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.
Priority
3. This application is a 371 of PCT/GB2022/051161 05/06/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application UNITED KINGDOM 2106577.6 05/07/2021 filed on 11/01/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 11/01/23 and 12/04/23 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-17 and species: the structure of claim 16 in the reply filed on 06/29/26 is acknowledged. Search extended to the non-elected species.
Claims 1-20 are pending. Claims 18-20 have been withdrawn in an amendment filed on 06/29/26. Claims 1-17 are examined in this Office action.
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 1-17 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-7, 9-10, 12, 17, 18, 20 of copending Application No. 18/558370 (amendment filed on 05/17/24). Although the claims at issue are not identical, they are not patentably distinct from each other because regarding instant claims 1, 8, 11, 14-16, the copending claim 20, require all the limitations of claims 1, 18, disclose a process for preparation of polyolefin by polymerizing olefin in the presence of catalyst, wherein the olefin comprises alpha olefin having 3-10 carbons and ethylene, encompasses claimed polypropylene, wherein the copending claim discloses the same catalyst structure as instant claims 1, 8, 11, 14-16.
Instant claims 2-7, 9-10, 12-13 and copending claims 2-7, 9-10, 12-13 are same.
Regarding instant claim 17, copending claim 17 discloses polymethyl-aluminoxane.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Potential Allowable Subject Matter
9. Claims 1-17 are declared allowable over the prior art of record and if the obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
10. The following is an examiner’s statement of reasons for allowance:
The closest prior arts are Canich (US 5723560), Canich (US 5420217; hereinafter called “Canich-1”), Bulychev (WO 2005/097838), and O'Hare (US 2019/0135953).
Canich discloses polymerization (Example 4) involving the preparation of an atactic polypropylene having an Mw of 1318700 g/mol and a PDI of 1.96. The production process employs MAO and Me2Si(C5Me4)(NC12H23)TiCl2 (as prepared in Example B). Canich does not disclose claimed catalyst.
Canich-1 discloses in polymerization (Example III) involving the preparation of an amorphous polypropylene having an Mw of 1255000 g/mol and a PDI of 1.90. The production process employs MAO and Me₂Si(C5Me₄)(NC₁₂H₂₃)TiCl₂ (as prepared in Example B). Canich-1 does not disclose claimed catalyst.
Bulychev discloses (Example 5) polypropylene of an atactic microstructure (see
pentad sequence) and of a molecular weight of 1200000 g/mol. The PDI of
said polymer is identified as 7.6, and the catalyst used for the polymerization is bis[3,5-di-tert-salicylidene-((E)-2- ((3-(bis(5-methylfuran-2-yl)methyl)anilinato]titanium(IV) dichloride. Bulychev does not disclose claimed catalyst.
O'Hare disclose the compound Me₂Si(Ind*)(t-BuN)TiCl₂. The prior art of record does not teach or suggest claimed features.
Conclusion
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).
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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