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 .
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.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 10-11, 14, and 16-19 of copending application serial no. 18/690,474. Although the claims at issue are not identical, they are not patentably distinct from each other.
US ‘474 claims activator complexes and catalyst systems comprising activators that are according to the presently recited chemical formulas (e.g. see claim 17 of US ‘474). Claim 17 of US ‘474 reads on present claim 19 in an anticipatory manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections – 35 U.S.C. § 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 of this title, 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 1-6 and 20-23 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2008/0045406 A1 (herein “McKay”) in view of WO 2011/156892 A2 (herein “Krzywicki”).
As to claims 1, 3-6, and 20-23: McKay describes catalysts for olefin polymerization comprising an ionic activator (see the abstract). McKay describes a polymerization process (see ¶¶ [0095]-[0103]) comprising contacting ethylene with a catalyst (e.g. see Catalyst B in ¶¶ [0080]-[0081]) comprising (pentafluorophenylcyclopentadienyl)(tri-t-butylphosphinimido) titanium dichloride (see ¶ [0081]), corresponding to the presently recited procatalyst, and (C18H37)2CH3NH (C6F5)3B(C6H4OH) (id.), corresponding to the presently recited activator.
The cited exemplary processes are gas phase polymerizations (see ¶¶ [0095], [0097], and [0101]). McKay further discloses (see ¶ [0071]) that the catalysts described therein may be used for the polymerization of olefins in solution, slurry or the gas phase.
McKay does not specifically disclose an embodiment of a solution polymerization with the cited catalyst at a temperature of 120 to 200 °C.
In light of McKay’s disclosure that the catalysts described therein may be used for the polymerization of olefins in solution, slurry or the gas phase, one of ordinary skill in the art would have been motivated to perform polymerizations using McKay’s catalyst in any of these types of polymerizations, including a solution polymerization.
Krzywicki discloses that the polymerization temperature in a conventional solution process is from about 80 °C to about 300 °C (preferably from about 120 °C to 250 °C). The upper temperature limit will be influenced by considerations which are well known to those skilled in the art, such as a desire to maximize operating temperature (so as to reduce solution viscosity) while still maintaining good polymer properties (as increased polymerization temperatures generally reduce the molecular weight of the polymer).
In light of Krzywicki, one of ordinary skill in the art would have been motivated to perform McKay’s solution polymerization at a temperature of about 120 °C to 250 °C, including temperatures which overlap the presently recited range of 120 °C to 200 °C, based upon the desired solution viscosity and molecular weight of the resulting polymer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed McKay’s solution polymerization at a temperature of 120 °C to 200 °C.
As to claim 2: The cited anion of McKay ((C6F5)3B(C6H4OH)) is presently disclosed as an example of an activator (top-right of Spec. p. 15). Because McKay’s anion is the same as one of the presently disclosed anions, there is a reasonable basis to conclude that it would have the same physical properties as the presently disclosed anions, including the same amount of decomposition by thermal gravimetric analysis.
Claim Objections
Claim 9 is objected to because of the following informalities.
Claim 9 recites the phrase “formal change”, and the term “change” appears to be a misspelling of “charge”.
Appropriate correction is required.
Allowable Subject Matter
Claims 8, 10-11, 14, and 17-18 are allowed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
Prosecution Insights