DETAILED ACTION
Claim Objections
Claims 2-9 are objected to because of the following informalities: In line 1 of each claim, please replace “as described in” with “of” or “according to”. Appropriate corrections are required.
Claim 6 is objected to because of the following informalities: In line 2, please replace “the weight” with “a weight”.
Claim 8 is objected to because of the following informalities: In line 2, please replace “meets” with “has”.
Claim 8 is objected to because of the following informalities: On page 4, line 1, please replace “a zirconium ion” “zirconium”.
Claim 8 is objected to because of the following informalities: On page 4, line 1, please replace “a hafnium ion” “hafnium”.
Claim 8 is objected to because of the following informalities: On page 4, line 2, please replace “refers to” with “is” (two occurrences).
Claim 8 is objected to because of the following informalities: On page 4, line 3, please replace “refers to” with “is” (two occurrences).
Claim 9 is objected to because of the following informalities: In line 4, please replace “the total” with “a total”.
Claim 10 is objected to because of the following informalities: In line 4, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: In line 4, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: In line 1, please replace “the temperature” with “a temperature”.
Claim 12 is objected to because of the following informalities: In line 1, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: Claim appears to depend from claim 10 instead of claim 1 because the term “gas phase polymerization” is recited in line 7 of claim 10.
Claim 12 is objected to because of the following informalities: In line 2, delete “step”.
Claim 12 is objected to because of the following informalities: In line 3, please replace “the diluent” with “a diluent”.
Claim 13 is objected to because of the following informalities: In line 1, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: Claim appears to depend from claim 10 instead of claim 1 because claim describes steps described in the process of claim 10.
Claim 13 is objected to because of the following informalities: In line 3, please replace “step” with “reaction”.
Claim 13 is objected to because of the following informalities: In line 3, please replace “the fluidized” with “a fluidized”.
Claim 13 is objected to because of the following informalities: In line 4, delete “step”.
Claim 13 is objected to because of the following informalities: In line 6, please replace “step” with “reaction”.
Claim 13 is objected to because of the following informalities: In line 8, delete “step”.
Claim 14 is objected to because of the following informalities: In line 1, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: In line 1, please replace “as described in” with “of” or “according to”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: In line 1, please replace “the weight ratio” with “a weight ratio”.
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.
Claim 10 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim at lines 3 and 4 refers to a slurry-phase prepolymerization reaction described in claim 1. Format of claim dependency is incorrect because claim 1 is drawn to a process for making a catalytically-active prepolymer composition and not a slurry-phase prepolymerization reaction.
Claim 15 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. It is unclear whether the recitation “In some embodiments … 600:1” is part of claim or a transcription error.
Claim Rejections - 35 USC § 102
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.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 10,301,405).
Example 1 of Wang et al. teaches a polyolefin prepolymer having a pre-polymerization multiplication factor of 65 g polymer/g catalyst. This value lies squarely within the 5 to 600 range set forth in instant claim.
Present claim is drawn to a prepolymer composition that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Allowable Subject Matter
Claim is 1 allowed. Dependent claims 2-14 are not in condition for allowance. Subject of claim is patentably distinct over references cited in Applicant’s PTO-1449 and over prior art listed in the accompanying PTO-892. None of the references teaches the subject of claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 August 14, 2026
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