DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: In line 1, please replace “the structural” with “a structural”.
Claim 1 is objected to because of the following informalities: In line 2, claim recites “the a-olefin is an olefin”. Diction is incorrect since an a-olefin is a species of olefin. Claim may be rewritten as “the a-olefin is an a-olefin having 5-10 carbon atoms” or “the a-olefin has 5-10 carbon atoms”.
Claim 1 is objected to because of the following informalities: In line 3, please insert “random comonomer dispersity” prior to “RMD” so that the acronym is defined; see specification paragraph [0056].
Claim 1 is objected to because of the following informalities: In line 3, please replace “the a-olefin” with “an a-olefin”. Alternatively, replace “the a-olefin” with “the structural unit derived from a-olefin” so that terminology is consistent with that written in line 2. If Applicant selects the latter, ensure that terminology in claim 3 is also internally consistent.
Claim 2 is objected to because of the following informalities: Although claim construction utilizing the terms “preferably” and “more preferably” is no longer considered egregious, rewriting the limitation of preferable limitations of mole percentages as a separate, dependent claims is recommended. Alternatively, one may recite a series of limitations as a coordinative phrase. In line 6, delete “preferably” and in line 9, replace “more preferably” with the conjunction “or”.
Claim 3 is objected to because of the following informalities: In line 2, delete “preferably” and replace “more preferably” with “or”.
Claim 4 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 1-3” with “claim 1, 2 or 3”.
Claim 4 is objected to because of the following informalities: In line 1, please replace “the molecular” with “a molecular”.
Claim 4 is objected to because of the following informalities: In line 2, delete “preferably”.
Claim 4 is objected to because of the following informalities: In line 3, replace “more preferably” with “or”.
Claim 5 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 1-3” with “claim 1, 2 or 3”.
Claim 5 is objected to because of the following informalities: In line 2, please replace “preferably” with “or”.
Claim 5 is objected to because of the following informalities: Although claim construction utilizing the term “preferably” is no longer considered egregious, rewriting the limitation of preferable embodiment of half-melting enthalpy temperature (line 4) as a separate, dependent claim is recommended.
Claim 5 is objected to because of the following informalities: In line 5, delete “more preferably” and replace “further preferably” with “or”.
Claim 6 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 1-3” with “claim 1, 2 or 3”.
Claim 6 is objected to because of the following informalities: In line 2, please replace “preferably” with “and is”.
Claim 6 is objected to because of the following informalities: In line 3, delete “, more preferably 1-octene”.
Claim 7 is objected to because of the following informalities: In line 3, please replace “copolymerized” with “copolymerization”.
Claim 7 is objected to because of the following informalities: In line 7, please replace “the molar” with “a molar”.
Claim 7 is objected to because of the following informalities: In line 7, please replace “the structured” with “a structural”.
Claim 7 is objected to because of the following informalities: In line 8, please replace “the structured” with “a structural”.
Claim 7 is objected to because of the following informalities: In line 9, claim recites “the a-olefin is an olefin”. Diction is incorrect since an a-olefin is a species of olefin. Claim may be rewritten as “the a-olefin is an a-olefin having 5-10 carbon atoms” or “the a-olefin has 5-10 carbon atoms”.
Claim 8 is objected to because of the following informalities: In line 3, please replace “more preferably” with “or”.
Claim 9 is objected to because of the following informalities: In line 2, delete “the” which precedes “ethylene”.
Claim 10 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 7-9” with “claim 7, 8 or 9”.
Claim 10 is objected to because of the following informalities: In line 4, please replace “(including cycloalkyl)” with “, cycloalkyl”.
Claim 10 is objected to because of the following informalities: In line 6, please replace “preferably” with “wherein”.
Claim 10 is objected to because of the following informalities: In line 7, please replace “preferably” with “and wherein”.
Claim 11 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 7-9” with “claim 7, 8 or 9”.
Claim 11 is objected to because of the following informalities: In line 1, please replace “the molar” with “a molar”.
Claim 11 is objected to because of the following informalities: In line 3, please replace “preferably” with “wherein”.
Claim 11 is objected to because of the following informalities: In lines 3 and 4, delete “, more preferably 2,4-dichloro-1-naphthol”.
Claim 12 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 7-9” with “claim 7, 8 or 9”.
Claim 12 is objected to because of the following informalities: In line 1, claim recites “the a-olefin is an olefin”. Diction is incorrect since an a-olefin is a species of olefin. Claim may be rewritten as “the a-olefin is an a-olefin having 5-10 carbon atoms” or “the a-olefin has 5-10 carbon atoms”.
Claim 12 is objected to because of the following informalities: In line 2, please replace “more preferably” with “and is”.
Claim 12 is objected to because of the following informalities: In line 3, delete “, further preferably 1-octene”.
Claim 13 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 7-9” with “claim 7, 8 or 9”.
Claim 13 is objected to because of the following informalities: In line 2, please replace “the copolymerization” with “a copolymerization”.
Claim 13 is objected to because of the following informalities: In line 2, delete “is” which precedes “within”.
Claim 13 is objected to because of the following informalities: In line 2, delete “preferably”.
Claim 13 is objected to because of the following informalities: In line 3, please replace “more preferably” with “or”.
Claim 13 is objected to because of the following informalities: In line 3, please replace “the partial” with “a partial”.
Claim 13 is objected to because of the following informalities: In line 3, delete “is” which precedes “within”.
Claim 13 is objected to because of the following informalities: In line 4, delete “preferably” and replace “and more preferably” with “or”.
Claim 14 is objected to because of the following informalities: In line 1, delete “any one of” and replace “claims 7-9” with “claim 7, 8 or 9”.
Claim 14 is objected to because of the following informalities: In line 1, please replace “the solvent” with “a solvent”.
Claim 15 is objected to under 37 CFR 1.75(c) as being in improper form because it is a multiple dependent claim. See MPEP § 608.01(n).
Claim 16 is objected to because of the following informalities: In line 1, please insert “ethylene-a-olefin copolymer” prior to “composition”.
Claim 16 is objected to because of the following informalities: In line 2, delete “the” which precedes “preparation”.
Claim 17 is objected to under 37 CFR 1.75(c) as being in improper form because it is a multiple dependent claim. See MPEP § 608.01(n).
Claim 18 is objected to under 37 CFR 1.75(c) as being in improper form because it is a multiple dependent claim. See MPEP § 608.01(n).
Claim Rejections - 35 USC § 112
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 15 and 16 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 15 is drawn to two statutory classes of invention simultaneously: a composition and a method. Dependent claim 16 is subsumed under the rejection.
Claim 16 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. There is insufficient antecedent basis for the term “the solvent” if claim 15 depends from claims 1-7.
Claim 17 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 for use of an ethylene-a-olefin copolymer but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 18 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 for use of an ethylene-a-olefin copolymer but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 18 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 15 is drawn to a copolymer and to a composition simultaneously.
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 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alt et al. (US 5,436,305).
Example XII of Alt et al. discloses an ethylene-hexene copolymer containing 12.4 mole % of units derived from 1-hexene and exhibiting a relative comonomer dispersity of 105.9.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Alt et al. (US 5,436,305).
The discussion of the disclosure of the prior art from the preceding paragraph is incorporated here by reference. Prior art is silent regarding the properties of the ethylene-hexene copolymer, however, in light of the fact that it is prepared with similar metallocene catalyst, reasonable basis exists to believe the ethylene-hexene copolymer exhibits a molecular weight distribution and melt index within the broad and unexceptional range set forth in instant claims. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Conclusion
Subject of claims 7-14 is patentably distinct over prior art cited in Applicant’s PTO-1449 and over references cited in PTO-892. None of the references teaches the method of instant claims. Not one of the claims is in condition for allowance.
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 October 8, 2026
Prosecution Insights