DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 04/24/2024. Following entry of the concurrently filed preliminary amendment, new claims 16-31 are currently pending and under examination herein.
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 . However, 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 (i.e., changing from AIA to pre-AIA ) for a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 04/24/2024 and 10/01/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objections – Claims
Claim 31 is objected to because of the following informalities: “olefin” should read –ethylene-- to maintain consistent terminology throughout the claims (cf., claim 30). Appropriate correction is required.
Claim Rejections – 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claims 16, 25-26 and 28; each claim contains a broad recitation of a particular range or limitation followed by the linking term "preferably" and then narrower recitation of the corresponding range or limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(d). More specifically, it is unclear whether the various features introduced by “preferably” are intended to be restrictive to the corresponding broader recitations, or merely exemplary of the remainder of the claims, and therefore not required. For purposes of substantive examination, the features introduced by such linking term are being treated as merely exemplary of the corresponding broader recitations, in accordance with the principal of giving the broadest reasonable interpretation to pending claims. See MPEP § 2173.01(1). However, clarification and appropriate correction are required.
Dependent claims 17-31 inherit the indefiniteness ascribed to independent claim 16 supra.
Common Ownership Notice
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections – 35 U.S.C. 102/103
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.
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.
Claims 30-31 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tsou, et al (WO 2018/013285 A1) (‘Tsou’).
Claim 30 is drawn to an ethylene polymer produced by the process according to claim 16.
Claim 31 is drawn to an article comprising the olefin polymer according to claim 30.
Reference to Tsou relates to a dual metallocene catalyst system to make a bimodal olefin copolymer composition, in particular a bimodal polyethylene composition (¶ [0007]-[0008]). The bimodal polyethylene is prepared with a combination of first and second metallocene catalysts, the first metallocene catalyst including fluorenyl-1-cyclopentadienyl group 4 complexes having the general formula (I) as shown in paragraph [0030] and the second metallocene catalyst including a bis-indenyl transition metal complex having the general formula (I) as shown in paragraph [0039]. Tsou goes on to disclose an article comprising the bimodal polyethylene (e.g., compression press-molded polymer sample for Mooney viscosity testing; see ¶ [0099]). In the working examples (see ¶ [00114] et seq.) Catalyst A is 1,1'-bis(4-triethylsilylphenyl)methylene-(cyclopentadienyl)(2,7-di-tertiary-butyl-fluoren-9-yl)hafnium dimethyl and Catalyst B is rac-cyclotetramethylenesilylene-bis(2,4,7-trimethylinden-1-
yl)hafnium dimethyl.
Tsou does not explicitly disclose that the bis-indenyl compound comprises that at least one of the substituents is an unsubstituted or substituted aryl or heteroaryl. Therefore, the Tsou bimodal polyethylene is made by an ethylene polymerization process different to Applicant’s as recited in independent claim 16 hereof.
Nevertheless, it is well settled that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Instantly, as both the disclosed and claimed products are bimodal polyethylene compositions prepared with a dual catalyst system including a fluorenyl-1-cyclopentadienyl group 4 complex and a bis-indenyl transition metal complex, both would be expected to share similar chemical, structural and physical properties. Moreover, pending claim 30 includes all ethylene polymers made by any of the process conditions, including arbitrary proportions of catalyst component A to catalyst component B, encompassed by parent claim 16, such polymers lacking any specified properties whatsoever. Accordingly, given the breadth of polymers made by the recited methods and the lack of any basis in the record to find that polymers throughout such breadth would be substantially different on the basis of their method of production, the bimodal polyethylene disclosed by Tsou is seen to fall within the scope of claims 30/31, and therefore these claims are unpatentable.
Furthermore, insofar as the claimed ethylene polymer may comprise catalyst residues that differ chemically from those of the bimodal polyethylene produced according to Tsou, there is no evidence of record (i.e., Specification Examples) purporting to show that the Applicant’s ethylene polymer necessarily differs substantially from the Tsou bimodal ethylene copolymer product as a consequence of any supposed difference(s) in chemical makeup of the catalyst residues that may be present as impurities due to the ethylene polymer having been produced by the process according to present claim 16.
Potentially Allowable Subject Matter
Claims 16-29 would be allowable if amended or rewritten to overcome the rejection under 35 U.S.C. 112 set forth in this Office action.
The closest prior art Tsou et al, discussed above, does not described the inventions of instant claims 16-29, especially an ethylene polymerization process including a catalyst component B comprising a bridged metallocene compound represented by compound of formula (IV) wherein each Ar¹ is independently indenyl, each indenyl being independently substituted with one or more substituents, wherein at least one of the substituents is an unsubstituted or substituted aryl or heteroaryl. Nor is the closest prior art seen to provide proper rationale for modifying its disclosed invention into the invention of any of instant claims 16-29.
Furthermore, the Office has not to date located or identified any reference that can be used singularly or in combination with another reference including Tsou, et al, to render the present process invention anticipated or obvious to one of ordinary skill in the art.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/09-28-26
