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 .
Applicant’s preliminary amendment dated 21 December 2023 and supplemental preliminary amendment dated 14 February 2024 are acknowledged. Claims 14-26 as amended in the 14 February 2024 amendment are pending.
Claim Objections
Claims 22-26 are objected to because of the following informalities: In claim 22, “a metallocene-catalysed multimodal polymer (P)” should be “the metallocene-catalysed multimodal polymer (P)”. In claims 23-25, “Film according to claim 22” should be “The film according to claim 22”. In claim 26, “A film” should be “The film”.
Appropriate correction is required.
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 14-26 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.
Claim 14 (from which claims 15-26 depend) recites formula (I) without defining what EXE, XXX, and EXX are in the formula. The next line in claim 14 recites “X being the number of 1-butene branches per 1000 carbon)” and later “wherein X being a number of 1-hexene branches per 1000 carbon”. Nowhere in formula 1 does “X” appear, so it is unclear what is meant by these limitations. The claim also appears to suggest the isolated 1-butene content and isolated 1-hexene content are calculated by the same formula, which is unclear because a person of ordinary skill in the art would understand these to be separate quantities.
Claim 14, in the 8th-9th line from the end, recites the ethylene-1-hexene polymer compound (B). It is unclear whether this refers to the previously recited ethylene-1-hexene polymer component (B).
Claim 16 recites “the ethylene polymer component (A)” in line 3 and “the ethylene polymer component (B)” in line 14. It is unclear whether these refer to the ethylene-1-butene polymer component and the ethylene-1-hexene polymer component recited in claim 14, or some other component.
Claim 17 recites a ratio of the MFR21 to MFR2 in a range. It is unclear whether this refers to the previously recited ratio of claim 14, especially where MFR2 is used in several instances in claim 14.
Claim 18 recites that the total amount of 1-butene may range from 0.1 to 1.0 wt %, and the total amount of 1-hexene may range from 2.0 to 20 wt %. However, the office calculates that claim 14 has a broadest range of total 1-butene from 0.15 to 3.5 wt %, and a broadest range of total 1-hexene from 4.5-17.5 wt % (based on the relative amounts of components A and B, and the amount of 1-butene and 1-hexene in each component). It is unclear how a composition would have a total 1-butene content below 0.15 wt%, or total 1-hexene content below 4.5 wt %.
Claim 20 recites “the ethylene polymer component (A)” in line 2 and “the ethylene polymer component (B)” in line 5. It is unclear whether these refer to the ethylene-1-butene polymer component and the ethylene-1-hexene polymer component recited in claim 14, or some other component.
Claim 24 recites “a sealing initiation temperature determined as described in an experimental part”. This is unclear because no experimental part is recited, and therefore the method for measurement is unknown.
Claim 25 recites several ranges, reciting form example “at least 1000 g to more than 1700 g”. It is unclear to what extent the term “more than 1700 g” limits the recited ranges, if it merely is an additional lower bound or suggests some upper bound.
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 14-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16, 17, 20, 22, 26, 27, and 29 of copending Application No. 18/832,392 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 16 recites metallocene catalyzed multimodal polyethylene copolymer having the recited proportions of components A and B, the same density, same MFR2, and ratio of MFR21/MFR2 as recited for claim 14, as well as the recited isolated 1-butene amounts as recited for claim 14. Copending claim 16 recites the same density and 1-hexene component for component (B) as recited, as well as the same density and 1-butene content for component (A) as recited in claim 14.
Copending claim 16 has a range of greater than 92 % for isolated 1-hexene comonomer unit, which is not the same as the recited equation of claim 14. However, given the limitation on 1-hexene content in component (B), the effective range of 92 wt% or greater is substantially coextensive with the range of claim 14, and is thus an obvious modification.
Copending claim 16 recites a MFR2 range for component (B) that is substantially coextensive with that recited in claim 14, and as such, adjustment into the recited range is an obvious modification within the range of copending claim 16.
Copending claim 16 recites a MFR2 range for component (A) broader than that recited; however, MFR2 range from 2 to 40 g/10 min is an obvious selection within the recited range.
Copending claim 16 does not recite the two separate components A-1 and A-2. However, given their ranges, an ethylene-1-butene component in the range of 930 to 950 kg/m3 and MFR2 of 3 to 20 g/10 min, which are within the ranges of claim 16 for component A, meets the requirements of both A-1 and A-2 and as such, the modification of the polymer of claim 16 within those ranges is an obvious modification within the ranges recited by claim 16 and is equivalent to a composition of A-1 and A-2 as recited for claim 14.
As such, the polymer of claim 14 is an obvious modification within the ranges recited for copending claim 16.
Copending claim 17 teaches the subcomponents A-1 and A-2 having the same density ranges as recited, and reciting MFR2 ranges in the ranges recited for A-1 and A-2. As such, claim 14 is also an obvious modification within the ranges recited by claim 17.
As to claim 15, copending claims 16 and 17 do not state that the polymer is a reactor blend of a 3-stage sequential polymerization. However, this limitation is interpreted as a product by process limitation, for which patentability is determined by the end product. See MPEP 2113. Since the polymer of claim 17 is a combination of three components, it is deemed to have the properties of a three stage polymerization.
As to claim 16, the recited ranges for A-1 and A-2, and A are within the ranges recited for claim 17, and are therefore an obvious modification thereof. The range of MFR2 for components A and B are substantially encompassed by the range of copending claim 17, and is therefore an obvious modification suggested by the recited range.
As to claim 17, the recited range of MFR21/MFR2 of claim 17 is within the range recited by claim 16, and is thus an obvious modification suggested by that range.
As to claim 18, copending claim 20 recites the total amounts of 1-butene and 1-hexene.
As to claim 19, the amounts of 1-butene and 1-hexene recited are within the ranges recited by copending claim 16, and are therefore an obvious modification of those ranges.
As to claim 20, the amounts of component A and B are within the ranges recited by claim 16, and are therefore an obvious modification of those ranges.
As to claim 21, copending claim 22 recites the metallocene complex.
As to claim 22, copending claim 26 recites a film of a polymer blend including the polymer of copending claim 16.
As to claim 23, copending claim 26 recites the polymer blend being at least 55 wt % of the described metallocene copolymer.
As to claims 24 and 25, copending claim 27 recites the sealing initiation temperature and dart drop impact strength.
As to claim 26, copending claim 29 recites the end use of claim 26.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-17, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/855,698 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 8 recites metallocene catalyzed multimodal polyethylene copolymer having the recited proportions of components A and B, the same density, same MFR2, and ratio of MFR21/MFR2 as recited for claim 14, as well as the recited isolated 1-butene and 1-hexene amounts as recited for claim 14. Copending claim 8 recites the same density, MFR2 and 1-hexene component for component (B) as recited, as well as the same density and 1-butene content for component (A) as recited in claim 14.
Copending claim 8 recites a MFR2 range for component (A) broader than that recited; however, MFR2 range from 2 to 40 g/10 min is an obvious selection within the recited range.
Copending claim 8 does not recite the two separate components A-1 and A-2. However, given their ranges, an ethylene-1-butene component in the range of 930 to 950 kg/m3 and MFR2 of 3 to 20 g/10 min, which are within the ranges of claim 16 for component A, meets the requirements of both A-1 and A-2 and as such, the modification of the polymer of claim 16 within those ranges is an obvious modification within the ranges recited by claim 16 and is equivalent to a composition of A-1 and A-2 as recited for claim 14.
As such, the polymer of claim 14 is an obvious modification within the ranges recited for copending claim 8.
As to claim 15, copending claim 8 does not state that the polymer is a reactor blend of a 3-stage sequential polymerization. However, this limitation is interpreted as a product by process limitation, for which patentability is determined by the end product. See MPEP 2113. The polymer as modified is deemed to have the properties of a three stage polymerization.
As to claim 16, the range of MFR2 for components A and B are substantially encompassed by the range of copending claim 8, and is therefore an obvious modification suggested by the recited range. Copending claim 8 does not recite the two separate components A-1 and A-2. However, given their ranges, an ethylene-1-butene component in the range of 935 to 945 kg/m3 and MFR2 of 3.2 to 18 g/10 min, which are within the ranges of claim 16 for component A, meets the requirements of both A-1 and A-2 and as such, the modification of the polymer of claim 16 within those ranges is an obvious modification within the ranges recited by claim 16 and is equivalent to a composition of A-1 and A-2 as recited for claim 14.
As to claim 17, the recited range of MFR21/MFR2 of claim 17 is within the range recited by claim 8, and is thus an obvious modification suggested by that range.
As to claim 19, the amounts of 1-butene and 1-hexene recited are within the ranges recited by copending claim 8, and are therefore an obvious modification of those ranges.
As to claim 20, the amounts of component A and B are within the ranges recited by claim 8, and are therefore an obvious modification of those ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764
Prosecution Insights