DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 12/22/2023. Following entry of the preliminary amendment filed 01/09/2024, amended claims 1-15 and new claims 16-20 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 12/22/2023, 03/08/2024, 10/17/2025, 04/02/2026 and 04/24/2026 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objection – Specification
The disclosure is objected to because of the following informalities:
Referring to page 36, a clerical error is noted in line 20: “chrushing” should presumably read –crushing--.
Referring to the description of Comparative Catalyst Example 1 (C-CE1) and Comparative Catalyst Example 2 (C-CE2) on pages 39-44, it is noted that for C-CE2, Table 1 reports a compressive strength of 8.09 MPa, which is according to present claims 4, 9 and 20; while Table 3 reports lognormal distribution scale parameters of 0.450 and 0.490 for corresponding Comparative Process Examples CPE1 and CPE2, respectively, which is according to present claims 1 and 15 (re: CPE1/C-CE1). As these examples fall within the ambit of the pending claims, it is unclear how CPE1/C-CE1 and CPE2/C-CE2 are intended to serve as comparative embodiments vis-à-vis the claimed invention. Clarification, at least by way of explanation, is required.
Objection – Claims
Claim 7 is objected to because of the following informalities: reference notation “(XII’’)” following the structural formula in line 3 should read –(XII’)-- (single prime mark) to agree with the antecedent notation used to introduce the same formula (cf., line 2).
Common Ownership Notice
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.
Claim Rejections – 35 U.S.C. 102/103
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kipiani et al (US 2024/0002560 A1; relying on 07/23/2020 foreign priority date) (‘Kipiani’).
The applied reference has a common 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 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); 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 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. See generally MPEP § 717.02.
Regarding Claims 1-2, 4-7, 9-11, 14-16 and 20: Kipiani is directed to a process for the preparation of a multimodal polyethylene polymer using a particular metallocene (i.e., single-site) polymerization catalyst (see ¶ [0001]). The process generally comprises polymerizing olefins in a plurality of polymerization reactors connected in series according to disclosed steps (I) and (II), which correspond respectively to instant steps a) and b) as recited in claim 2 (see ¶¶ [0020]-[0035] and [0438]-[0439]). Kipiani in Example IE1-1 (see [0607] (Table 1)) describes a multi-stage ethylene copolymerization in presence of Catalyst IC1-1, comprising metallocene complex MC1.
Kipiani does not explicitly characterize the polymerization catalyst or the ethylene copolymer product in terms of compressive strength or lognormal distribution scale parameter, respectively.
Nevertheless, it can be seen that the metallocene complex MC1 is a species under instant formula (XII’) [for claim 7] where each X is a halogen atom (-Cl); L is a (RdRe)Si group; Rd is a C1-10 alkyl group (methyl); Re is a C3-10 alkenyl (1-pentenyl); each R1 is the same or different and is a -Si(R)3 group; each R is a C1-10 alkyl or phenyl group optionally substituted by 1 to 3 C1-6 alkyl groups (each R is methyl) (see [0593]). And as instant formula (XII’) expresses a subgenus subsumed by instant formulae (I) and (X), the metallocene MC1 also is according to present claims 5-6 and 10-11. Further, the metallocene complex MC1 also comprises a cocatalyst (Methylaluminoxane solution) and a support (pre-treated silica carrier) [for claim 9] and was prepared by a One-Step Catalyst Preparation Method similar to that used to prepare Applicant’s Catalyst Example 1 C-IE1 (cf., Spec., p. 40, lines 15-23).
In view of the similarity in both preparation method and ultimate catalyst composition between Kipiani and the invention as described herein, there is a plausible basis for finding that the metallocene MC1 intrinsically possesses a compressive strength of at least 5 MPa [for claims 4, 9] or from 6 to 25 MPa {for claim 20]. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). Further, as the metallocene MC1 of Kipiani is used in a multistage copolymerization method according to claim 2 (which also qualifies as a “method of use,” per claim 14), it is reasonable to presume that the resulting polyethylene copolymer will inherently possess a lognormal distribution having a scale parameter as claimed [for claims 1, 15-16], absent probative evidence to the contrary.
Regarding Claims 3, 12 and 19: Kapiani in Example IE1-1 further discloses an Al/Zr ratio (mol/mol) of 137 (see ¶ [0607] (Table 1)), which falls well within each of the respective ranges claimed for ratio of the cocatalyst (ii) to the transition metal complex (i).
Regarding Claim 8, Kapiani further discloses that, preferably, the multimodal polymer is produced in at least two-stage polymerization using, for example, two slurry reactors or two gas phase reactors, or any combinations thereof (see ¶ [0438]). A such, Kapiani would have fairly suggested to one of ordinary skill in the art to modify the ethylene copolymerization method of Example IE1-1 by performing by the slurry phase polymerization stage (i.e., claimed step a)) in at least two slurry reactors, as claimed.
Regarding Claim 13, Kapiani discloses the single-site polymerization catalyst as claimed in claim 9 as discussed above. Kapiani further discloses wherein the cocatalyst (ii) is of formula (A) (see ¶¶ [0300]-[0302]), which essentially corresponds to formula (ii-I) as claimed.
Regarding Claims 17-18, Kapiani discloses the process of claim 2 as discussed above, wherein step a) is performed in slurry phase and step b) is performed in gas phase (see ¶¶ [0604]-[0605]).
Claims 1, 3-5, 9-10, 12, 14-16 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP201618333A (‘JP ‘333’) (citing infra to machine-generated translation, furnished herewith).
Regarding Claims 1, 3-5, 9-10, 12, 16 and 20: JP ‘333 relates to multimodal polyethylene (see [0017]), which is prepared by a multi-stage process (see ¶¶ [0072], [0083]-[0085]). The catalyst used in general has a monocyclic or polycyclic heteroaromatic group as a substituent on a conjugated five-
membered ring structure ligand (see ¶ [0055]). In the examples, silica-supported dimethylsilylenebis [1,1 '- {2- (2- (5-methyl) furyl)-4-(p-isopropylphenyl) -indenyl}] zirconium dichloride on silica/methylaluminoxane (Metallocene Catalyst A) is used in combination with methylaluminoxane as co-catalyst to produce ethylene-1-hexene copolymer (see ¶¶ [0102] and [0105]-[0107] (Example 1)).
JP ‘333 does not explicitly characterize the polymerization catalyst or the ethylene copolymer product in terms of compressive strength or lognormal distribution scale parameter, respectively.
Nevertheless, it can be seen that the Metallocene catalyst A is a species under instant formula (I) where each X is -Cl (as sigma donor ligand); L is a Si-based divalent bridge; M is Zr; Het is a monocyclic heterocyclic containing at least one heteroatom selected from O; R1 is a phenyl group substituted by 1 C1-6 alkyl group (isopropyl); each n is 1; each R2 is the same and is a C1-10 alkyl group (methyl); and each p is 1. As such, JP ‘333 describes a single-site catalyst according to present claims 1, 3, 5 and 9, and its use in a process for polymerizing olefins (or “method of use”) according to claims 1 and 14. Therefore, it is reasonable to presume as a prima facie matter that the scale parameter and the compressive strength limitations of present claims 1, 4, 14-16 and 20 are implicitly met by the aforementioned ethylene copolymer and Metallocene Catalyst A, respectively, of JP ‘333.
Where, as here, a reference discloses all the limitations of a claim except for a property or function, and examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to applicant. See, In re Fitzgerald et al, 205 USPQ 594, 596 (CCPA 1980) and MPEP 2112(III).
Claims 1, 4, 9 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tanaka (WO 2020/179650 A1; citing infra to English language counterpart, US 2020/0162355 A1).
Regarding Claims 1, 4, 9 and 14-16: Tanaka is directed polyethylene powder and a molded article obtained by molding the same (see ¶ [0001]). As a method for producing the polyethylene powder, Tanaka generally discloses a multi-stage polymerization of ethylene in the presence of a catalyst in two or more stages in which the reaction conditions are different and wherein a preferred catalyst includes a metallocene (i.e., single-site) catalyst (see ¶¶ [0073]-[0074]). Tanaka in Example 7 details production of polyethylene powder in the presence of a supported metallocene catalyst component [D] (see ¶¶ [0152], [0163] (Table 1)). Said component [D], which comprises a transition metal (Ti) complex, a cocatalyst (triethylaluminum) and a support (silica), is characterized by a compressive strength of 5.9 MPa (see ¶ [0139]).
It is noted that Tanaka measures compressive strength using the same micro-compressive tester as in the present invention, viz., testing machine MCT-510, albeit under slightly different measurement conditions (see ¶ [0102] and cf., page 36, line 20 et seq. of instant specification). Nevertheless, the recitation “determined as described in the experimental part,” in present claims 4 and 9 amounts to a product-by-process limitation on conditions for determining compressive strength of the single-site polymerization catalyst and there is no record evidence indicating the compressive strength of Tanaka’s component [D] would differ materially if determined as described herein, rather than under the reference conditions. Absent such evidence, Tanaka’s component [D] is considered to possess a compressive strength as claimed.
Further as to claims 1 and 14-16, it is acknowledged that Tanaka is silent as to scale parameter of the polyethylene powder; however, given that this parameter is a function of compressive strength of the olefin polymerization catalyst (cf., Spec., page 43, line 31 et seq.), it is plausible to infer that the requisite scale parameter is implicitly met by Tanaka’s polyethylene powder produced using said component [D] as per Example 7 thereof.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Takemori et al (US 6787616 B2) (‘Takemori’).
Regarding Claim 15, Takemori is directed to a silica-supported single-site catalyst for olefin polymerization (see claims 1, 2). Examples 1-11 thereof describe preparation of polyethylene in the presence of said catalyst in combination with aluminoxanes as co-catalyst. Although silent as to scale parameter of the polyethylene powder, Takemori describes the obtained polymers as having a narrow particle size distribution and excellent powder properties such as low content of large particles and fine powder (see col. 33, lines 51-62). In the present invention, a lognormal distribution having a scale parameter of less than 0.5 is similarly associated with a narrow particle size distribution (cf., Spec., page 1, lines 9-12 and page 31 lines 5-8). Further, it is not apparent from the present record that a scale parameter of less than 0.5 characterizes a particle size distribution distinct from that described by Takemori. Accordingly, it must be presumed as a prima facie matter that the polyethylene powder of Takemori intrinsically possesses a scale parameter within the claimed range, and the burden of proof is properly shifted to Applicant to show otherwise. See, Fitzgerald et al, supra, and MPEP 2112(III).
Claims 1, 3-4, 9, 14-16 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sagae et al (US 6048817) (‘Sagae’).
Regarding Claims 1, 4, 9, 14-16 and 20: Sagae relates to a particular phyllosilicate mixture and use thereof as a catalyst carrier or support (see Abs. and col. 1, lines 6-24). Sagae generally describes a catalyst component for polymerizing olefins, comprising:
Component (A) which is a metallocene compound of a transition metal;
Component (B) which is a particulate phyllosilicate mixture comprising a phyllosilicate of the smectite group and a phyllosilicate of the mica group, the former comprising 0.1 to 50% by weight of the phyllosilicate mixture; and
Component (C) which is an organoaluminum compound
(Sagae: Col. 3, lines 40-53)
Sagae teaches that the phyllosilicate mixture meets certain requirements (a) to (c), with requirement (b) being a crushing strength of the particle of not less that 0.5 MPa as measured with a microcompression tester (see col. 3, line 58 to col. 4, line 2). Crushing strength in Sagae is a value determined by measuring the crushing strength of any 10 particles or more by means of a microcompression tester "MCTM-500," manufactured by Shimadzu Seisakusho Ltd. and calculating the average value, of the measurements, as the crushing strength (see col. 5, lines 16-20). According to the present invention, compressive strength may be determined by measuring the individual crushing strength of any 10 particles or more, e.g. exactly 10 particles, by means of a compression tester typically under inert atmosphere and calculating an average value of the measurements as the compressive strength of the polymerisation catalyst (cf., Spec., page 10, lines 24-27). In view of the similarity in measurement conditions, crushing strength in Sagae is fairly equated to compressive strength of the instant single-site polymerization catalyst. Furthermore, Sagae in Examples 8a/2a and 2c (see cols. 26 and 31) describes copolymerizing ethylene with butene in the presence of a supported metallocene catalyst wherein the support/carrier is a particulate phyllosilicate mixture with the particles having a crushing strength of 9.4 MPa. Therefore, one would expect the overall supported catalyst component used in said examples to possess the same or substantially identical crushing strength, which is considered to correlate to a compressive strength of at least 5 MPa [for claims 1, 4, 9] or from 6 to 25 MPa [for claim 20].
Further as to claims 1 and 14-16, it is acknowledged that Sagae is silent as to scale parameter of the obtained polyethylene copolymer powder; however, given that this parameter is a function of the compressive strength of the olefin polymerization catalyst (cf., Spec., page 43, line 31 et seq.) and that the supported metallocene catalyst used in Sagae Examples 8a and 2c contains a carrier with a crushing strength indicative of a compressive strength as claimed, a plausible basis exists to infer that the requisite scale parameter is implicitly met by the polyethylene copolymer powder produced in those examples, absent objective evidence to the contrary.
Regarding Claims 3 and 19, Sagae discloses, at least implicitly, the process as claimed in claim 1 as discussed above. Sagae does not specifically disclose wherein the ratio of the cocatalyst (ii) to the transition metal complex (i) is greater than 50 mol/mol [claim 3] or from 60 to 200 mol/mol [claim 19]. However, Sagae broadly teaches that when the amount of the catalytic components incorporated is expressed in terms of the transition metal in the metallocene compound to the atomic ratio of aluminum in the organoaluminum, the ratio is 1: not more than 1,000,000, preferably 1:0.1 to 10,000 (see col. 21, lines 5-9). The disclosed ratio ranges substantially overlap those recited in said claims for the corresponding parameter, and it has consistently been held that even a slight overlap in ranges establishes a prima facie case of obviousness. See MPEP 2144.05. Accordingly, the overall process claimed would have been obvious to one of ordinary skill in the art prior to the date of effective filing, given the prima facie obviousness of selecting the overlapping portion, of the range taught in the prior art and the range claimed by the applicant; see In re Woodruff, 16 USPQ2d 1936.
Conclusion
Claims 1-20 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-02-26
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