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 .
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 2, 7, and 9 are 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 2 recites limitations regarding the chemical formulas recited in base claim 1. In particular, claim 2 recites that “X is halogen or C1-20 alkyl, respectively” and that “R1 to R10 are hydrogen, substituted or unsubstituted C1-20 alkyl, substituted or unsubstituted C2-20 alkenyl, or substituted or unsubstituted C6-20 aryl, respectively.”
Regarding the former limitation: the term “respectively” is a reference to plural entities having different identities, but the claim previously only recites a singular moiety “X”. The claim does not set forth with reasonable clarity which group(s) are permitted for each of the moieties X that occur in the chemical formulas of base claim 1.
Regarding the latter limitation: the term “respectively” is a reference to plural entities having different identities, and the claim recites moieties R1 to R10 (ten moieties). The subsequent list of moieties from which R1 to R10 are selected includes only four groups of moieties. Because of the mismatch among the number of moieties of R1 to R10 and the number of groups from which they may be selected, the claim does not set forth with reasonable clarity which group(s) are permitted for each of the moieties R1 to R10 that occur in the chemical formulas of base claim 1.
As to claims 7 and 9: Claim 7 recites “the transition metal compound”. Independent claim 1 requires both a first and a second transition metal compounds. Claim 7 does not set forth with reasonable clarity which of the transition metal compounds is being referred to in the limitation “the transition metal compound”. Claim 9 also recites “the transition metal compound” and is indefinite for the same reason.
Claim Rejections – 35 U.S.C. § 102
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 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.
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.
Claims 1-15 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by WO 2022/131693 A1 (herein “Kim”). US 2024/0059816 A1 is referred to herein as an English translation if Kim.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
As to claims 1-4, 10-12, and 14-15: Kim describes methods (see Examples 1 and 3 in Tables 1-2) comprising polymerizing ethylene and hexene at 74.8 and 83.6 °C, respectively, in the presence of catalysts 1-2 and 3-1 (see ¶¶ [0049] and [0085]) which are according to the presently recited chemical formulas 1-1 and 3-1, respectively. The products have densities of 0.9210 and 0.9197 g/cm3; MI2.16 values of 1.11 and 0.99 g/10 min; and ratios of MI21.6/MI2.16 of 25.05 and 21.01, respectively, and these values fall within the scope of the presently recited inequality.
As to claims 5-9 and 13: The further limitations of the present claims are adequately set forth in ¶ [0086]-[0087] of Kim.
Claims 14-15 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US 2021/0284770 A1 (herein “Boller”).
As to claims 14-15: Boller describes a copolymer of ethylene and 1-hexene (see A0 in ¶ [0126] and Table 1b) having a density of 0.918 g/cm3 (see Table 1b); an MI2.16 of 1.1 g/10 min (see Table 2a); and a ratio of MI21.6/MI2.16 of 21 (see Table 1b), and this value falls within the scope of the inequality that is recited in base claim 1.
The present claim is drafted as a product-by-process. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production (MPEP 2113). The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process.
The presently recited process step of polymerizing in the presence of two transition metal compounds refer to the manner of making the claimed polymer rather than any particular structural characteristics of polymer. Because no criticality of the process steps to the structure of the polymer has been demonstrated, the claim stands properly anticipated by Boller, notwithstanding any difference in the method by which Boller’s polymer is made.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US 2020/0231717 A1 (herein “Kim”).
As to claims 1-3 and 10-14: Kim describes Kim describes a method (see Example 1-11 in Table 6 and ¶ [0100]) comprising gas phase polymerizing ethylene and hexene at 75 °C in the presence (see Table 4) of catalysts (n-PrCp)2HfCl2 and (pentamethylcyclopentadienyl)(indenyl)zirconium dichloride (see Table 3 and ¶¶ [0084]-[0085]) which are according to the presently recited chemical formulas. The product has a density of 0.9290 g/cm3; an MI2.16 value of 0.75 g/10 min; and a ratio of MI21.6/MI2.16 of 25.03 (see Table 6), and these values fall within the scope of the presently recited inequality.
As to claims 5-9: The further limitations of the present claims are adequately set forth in Table 3 of Kim.
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but it would be allowable if written in independent form.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) 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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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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