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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This application, filed April 2, 2026, is a reissue of U.S. Patent 11,945,896 (hereinafter the ‘896 patent), which issued from U.S. application Serial No. 17/761,451 (the ‘451 application) with claims 1-21 on April 2, 2024.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
In particular, the Consent of Assignee is not executed, i.e., is not signed and dated and does not provide the printed name and title of the signer.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Non-Compliant Amendment
The amendment filed 04/02/2026 is improper. The amendment does not comply with 37 CFR 1.173 which sets forth the manner of making amendments in reissue applications. While the improper amendment has been entered and considered, Applicant’s next response should be a compliant amendment. An amendment filed after final rejection that fails to comply with 37 CFR 1.173 will not be entered.
All amendment changes must be made relative to the patent to be reissued, not relative to a previous submitted amendment. Pursuant to 37 CFR 1.173(d), any such changes which are made to the specification, including the claims, must be shown by employing the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets, i.e., single brackets; and (2) The matter to be added by reissue must be underlined.
The non-compliance issues are as follows:
Claim 1 uses strikethrough rather than single bracketing to delete subject matter.
Also, the status identifier for claims 2-21 should be “Original” rather than “Previously Presented” since claims 2-21 are unamended issued claims.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The reissue declaration is defective because the error statement improperly states that the new requirement that X1 and X2 are each O is a narrowing of claim 1. Such is a broadening of claim 1, which does not permit each of X1 and X2 to be O. Rather issued claim 1 requires (bold emphasis added): “X1 is NR5 and X2 is O, S, or NR5, or X2 is NR5 and X1 is O, S, or NR5.”
Furthermore, as set forth below in the “Recapture” section of the instant Office action, the recitation in reissue claims 1 and 22 that X1 and X2 are each O is impermissible recapture. Accordingly, the error recited in the reissue declaration is not an error upon which reissue of the ‘896 patent can be based.
Also, if Applicant intends for the reissue claims to be broader than the issued claims, then the box must be checked in the Reissue Declaration by Assignee form indicating that the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest:
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If the box cannot be checked, then the reissue declaration must be a Reissue Declaration by the Inventors.
A new reissue declaration by the Assignee or Inventors with a proper error statement is required.
Claim 1-22 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue declaration is set forth in the discussion above in this Office action.
Recapture
Claims 1-22 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The test for recapture has three steps. See MPEP 1412.02
As to the first step, reissue claims 1-22 are broader than issued claim 1 since they set forth that X1 and X2 are each O. Issued claim 1 does not permit each of X1 and X2 to be O. Rather, issued claim 1 requires that X1 is NR5 and X2 is O, S, or NR5, or X2 is NR5 and X1 is O, S, or NR5.
As to the second step, such broadening is related to subject matter surrendered during the original prosecution since the requirement in issued claim 1 that “X1 is NR5 and X2 is O, S, or NR5, or X2 is NR5 and X1 is O, S, or NR5” was a surrender generating limitation. In particular, during prosecution of the ‘896 patent, in response to a prior art rejection of claim 1 and dependent claims over Chen (US 2013/0261273), Applicant amended the definitions of X1 and X2 in claim 1 as follows (amendment filed 09/13/2023):
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In the accompanying Remarks filed 09/13/2023, Applicant specifically argued that this amendment to the definitions of X1 and X2 in claim 1 distinguish over Chen, which teaches that the X’s are only oxygen (O):
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In a final rejection mailed 10/02/2023, Claim 1 and its dependent claims were rejected over Mignogna (US 2016/0090428). In a response filed 11/13/2023, Applicant further amended the definitions of X1 and X2 to distinguish over Mignogna:
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In the accompany Remarks, Applicant argued how this change to the definition of X1 and X2 distinguished over Mignogna:
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As to the third step in the test for Recapture, the amendment to reissue claim 1 so as to require that X1 and X2 are each O omits said surrender generating limitation in issued claim 1 because issued claim 1 does not encompass the situation where X1 and X2 are each O. As noted above, Applicant argued that Chen teaches X1 and X2 are each O. Since reissue claim 1 and its dependent claims 2-21 have not been amended to add a new limitation that is related to the surrender generating limitation, there is recapture. See MPEP 1412.02.III.B.1.
Like reissue claim 1 and its dependent claims, reissue claim 22 requires that X1 and X2 are each O, and thus, omits the surrender generating limitation. Reissue claim 22 also recites the limitation:
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whereas issued claim 1 recites:
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However, said limitation in claim 22 with respect to R2 and R3 is unrelated to the surrender generating limitation, which, as noted above, involves X1 and X2, not R2 and R3. To any extent there may be a relation, said limitation was rendered obvious by Chen and Mignogna, as noted in the Office actions mailed 06/07/2023 (pp. 6-7) and 10/02/2023 (pp. 4-5) during prosecution of the ‘896 patent. Thus, there is impermissible recapture.
Reissue claims 1-22 present a broadening aspect which relates to claimed subject matter that Applicant previously surrendered during the prosecution of the ‘896 patent. Therefore, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claimed subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
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.
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.
Claim 1-22 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.
Claims 1 and 22 are indefinite because the last line in each claim recites the limitation “R5 is a hydrocarbyl group having 1 to 20 carbon atoms or is hydrogen.” However, there is no longer an R5 in the internal electron donor compound. The same applies to dependent claims 2-21.
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.
Claims 1-13 and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2013/0261273 to Chen et al (hereinafter “Chen”).
With respect to claims 1-3, 5-7, and 9, Chen teaches a catalyst with high selectivity for the production of propylene-based polymers (see Abstract). The catalyst comprises a procatalyst composition comprising a magnesium moiety, a titanium moiety, and an internal electron donor (see ¶ 0043). The internal electron donor has the following structure (I) (¶ 0048):
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.
Chen further teaches the following embodiments for the internal donor:
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Each internal donor compound exemplified in Chen’s Table 1 has R5-R14 as hydrogen.
When R1 and R4 are the same, e.g., methyl, and R5-R14 are each a hydrogen, R2 and R3 are interchangeable in name. Thus, as per Chen’s ¶ 0052, R2 is hydrogen and R3 is selected from an isopropyl group, a cyclopentyl group, a cyclohexyl group, an aryl group, an alkylaryl group, a tert-butyl group, and a 2,3,3-trimethylbutan-2-yl group. The 2,3,3-trimethylbutan-2-yl group has seven carbon atoms.
In Chen’s exemplified internal electron donor compound C-9A/C-9B in Table 1, R1 and R4 are each methyl, R5-R14 are each a hydrogen, R2 is a hydrogen, and R3 is an isopropyl group instead of a 2,3,3-trimethylbutan-2-yl group:
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Thus, Chen differs from the instant claims in not exemplifying an internal electron donor compound wherein R3 is 2,3,3-trimethylbutan-2-yl group.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared Chen’s internal electron donor compound such that R1 and R4 are each methyl, R5-R14 are each a hydrogen, R2 is hydrogen and R3 is 2,3,3-trimethylbutan-2-yl group because such is clearly within the scope of Chen’s disclosure, and thus, so as to prepare an internal electron donor compound for use in Chen’s a catalyst such that the catalyst has a high selectivity for the production of propylene-based polymers. For example, such is a matter of replacing the isopropyl group in Chen’s exemplified C-9A/C-9B compound with 2,3,3-trimethylbutan-2-yl, i.e., an alternative group that Chen teaches as suitable.
Chen differs from claims 4 and 22 in not teaching that the R2 (or R3)1 is cycloheptyl or cyclooctyl. As noted above, Chen’s R2 (or R3) can be cyclopentyl or cyclohexyl instead of said 2,3,3-trimethylbutan-2-yl or said isopropyl (see ¶ 0052). More generally, the R2 (or R3) is a hydrocarbyl group having 1 to 20 carbon atoms (see ¶ 0049).
The instantly claimed cycloheptyl and cyclooctyl are homologues of Chen’s cyclohexyl, differing by one or two -CH2- groups. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared Chen’s internal electron donor compound such that R2 (or R3) is cycloheptyl or cyclooctyl because cycloheptyl and cyclooctyl are homologs of Chen’s exemplified cyclohexyl and all are within the scope of Chen’s general teaching of a hydrocarbyl group having 1 to 20 carbon atoms. Further, as noted in MPEP 2144.09.II, compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
With respect to claim 8, Chen teaches that the magnesium moiety is a magnesium halide, such as magnesium chloride or magnesium chloride alcohol adduct (see ¶ 0044).
With respect to claim 10, Chen teaches that the catalyst further comprises a cocatalyst and an external electron donor that enhances stereoselectivity, i.e., a selectivity control agent (see ¶¶ 0069, 0073).
With respect to claims 11 and 21, Chen teaches that the cocatalyst is a hydrocarbyl aluminum compound, such as triethylaluminum (see ¶ 0070).
With respect to claims 12 and 13, Chen teaches that the external electron donor is an alkoxysilane (see ¶ 0075). As noted in Chen’s ¶ 0076, “[n]onlimiting examples of suitable silane compositions include dicyclopentyldimethoxysilane, di-tert-butyldimethoxysilane, methylcyclohexyldimethoxysilane, methylcyclohexyldiethoxysilane, ethylcyclohexyldimethoxysilane, diphenyldimethoxysilane, diisopropyldimethoxysilane, di-n-propyldimethoxysilane, diisobutyldimethoxysilane, diisobutyldiethoxysilane, isobutylisopropyldimethoxysilane, di-n-butyldimethoxysilane, cyclopentyltrimethoxysilane, isopropyltrimethoxysilane, n-propyltrimethoxysilane, n-propyltriethoxysilane, ethyltriethoxysilane, tetramethoxysilane, tetraethoxysilane, diethylaminotriethoxysilane, cyclopentylpyrrolidinodimethoxysilane, bis(pyrrolidino)dimethoxysilane, bis(perhydroisoquinolino)dimethoxysilane, and dimethyldimethoxysilane. In an embodiment, the silane composition is dicyclopentyldimethoxysilane (DCPDMS), methylcyclohexyldimethoxysilane (MChDMS), or n-propyltrimethoxysilane (NPTMS), and any combination of thereof.”
With respect to claims 15, 16, and 20, Chen teaches a process for the polymerization of propylene and optionally one or more comonomers in which the monomers are polymerized in the presence of the catalyst discussed above to form a polypropylene (see ¶¶ 0095, 0187).
With respect to claims 17-19, Chen’s ¶¶ 0108-0109 teach that the polymerization process includes the following:
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This process renders obvious a resulting heterophasic copolymer.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claims 1-13 and 15-22 above, and further in view of WO 2018/067367 A1 to Elder et al (hereinafter “Elder”).
Chen, as relied upon for the reasons state above, teaches the limitations of clam claim 14 the difference being that, although Chen generally teaches that the magnesium moiety can be a magnesium halide such as magnesium chloride or magnesium chloride alcohol adduct (¶ 0044), Chen does not teach the particular magnesium moiety recited in claim 14. Chen’s catalyst is used in a Ziegler-Natta catalyst composition (see Abstract).
However, the claimed magnesium moiety is known in the art. For example, Elder teaches a Ziegler Natta catalyst system for olefin polymerization comprising a spray crystallized magnesium chloride/ethanol adduct, MgCl₂-nEtOH, wherein the preferred mole ratio of EtOH to MgCl₂ is most preferably 2.8-3.5 mol EtOH to 1 mol MgCl₂ (Abstract and ¶¶ 0035, 0037), which is equivalent to a weight ratio of 1.35-1.69:1 EtOH:MgCl₂. This range overlaps with and thus, renders obvious the claimed range of about 1.5:1 to about 3.1:1. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).)
Further, it would have been obvious to one of ordinary skill in the art to have incorporated the MgCl₂:EtOH moiety of Elder into the catalyst component of Chen with the predicted result of forming a useful catalyst component for olefin polymerization because both references teach that a MgCl₂/alcohol adduct is a useful magnesium moiety in a Ziegler Natta catalyst system. See MPEP 2143.I(A).
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 11,945,896 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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, Patricia Engle can be reached on 571-272-6660. 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.
Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
1 As noted above, when R1 and R4 are the same, e.g., each methyl, and R5-R14 are each a hydrogen, R2 and R3 are interchangeable in name.
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