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
The following is a quotation 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 1-18 are rejected under 35 U.S.C. § 112(a), because the specification does not reasonably provide enablement for polyethylenes having the recited combination of physical properties. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurately in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to: (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to independent claim 1: the present claims and invention (factors (a)-(b)) are drawn to a polyethylene that is defined by its physical properties, including an physical property drawn to a molecular weight distribution curve that is not commonly reported in the prior art; a molecular weight distribution; a complex viscosity property that is not commonly reported in the prior art; and a melt index property.
The prior art (factor (c)) does not, to the examiner’s knowledge, contain a disclosure of a polymer for which each of the presently recited physical properties is reported.
It is generally understood by one of ordinary skill in the art (factors (d)-(e)) that many parameters of a polymerization reaction influence the properties of the resulting polymer. A non-limiting selection of such parameters includes the type(s) of reactor(s); the number of reactors or stages of polymerization; the temperature profile of the polymerization reaction; the pressure profile of the polymerization reaction; the reaction time or residence time; the identity and amount(s) of any chain transfer agents; the reagent feed rates; the catalyst’s composition, such as the titanium and magnesium content of a Ziegler-Natta catalyst; the identity and amount(s) of any internal electron donors or external electron donors; the identity of any support; and the identity of any cocatalyst(s) (such as aluminum-based cocatalysts); and the identity and amount(s) of any comonomer(s). To the examiner’s knowledge, the effects of these parameters (especially in combination, and especially with respect to catalyst composition) are not well-predictable, and therefore these parameters must generally be specified in order for a polymer to be reproduced.
Furthermore, because the claims recite properties that are not commonly reported in the prior art (see the discussion of factor (a) above), the prior art provides less than the ordinary amount of guidance with respect to achieving these properties. Therefore, one of ordinary skill in the art would require more than the ordinary amount of guidance in order to achieve the recited physical properties.
The present application (factors (f)-(g)) includes a disclosure of the preparation of three polyethylenes 1-1 to 1-3, and the experimental section describes the preparation of the three polyethylenes simultaneously (see p. 29, ll. 1-4 of the original specification, or ¶ [0102] of the published application). The following is the entirety of the method described in the examples: “Ethylene was polymerized in the presence of a Ziegler-Natta catalyst to prepare a high-density polyethylene (HDPE) having properties shown in Table 1 below in Examples 1-1 to 1-3 and Comparative Examples 1-1 to 1-9” (id.).
The broad and generic disclosure of “a Ziegler-Natta catalyst” does not inform the reader of the composition of the Ziegler-Natta catalyst, including the titanium and magnesium content of the catalyst; the identity and amount(s) of any internal electron donors or external electron donors; the identity of any support; and the identity of any cocatalyst(s) (such as aluminum-based cocatalysts).
The experimental section also does not include a disclosure of the type(s) of reactor(s); the number of reactors or stages of polymerization; the temperature profile of the polymerization reaction; the pressure profile of the polymerization reaction; the reaction time or residence time; the identity and amount(s) of any chain transfer agents; or the reagent feed rates.
The broader disclosure does not provide guidance regarding the selection of the type(s) of reactor(s); the number of reactors or stages of polymerization; the temperature profile of the polymerization reaction; the pressure profile of the polymerization reaction; the reaction time or residence time; the identity and amount(s) of any chain transfer agents; or the reagent feed rates.
The application therefore provides very little guidance to one of ordinary skill in the art as to how to perform the disclosed method in order to achieve the presently recited physical properties.
It is concluded that an undue amount of experimentation would be required to make polyethylenes commensurately in scope with the present claims.
Claims 2-18 are ultimately dependent upon independent claim 1, and they fail to comply with the enablement requirement for the same reasons.
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 1-18 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.
Independent claim 1 recites a graph having an “x-axis of log MW” and a “y-axis of dw/dlogMw”. The former includes a capitalized “MW”; and the latter includes both a lowercase "w" and the mixed-case "Mw".
The specification states that “the molecular weight distribution (Mw/Mn, PDI, polydispersity index) may be determined by measuring a weight average molecular weight (Mw) and a number average molecular weight (Mn) of the polyethylene, and then dividing the weight average molecular weight by the number average molecular weight” (Spec. p. 9, ll. 7-10).
In light of this disclosure, the mixed-case “Mw” has been interpreted to mean measuring a weight average molecular weight.
The claims and specification do not specifically define the capitalized “MW” or the lowercase “w”.
The claims and the specification do not set forth with reasonable clarity whether the capitalized “MW” (that appears in “Log MW”) has a meaning that is the same as or different from the weight average molecular weight which is signified by the mixed-case “Mw”.
The claims and the specification do not set forth with reasonable clarity the meaning of the recited lowercase “w” (that appears in “dw”).
The claim recites a graph having “an x-axis of log MW”. Because the claims and specification do not set forth a definition of the capitalized “MW”, the recited “MW” has been interpreted to mean the weight average molecular weight due to its similarity to the mixed-case “Mw”.
The recited “log MW” has therefore been interpreted to mean the logarithm of the weight average molecular weight. The weight average molecular weight of a polymer, and thus also the logarithm of the weight average molecular weight, are constants; they are not variables. The claim thus refers to a chart in which the x-axis has values that are all the same constant (the logarithm of the weight average molecular weight). The claims and the specification do not set forth with reasonable clarity the meaning of an axis that has only a singular (constant) value.
The claim recites a graph having “a y-axis of dw/dlogMw”. The recited “dw/dlogMw” is a derivative of “w” with respect to “logMw”.
As noted above, the mixed-case “Mw” has been interpreted to mean measuring a weight average molecular weight. The recited “logMw” has therefore been interpreted to mean the logarithm of the weight average molecular weight. The weight average molecular weight of a polymer, and thus also the logarithm of the weight average molecular weight, are constants; they are not variables. The claim thus recites a derivative of the undefined “w” with respect to a constant, rather than with respect to a variable. The claim does not set forth with reasonable clarity the meaning of a differentiation with respect to a constant.
Claims 2-18 are ultimately dependent upon independent claim 1, and they are indefinite for each of the reasons given above.
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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