DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 15 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 15 is drawn to a compound composition comprising an EPDM copolymer, wherein the compound composition has a compression set of 50 % or less in accordance with ASTM D-395. Claim 20 is drawn to a copolymer (EPDM copolymer) comprising propylene, ethylene, and ENB and having a compression set ranging from 40 to 50 % in accordance with ASTM D-395. The specification was consulted for guidance. The disclosure at paragraph [00123] and Table 2 reveals that it is a polymer composition comprising claimed EPDM copolymer, not the EPDM copolymer alone (as indicated in claim 20), that exhibits claimed compression set. Furthermore, it is not the genera of compound composition that exhibits claimed compression set, but rather a specific composition comprising 80 parts by weight of N550 carbon black, based on 100 parts by weight of EPDM copolymer, that has been cured in the presence of sulfur and ZnO, 2-MBT, and TMTD accelerators. Based on these facts, it is deemed that the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claim 15 and that the specification does not reasonably provide enablement for claimed EPDM copolymer having a compression set in a range set forth in instant claim 20. Accordingly, claims are rejected for failing to comply with the enablement requirement.
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 1 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 recites a step of adding the catalyst modifier before injecting VOCl3 or adding VOCl3 and the catalyst modifier simultaneously. It is unclear to what the catalyst modifier or the combination of VOCl3 and catalyst modifier are added. The catalyst modifier or combination of VOCl3 and catalyst modifier may be added to a reactor, to the ethylaluminum cocatalyst, or to a monomer mixture. Without qualification, one of ordinary skill in the art would not be apprised of the exact steps required to carry out claimed method.
Claim 12 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 recites a content of propylene, ethylene, and 5-ethylidene-2-norbornene monomer “in the polymerization”. It is unclear whether ranges set forth in the claim reflect the quantity of monomer introduced into the reactor, and thus “in the polymerization”, or whether the ranges reflect the quantity of polymerized units in the EPDM copolymer, as described in claim 16.
Claim 20 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 is drawn to a copolymer (EPDM copolymer) comprising propylene, ethylene, and ENB and having a compression set ranging from 40 to 50 % in accordance with ASTM D-395. A rheological measurement is meaningless without indication conditions under which the measurement was taken. ASTM D-395 comprises three types of method of measurement. Method B is carried out under a constant deflection of 25 % of the sample’s original thickness at a particular test temperature and for a set time in a range of 22 to 70 hours. Without designating the temperature at which, and the time in which, the measurement is performed, one of ordinary skill in the art would not be reasonably assess and characterize the EPDM copolymer of the invention.
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 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.
Claims 13, 14, 16, 17, and 19 are rejected under 35 U.S.C. 102 as being anticipated by Floyd et al. (US 5,229,478).
Example 28 in Table 1B of Floyd et al. discloses an EPDM copolymer comprising 58.70 wt % of units derived from ethylene, 32.4 wt % of units derived from propylene, and 8.90 wt % of units derived from ethylidene norbornene. The EPDM copolymer has a weight average molecular weight Mw of 291,000 and a molecular weight distribution Mw/Mn of 2.6.
Present claims 13 and 14 are drawn to an EPDM copolymer 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).
Claims 13, 14, and 16-18 are rejected under 35 U.S.C. 102 as being anticipated by Inoue et al. (EP 0 566 490).
Example 4 of Inoue et al. discloses an EPDM copolymer comprising 61.9 wt % of units derived from ethylene, 29.4 wt % of units derived from propylene, and 8.7 wt % of units derived from ethylidene norbornene. The EPDM copolymer has residual vanadium content of 19.9 ppm and a molecular weight distribution Mw/Mn of 2.6.
Present claims 13 and 14 are drawn to an EPDM copolymer 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).
Claims 1-4, 7, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bordeianu et al. (US 5,502,125).
Bordeianu et al. teaches preparation of an EPDM copolymer comprising polymerizing ethylene, propylene, and ethylidene norbornene in the presence of a catalyst composition comprising VOCl3, ethylaluminum sesquichloride, and n-butylamine (col. 3, line 7). One of ordinary skill in the art would have found it obvious to place the catalyst composition into the reactor prior to adding monomers to the reactor. One of ordinary skill in the art also would have found it obvious to inject the catalyst components simultaneously (such that VOCl3 and n-butylamine are added together) into a reactor or individually and sequentially into a reactor. With respect to the latter, the selection of any order of performing process steps is prima facie obvious in absence of new or unexpected results. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA, 1930). Thus, it would have been obvious to carry out the method of claim 1 by loading the reactor with catalyst components by adding in order, n-butylamine, VOCl3 and ethylaluminum sesquichloride. In light of the fact that this polymerization process is substantially the same as that described in claim, one of ordinary skill in the art would have expected a resulting EPDM copolymer to be susbstantially the same as that recited in claims 2-4.
Subject of remaining claims 9-12 is also obvious over prior art teaches solution polymerization using an alkane solvent such as pentane or hexane (col. 2, line 62). The polymerization reaction is carried out at 50 ºC (col. 3, line 20). The EPDM copolymer has an ethylene content in a range of 25 to 85 wt %, and preferably 40 to 75 wt % for rubbery copolymer (col. 2, line 36), and the ethylidene norbornene content is in a range of 1 to 10 wt % (col. 2, line 45).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bordeianu et al. (US 5,502,125) in view of Floyd et al. (US 5,229,478).
The discussion of the disclosure of the prior art from the preceding paragraph is incorporated here by reference. Whereas the polymerization is carried out in lab scale equipment, one of ordinary skill would have found it obvious from Floyd et al. to carry out polymerization as a batch-wise polymerization or in a continuous polymerization for industrial applications (col. 10, line 53).
Claims 5 and 6 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all limitations of the base claim and any intervening claims. Bordeianu et al. does not teach or render obvious use of a ratio of catalyst modifier to VOCl3 set forth in instant claims.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIP A LEE/Primary Examiner, Art Unit 1762 September 12, 2026
Prosecution Insights