DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on March 10, 2026 has been fully considered. No claims were amended. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. Claims 16-23, 27 are rejected under 35 U.S.C. 103 as unpatentable over Wolfschwenger et al (US 2011/0196078), as evidenced by or alternatively, in view of Yada et al (US 2004/0158000), as evidenced by Gahleitner et al (WO 2018/077663), in further view of Aastre et al (US 2009/0118415) and Vestberg et al (WO00/68315).
It is noted that while the rejection is made over WO 2018/077663 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 10,920,055 is relied upon. All citations to paragraph numbers, etc., below refer to US 10,920,055.
4. The rejection is adequately set forth on pages 3-16 of an Office action mailed on November 12, 2025 and is incorporated here by reference.
5. Claims 16-23, 27, 33 are rejected under 35 U.S.C. 103 as unpatentable over Wolfschwenger et al (US 2011/0196078), as evidenced by or alternatively, in view of Yada et al (US 2004/0158000), as evidenced by Gahleitner et al (WO 2018/077663), in view of Aastre et al (US 2009/0118415) and Vestberg et al (WO00/68315), in further view of Dotson et al (US 6,794,433).
It is noted that while the rejection is made over WO 2018/077663 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 10,920,055 is relied upon. All citations to paragraph numbers, etc., below refer to US 10,920,055.
6. The rejection is adequately set forth on pages 16-20 of an Office action mailed on November 12, 2025 and is incorporated here by reference.
7. Claims 16-23, 27, 33 are rejected under 35 U.S.C. 103 as unpatentable over Wolfschwenger et al (US 2011/0196078), as evidenced by or alternatively, in view of Yada et al (US 2004/0158000), in view of Aastre et al (US 2009/0118415) and Vestberg et al (WO00/68315), in further view of Dotson et al (US 6,794,433) and Gahleitner et al (WO 2018/077663).
It is noted that while the rejection is made over WO 2018/077663 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 10,920,055 is relied upon. All citations to paragraph numbers, etc., below refer to US 10,920,055.
8. The rejection is adequately set forth on pages 20-25 of an Office action mailed on November 12, 2025 and is incorporated here by reference.
9. Claims 16-20, 27, 33 are rejected under 35 U.S.C. 103 as unpatentable over Gahleitner et al (WO 2018/077663) in view of Aastre et al (US 2009/0118415) and Vestberg et al (WO0/68315).
It is noted that while the rejection is made over WO 2018/077663 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 10,920,055 is relied upon. All citations to paragraph numbers, etc., below refer to US 10,920,055.
10. The rejection is adequately set forth on pages 25-33 of an Office action mailed on November 12, 2025 and is incorporated here by reference.
11. Claims 16-23, 27, 33 are rejected under 35 U.S.C. 103 as unpatentable over Gahleitner et al (WO 2018/077663) in view of Aastre et al (US 2009/0118415) and Vestberg et al (WO0/68315), in further view of Wolfschwenger et al (US 2011/0196078).
It is noted that while the rejection is made over WO 2018/077663 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 10,920,055 is relied upon. All citations to paragraph numbers, etc., below refer to US 10,920,055.
12. The rejection is adequately set forth on pages 33-37 of an Office action mailed on November 12, 2025 and is incorporated here by reference.
Response to Arguments
13. Applicant's arguments filed on March 10, 2026 have been fully considered.
14. With respect to Applicant’s arguments regarding the rejections set forth in paragraphs 3, 5, 7 above, it is noted that:
1) Wolfschwenger et al (US 2011/0196078) explicitly teaches that any stereospecific catalyst suitable for propylene polymerization of polypropylene can be used ([0030], [0032]), and specifically cited that both Ziegler-Natta catalyst and metallocene catalyst can be used for polymerization of propylene polymer A) and the elastomeric copolymer B) ([0030], [0032]), as also presented below:
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Thus, based on the teachings of Wolfschwenger et al that metallocene catalyst maybe used as well as Ziegler-Natta catalyst, it would have been obvious to a one of ordinary skill in the art to choose and use metallocene catalyst for polymerization of both component A) and the component B) of the composition of Wolfschwenger et al as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
2) Though the compositions exemplified by Wolfschwenger et al are produced using Ziegler-Natta catalyst ({0053]), and not metallocene catalyst, this does not negate a finding of obviousness under 35 USC 103 since a preferred embodiment such as an example is not controlling. Rather, all disclosures “including unpreferred embodiments” must be considered. In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972).
3) With respect to Applicant’s argument that “excellent balance of impact strength and stiffness as well as excellent optical properties are achievable only by a process employing a Ziegler-Natta catalyst but not metallocene catalyst” (p. 3, second paragraph of Applicant’s arguments), it is noted that, as evidenced by US 2017/0137617, the HECO produced by metallocene catalyst are having flexural modulus of at least 1,000 MPa, or 1600 MPa, Charpy notched impact strength at +23⁰C of more than 35 kJ/m, or 35-85 kJ/m2 and Charpy notched impact strength at -20⁰C of 4-12 kJ/m2 ([0051]-[[0056]). As evidenced by US 11,407,886, the single-site, such as metallocene, catalyzed HECO show excellent mechanical and optical properties (Abstract, Title, col. 3, lines 15-20).
Thus, excellent mechanical and optical properties can be obtained by polymerizing HECO not only in the presence of Ziegler-Natta catalyst, but by single-site/metallocene catalyst as well. Instant claims are silent with respect to microstructure and comonomer distribution in the polymer.
It is noted that US 11,407,886 and US 2017/0137617 are applied herein only as evidence references, specifically with respect to Applicant’s argument of “excellent balance of impact strength and stiffness as well as excellent optical properties are achievable only by a process employing a Ziegler-Natta catalyst but not metallocene catalyst”, and not constitute new grounds of rejections.
4) Yada et al (US 2004/0158000), Gahleitner et al (WO 2018/077663), Aastre et al (US 2009/0118415) and Vestberg et al (WO00/68315) are secondary references, each of which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
5) Thus, Yada et as the secondary reference, was applied for the teachings of melting point of the metallocene-catalyzed polypropylene homopolymers.
6) Gahleitner et al was specifically applied to show that the compositions comprising propylene homopolymers and elastomeric ethylene-propylene copolymers are cited as heterophasic (HECO), wherein the propylene homopolymer is forming a matrix and the ethylene-propylene rubber forms a dispersed phase (see col. 3, lines 27-35; col. 4, lines 34-38 of Gahleitner et al).
7) The secondary references of Aastre et al and Vestberg et al were applied for the teachings of addition of polyVCH nucleating agents as a masterbatch with HECO to another HECO used as matrix. Thus, paragraph [0080] of Aastre et al specifically teaches “Heterophasic propylene polymers comprising nucleating agents containing vinyl cyclohexane were prepared …”, i.e. heterophasic propylene polymers are HECO. Further, Table in [0080] Aastre et al shows production of Polymer 1 according to Example 6 of Vestberg et al (WO0/68315), wherein WO0/68316 Example 6 shows the production of the Z-N-catalyzed HECO together with pre-polymerized vinyl cyclohexane copolymer and having the following properties, including MFR of 6.3 g/10 min and Tm of 166.1⁰C (see p. 18, lines 10-15, p. 20, lines 15-30, Table on page 23). Thus, the Polymer 1 of Aastre et al comprises a masterbatch of polyVCH in Z-N-catalyzed HECO. Further, said Polymer 1 (i.e. polyVCH in Z-N HECO) was combined with Polymer 3, which is HECO as well (see Table of [0082] of Aastre et al).
Paragraph [0038] of Aastre et al specifically teaches that matrix polymer can be Ziegler-Natta catalyzed or metallocene catalyzed.
Thus, Aastre et al and Vestberg et al were applied for the teachings of addition of polyVCH/Z-N HECO masterbatch in amount of 0.2-10% to another HECO used as a matrix.
8) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
15. With respect to Applicant’s arguments regarding the rejections set forth in paragraphs 9, 11 above, it is noted that:
1) The secondary references of Aastre et al and Vestberg et al were applied for the teachings of addition of polyVCH nucleating agents as a masterbatch with HECO to another HECO used as matrix. Thus, paragraph [0080] of Aastre et al specifically teaches “Heterophasic propylene polymers comprising nucleating agents containing vinyl cyclohexane were prepared …”, i.e. heterophasic propylene polymers are HECO. Further, Table in [0080] Aastre et al shows production of Polymer 1 according to Example 6 of Vestberg et al (WO0/68315), wherein WO0/68316 Example 6 shows the production of the Z-N-catalyzed HECO together with pre-polymerized vinyl cyclohexane copolymer and having the following properties, including MFR of 6.3 g/10 min and Tm of 166.1⁰C (see p. 18, lines 10-15, p. 20, lines 15-30, Table on page 23). Thus, the Polymer 1 of Aastre et al comprises a masterbatch of polyVCH in Z-N-catalyzed HECO. Further, said Polymer 1 (i.e. polyVCH in Z-N HECO) was combined with Polymer 3, which is HECO as well (see Table of [0082] of Aastre et al).
2) With respect to Applicant’s argument on page 8:
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It is noted that instant claims recite that the propylene homopolymer and the elastomeric ethylene-propylene rubber are produced in the presence of a single site catalyst, but the nucleating agent is introduced with a Ziegler-Natta catalyst. That is, the claimed composition appears to comprise both metallocene-catalyzed HECO and Ziegler-Natta-catalyzed HECO.
Further, the limitation “produced in the presence of a single-site catalyst” is a product by process limitation. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. 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 product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
3) With respect to Applicant’s argument that Ziegler-Natta catalyst and metallocene catalyst produce composition with different properties, it is noted that instant claim 16 is silent with respect to any properties, specifically “tensile modulus, good mechanical and optical properties”, as argued by Applicant.
4) Gahleitner et al discloses a heterophasic composition comprising:
A) 80-95%wt of a propylene homopolymer having Tm of at least 160⁰C (col. 3, lines 27-40; col. 4, lines 6-15, col. 6, lines 10-14);
B) 5-18%wt of an elastomeric ethylene-propylene rubber having (col. 4, lines 26-34);
C) 0.3-15ppm (table 2) of a polymeric nucleating agent, specifically polymerized vinyl cyclohexane, added as a masterbatch with polymers produced by BNT technology (col. 3, lines 35-37; col. 7, lines 47-55, col. 8, lines 24-28; as to instant claim 16), further in combination with salts of monocarboxylic acid or of polycarboxylic acid (col. 8, lines 43-48, as to instant claims 16, 33);
wherein the composition is having xylene soluble fraction of 5-20%wt or 7-12%wt (col. 5, lines 18-20) and ethylene content in xylene soluble fraction is 20-38%wt (col. 3, lines 35-40); wherein the composition is having MFR of 2-6 g/10 min ([0011]).
Thus, Gahleitner et al teaches separately the components A) and B) forming the main HECO, and further component C) of a masterbatch of a polymeric nucleating agent, wherein Aastre et al was applied for the specific teachings of said polymeric nucleating agent masterbatch.
5) The paragraph [0080] of Aastre et al specifically teaches “Heterophasic propylene polymers comprising nucleating agents containing vinyl cyclohexane were prepared …”, i.e. heterophasic propylene polymers are HECO. Further, Table in [0080] Aastre et al shows production of Polymer 1 according to Example 6 of Vestberg et al (WO0/68315), wherein WO0/68316 Example 6 shows the production of the Z-N-catalyzed HECO together with pre-polymerized vinyl cyclohexane copolymer and having the following properties, including MFR of 6.3 g/10 min and Tm of 166.1⁰C (see p. 18, lines 10-15, p. 20, lines 15-30, Table on page 23). Thus, the Polymer 1 of Aastre et al comprises a masterbatch of polyVCH in Z-N-catalyzed HECO. Further, said Polymer 1 (i.e. polyVCH in Z-N HECO) was combined with Polymer 3, which is HECO as well (see Table of [0082] of Aastre et al).
Paragraph [0038] of Aastre et al specifically teaches that matrix polymer can be Ziegler-Natta catalyzed or metallocene catalyzed.
Thus, Aasetre et al explicitly teaches the addition of Z-N-catalyzed HECO together with polyvinyl cyclohexane (corresponding to component (C) of instant claim 16) to the HECO as the main component (corresponding to combination of components (A) and (B) of instant claim 16), wherein such combination of components leads to producing compositions having good crystallization and controlled shrinkage ([0010]).
6) Since addition of the polyvinyl cyclohexane nucleating agent together with Z-N-catalyzed HECO to the HECO matrix leads to providing composition with good crystallization and further controlled shrinkage, as shown by Aasetre et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Aasetre et al and Gahleitner et al , and to include, at least partially, the polyvinyl cyclohexane nucleating agent together with Z-N-catalyzed HECO having MFR of 6.3 g/10 min and Tm of 166⁰C into the HECO composition of Gahleitner et al, so to further improve crystallization and to control shrinkage of the compositions of Gahleitner et al, as taught by Aasetre et al as well, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
16. With respect to Applicant’s arguments regarding the examples of instant specification (see p. 10-12 of the Arguments), it is noted that:
1) instant claim 16 is silent with respect to any physical or mechanical properties of the composition, specifically any balance of stiffness and impact strength, as argued by Applicant. It is not clear which properties and what level are the goal of instant invention.
2) The examples of instant specification include three very specific inventive examples and three comparative examples; wherein the three inventive examples are based on the combination of the very specific components in the very specific amounts. The ranges for the amounts of the components claimed in instant invention are significantly broader than the amounts of said components presented in Examples IE1-IE3.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 28
9, 296 (CCPA 1980). See MPEP 716.02(d).
3) Further, Comparative Example CE1 does not show the presence of any nucleating agent, i.e. neither Hyperform HPN-20E nor the Z-N-nucleating agent masterbatch; Comparative Examples CE2 and CE3 do not contain any main HECO component (corresponding to components (A) and (B) of instant claim 16), but disclose either only propylene homopolymer without EP rubber (CE2) or a combination of Z-N -produced propylene homopolymer in amount of as high as 95%wt (i.e. outside of claimed range) in combination with metallocene-produced EP rubber, which compositions appear to be essentially different from the inventive compositions. It is further noted that flexural modulus of the comparative examples CE2 and CE3 is higher that flexural modulus of inventive examples IE1-IE3. As cited above, instant claim 16 is silent with respect to any physical or mechanical properties of the composition.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764