”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 2, 15, and 16, Gao H teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0178), the latter of which meets Formula G of claims 15 and 16 where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao F teaches polymerizing in the presence of catalyst Ni1, which (paras. 0029-0030, 0167) has a structure of recited Formula I’ where R1 and R2 are C6 hydrocarbyl with substituent, R5-R7 are C1-C20 hydrocarbyl, R5 and R7, and R6 and R8 are joined to one another to form rings, R12 is ethyl, Y is oxygen, and Group VIA non-metal, M is Ni, a Group VIII metal, and X is Br, a halogen as required by claims 1 and 2.
As to claim 6, the substituent of R1 and R2 in formula III are methyl.
As to claim 17, Gao H teaches polymerizing in hexane (para. 0178).
Claims 1, 3, 4, 7, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 113754812 A (“Gao I”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 15, and 16, Gao I teaches polymerizing olefin and a carboxylic acid, where the carboxylic acid monomer meets Formula G of claims 15 and 16 (para. 0052-0054) in the case where L5 is H. Gao E teaches the catalyst is a metal diimine complex meeting recited Formula I (paras. 0009-0010).
As to claims 3, 4, and 7, Gao I teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0117), the latter of which meets Formula G of the specification where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao I teaches polymerizing in the presence of catalyst Ni1, which (para. 0107-0112 has a structure of Formula III having the same substituents as the second species of claim 7, and thus meets the recitation of the diimine metal complex.
Claims 1, 2, 5, 6, 8, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 113754819 A (“Gao J”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
A partial machine translation is enclosed.
As to claims 1, 2, 15, and 16, Gao J teaches a method for polymerizing ethylene, an olefin, and 2,2-dimethyl-7-octenoic acid (para. 0138), the latter of which meets Formula G of claims 15 and 16 where L1-L3 are hydrogen, L4 is a C5 alkyl group with pendent methyl groups, and L5 is hydrogen, and thus is an unsaturated carboxylic ester as defined by applicant. Gao J teaches polymerizing in the presence of catalyst Ni1, which (para. 0135) has a structure of Formula I” where R1 and R2 are C6 hydrocarbyl with substituent, R5-R7 are C1-C20 hydrocarbyl, and R5, R6, and R7 are joined to one another to form rings, R11 is ethyl, Y is oxygen, a Group VIA non-metal, M is Ni, a Group VIII metal, and X is Br, a halogen as required by claims 1 and 2.
As to claims 5 and 8, the Ni1 complex meets Formula III’” where R1and R3 are methyl, R2 and R4-R10 are each hydrogen, M is Ni, Y is O, X is Br, and R11 is ethyl.
As to claim 6, the substituent of R1 and R2 in formula III are methyl.
As to claim 17, Gao J teaches polymerizing in hexane (para. 0126).
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.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being obvious over WO 2021/083350 A1 (“Gao C”) in view of US 3,736,305 (“Kinkel”).
The applied reference Gao C has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The applied reference has a common applicant and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The citations to Gao C are to English language equivalent US 2022/0282005.
As to claim 1, Gao C teaches a process for olefin polymerization in the presence of a diamine metal complex as main catalyst (abstract). Gao C in particular teaches a diamine metal complex of Formula IA (para. 0032) that meets the recitation of Formula I” in claim 1.
Gao C does not exemplify, but teaches that the polymerization may be copolymerized with a polar monomer (para. 0204). Kinkel teaches copolymers of ethylene with polar monomers, including unsaturated carboxylic esters (2:27-34), and teaches that such products are suitable for purposes such as adhesives and sheeting (3:65-70). As such, the polymerization of ethylene with polar monomers, including unsaturated carboxylic ester monomers, is obvious as suitable for various end uses as taught by Kinkel.
As to claim 2, Gao C teaches the utility of R1 and R2 being Formula A, and is therefore an obvious modification of Gao C (para. 0034-0035).
As to claim 3, Gao C teaches the complex may be Formula IIIb (para. 0089-0090), which meets Formula III, or Formula IIa, which meets recited Formula III” (paras. 0045-0046), and as such, these structures are an obvious modification suggested by Gao C.
As to claims 4 and 7, Gao C teaches the recited substituents required by claims 4 and 7 (paras. 0092-0125), and thus these are an obvious modification suggested by Gao C.
As to claims 5 and 8, Gao C teaches the recited substituents required by claims 5 and 8 (paras. 0046-0079), and are therefore an obvious modification suggested by Gao C.
As to claim 6, Gao C teaches the recited substituents (para. 0040), and thus these substituents are obvious as suggested by Gao C.
As to claim 9, Gao C teaches the diimine metal complex may be formula Ic, which meets recited Formula IV (paras. 0126-0127), and therefore this structure is an obvious modification suggested by Gao C.
As to claim 10, Gao C suggests R1 and R2 being Formula A (para. 0128), and is thus an obvious modification suggested by Gao C.
As to claim 11, Gao C suggests the structure of the diimine metal complex being Formula IIIc (paras. 0135-0136), which meets Formula V as recited, and is thus an obvious modification suggested by Gao C.
As to claim 12, Gao C teaches the recited groups (para. 0137), and is therefore an obvious modification suggested by Gao C.
As to claim 13, Gao C teaches the recited substituents (para. 0134), and are therefore an obvious modification suggested by Gao C.
As to claim 14, Gao C teaches the recited configurations for Formula IIIc (same as recited Formula V) (paras. 0142-0169), and are thus obvious modifications suggested by Gao C.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 103 as being obvious over WO 2021/083330 A1 (“Gao D”) in view of US 3,736,305 (“Kinkel”).
The applied reference Gao D has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The applied reference has a common applicant and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The citations to Gao D are to English language equivalent US 2023/0002432.
As to claim 1, Gao D teaches a process for olefin polymerization in the presence of a diamine metal complex as main catalyst (abstract). Gao D in particular teaches a diamine metal complex of Formula I (paras. 0007-0008) that meets the recitation of Formula I’ in claim 1.
Gao D does not exemplify, but teaches that the polymerization may be copolymerized with a polar monomer (para. 0204). Kinkel teaches copolymers of ethylene with polar monomers, including unsaturated carboxylic esters (2:27-34), and teaches that such products are suitable for purposes such as adhesives and sheeting (3:65-70). As such, the polymerization of ethylene with polar monomers, including unsaturated carboxylic ester monomers, is obvious as suitable for various end uses as taught by Kinkel.
As to claim 2, Gao D teaches the utility of R1 and R2 being Formula A, and is therefore an obvious modification of Gao C (para. 0009-0010).
As to claim 3, Gao D teaches the complex may be Formula III (para. 0020-0021), which meets Formula III’ as recited and as such, these structures are an obvious modification suggested by Gao D.
As to claims 4 and 7, Gao D teaches the recited substituents required by claims 4 and 7 (paras. 0022, 0024-0057), and thus these are an obvious modification suggested by Gao D.
As to claim 6, Gao D teaches the recited substituents (para. 0016), and thus these substituents are obvious as suggested by Gao D.
Claims 2, 6, and 17 are rejected under 35 U.S.C. 103 as being obvious over CN 112745429 A (“Gao E”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
As to claim 2, the discussion of Gao E with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao E teaches that R1 and R2 may be formula A (paras. 0009-0011), and thus is an obvious modification suggested by Gao E.
As to claim 6, the discussion of Gao E with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao E teaches R1 and R2 may be Formula A with the recited substituents (paras. 0009-0011), and thus is an obvious modification suggested by Gao E.
As to claim 17, the discussion of Gao E with respect to claim 15 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao E teaches polymerization in alkanes, especially n-hexane (see examples), and as such, is an obvious modification suggested by Gao E.
Claims 2, 6, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 112745430 A (“Gao G”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
As to claim 2, the discussion of Gao G with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao E teaches that R1 and R2 may be formula A (paras. 0009-0011), and thus is an obvious modification suggested by Gao G.
As to claim 6, the discussion of Gao G with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao G teaches R1 and R2 may be Formula A with the recited substituents (paras. 0009-0011), and thus is an obvious modification suggested by Gao G.
As to claim 17, the discussion of Gao G with respect to claim 15 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao G teaches polymerization in alkanes, especially n-hexane (see examples), and as such, is an obvious modification suggested by Gao G.
Claims 2, 6, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 113754812 A (“Gao I”).
The applied reference has a common inventor with the instant application. Based upon the earlier publication date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(1). This rejection under 35 U.S.C. 102(a)(1) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(1(A); or (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(1)(B) if the same invention is not being claimed.
Applicant cannot rely upon the certified copy of the foreign priority applications to overcome this rejection because a translation of said applications have not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
As to claim 2, the discussion of Gao I with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao I teaches that R1 and R2 may be formula A (paras. 0011-0014), and thus is an obvious modification suggested by Gao I.
As to claim 6, the discussion of Gao I with respect to claim 1 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao I teaches R1 and R2 may be Formula A with the recited substituents (paras. 0011-0014), and thus is an obvious modification suggested by Gao I.
As to claim 17, the discussion of Gao I with respect to claim 15 is incorporated by reference. While not specifically exemplified with the recited monomer, Gao I teaches polymerization in alkanes, especially n-hexane (see examples), and as such, is an obvious modification suggested by Gao I.
Double Patenting
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.
Claims 1-4, 6, 7, and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 11, 14, 16 of U.S. Patent No. 12,428,505. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 recites a method of copolymerizing an olefin and polar monomer, the polar monomer of Formula G’ meeting the carboxylic ester formula G of claims 15 and 15, and thus presumed to be an unsaturated carboxylic ester as required by claims 1, 15, and 16, in the presence of a main catalyst of Formula I’ having the same recited formula as required in claim 1, with the substituents required by claim 6. Patented claim 9 recites a diamine complex therein the R1 and R2 of Formula I of claim 1 and having the recited Formula A of claim 2. Patented claim 14 recites a diamine structure of claim 3, with the substituents R1-R11 as required by claims 3 and 4. Patented claim 16 recites the species required by claim 7. Patented claim 9 recites a diamine complex therein the R1 and R2 of Formula I of claim 1 and having the recited Formula A of claim 2. Patented claim 9 also recites a diamine metal complex meeting the requirement of claims 9-11. Patented claim 11 meets the specific embodiments required by claim 12-14.
Conclusion
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
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