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 16-30 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 16 recites a metallocene compound of chemical formula (Ia). The formula includes moieties R1 and R3, and the claim recites that “one R1 is on position 3 and/or one R3 is on position 5 of each indenyl” (emphasis added).
The phrase “one R1” suggests that there may be more than one moiety R1 in the compound and that the location of one of the R1 moieties is being specified. However, the examiner finds only one moiety R1 in the illustrated chemical formula (Ia). The claim does not set forth with reasonable clarity whether it includes compounds having one or else more than one moiety R1.
The combination conjunction “and/or” suggests that the two conditions that it describes may be alternatives. Accordingly, the conjunction suggests that only one of the presence of moiety R1 is on position 3 of each indenyl and the presence of moiety one R3 is on position 5 of each indenyl needs to be satisfied. However, the moiety R1 is drawn in the chemical formula (Ia) in position 3, and therefore the chemical formula appears to require that moiety R1 be on position 3 of an indenyl group. The claim therefore does not set forth with reasonable clarity whether or not moiety R1 must be on position 3 or else if it may be in another position as long as the alternative limitation regarding moiety R3 is satisfied. The same issue applies to the corresponding limitations regarding moieties R2 and R4.
The phrase “each indenyl” entails the substitution of the respective moieties on both of the indenyl groups in the compound of formula (Ia). For instance, the limitation “… one R3 is on position 5 of each indenyl” entails the substitution of both indenyl groups by moiety R3 on their respective positions number 5. However, the chemical structure illustrated in formula (Ia) only permits a single substitution at each of the positions 5 – any further substitution would produce a pentavalent carbon atom at these positions. Furthermore, the substitution of each indenyl by either of R3 or R4 at the positions 5 would prohibit the substitution of the indenyl groups by the other of R3 or R4 at those same positions for the same reason. The claim does not set forth with reasonable clarity which moieties are substituted at the positions 5 of each of the indenyl groups of the chemical structure illustrated in formula (Ia).
Claim 16 recites chemical formula (Ia) which includes the metal moiety M1. The claim subsequently recites that “M1 is a transition metal selected from the group comprising zirconium, titanium, hafnium, and vanadium; and preferably M is zirconium”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites a Markush group of metals from which M1 is selected, which is the broader statement of the limitation, and the claim also recites that preferably M is zirconium, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower ‘preferable’ language is (a) merely exemplary of the remainder of the claim, and therefore not required, or else (b) a required feature of the claims.
Claim 16 recites chemical formula (Ia) which includes the metal moiety M1. The claim subsequently recites that “M1 is a transition metal selected from the group comprising zirconium, titanium, hafnium, and vanadium; and preferably M is zirconium”.
The latter limitation that “preferably M is zirconium” lacks proper antecedent basis for the moiety “M” because the claim does not previously recite a moiety “M”.
Claim 16 recites the limitation “the meso/rac ratio of the meso form of the bridged metallocene compound of catalyst component A is 95:5 or greater” (emphasis added). The phrase “meso form” refers to a particular stereoisomer of a compound, and by definition, a meso compound is not racemic. The ratio of meso to racemic compounds of a meso form of a compound is thus necessarily 1:0; that is, the meso form is all meso form at not racemic. The claim does not set forth with reasonable clarity the meaning of an amount of racemic compounds of the meso form of the compound.
Claim 16 recites a catalyst component B which includes two indenyl groups. The claim subsequently recites a limitation regarding aryl or heteroaryl substituents on the indenyl groups, and the claim recites that “preferably each indenyl has one or more substituents on positions 2 and/or 4 of each indenyl”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites a limitation regarding aryl or heteroaryl substituents, which is the broader statement of the limitation, and the claim also recites that preferably each indenyl has one or more substituents on positions 2 and/or 4 of each indenyl, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower ‘preferable’ language is (a) merely exemplary of the remainder of the claim, and therefore not required, or else (b) a required feature of the claims.
Claims 17-30 are ultimately dependent upon independent claim 16, and they are indefinite for the same reasons.
Claim 18 recites chemical formula (II) which includes the metal moiety M1*. The claim subsequently recites that “M1* is a transition metal selected from the group comprising zirconium, titanium, hafnium, and vanadium; and preferably M1* is zirconium”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites a Markush group of metals from which M1* is selected, which is the broader statement of the limitation, and the claim also recites that preferably M1* is zirconium, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower ‘preferable’ language is (a) merely exemplary of the remainder of the claim, and therefore not required, or else (b) a required feature of the claims.
Claims 22-25 recite limitations regarding ratios of catalyst components, activators, co-catalysts, and supports.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recites broader ratios of catalyst components, a generic activator, a generic co-catalyst, and a generic solid oxide support, which are the broader statements of the limitations, and the claims also recite further limitations modified by the term “preferably”, which are the narrower statements of the limitations. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower ‘preferable’ language is (a) merely exemplary of the remainder of the claim, and therefore not required, or else (b) a required feature of the claims.
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 16-30 are rejected under 35 U.S.C. § 112(a), because the specification, while being enabling for metallocene compounds in which the metal is zirconium, titanium, hafnium, or vanadium, does not reasonably provide enablement for metallocene compounds in which the metal is all transition metals. 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 and use 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 16: The claim recites (factor (a)) a chemical formula (Ia) in which moiety “M1 is a transition metal selected from the group comprising zirconium, titanium, hafnium, and vanadium” (emphasis added). The transitional phrase “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. MPEP 2111.03(I). The claim thus recites a group of transition metals that includes but is not limited to the metals zirconium, titanium, hafnium, and vanadium; in other words, the group encompasses all transition metals. The present invention (factors (b), (f), and (g)) is drawn to certain catalyst components, but it does not include any direction or other guidance regarding how to make and use catalysts for which the metal is a transition metal other than zirconium, titanium, hafnium, or vanadium. The prior art (factors (c)-(e)) does not, to the examiner’s knowledge, include disclosures of making or using such catalysts for which the metal is all of the transition metals other than zirconium, titanium, hafnium, or vanadium.
It is concluded that an undue amount of experimentation would be required to make and use the claimed compounds for which the metal is all of the transition metals other than zirconium, titanium, hafnium, or vanadium.
Claims 17-30 are ultimately dependent upon claim 16, and they fail to comply with the enablement requirement for the same reasons. Claim 18 recites a similar limitation regarding moiety M1*, and it fails to comply with the enablement requirement for the same reasons.
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
