DETAILED ACTION
This Office Action is responsive to the amendment filed on 9/22/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 the 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.
Claim Rejections - 35 USC § 103
Claim(s) 7-12 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Marczinke et al, US5461119 (of record), in view of Mélo et al, published in Polímeros vol. 20 (2010).
As discussed in the previous Action, Marczinke discloses a process for the production of a partially crosslinked thermoplastic polyolefin (abstract; Column 6: lines 38-39), corresponding to the claimed thermoplastic polyolefin (for claim 7). Said process comprises reactive extrusion of a composition comprising a polyolefin, corresponding to claimed polyolefin resin (A) (for claim 7) and a bismaleimido compound (abstract; Column 6, lines 13-15). Marczinke teaches that the process comprises adding said polyolefin and said bismaleimido compound to a twin screw extruder, corresponding to claimed step (a) (for claims 7, 8), and reacting them at a temperature of 180 to 280 °C, corresponding to claimed step (b) (for claims 7, 8) (Column 6, lines 13-21). The prior art specifically teaches that the process is performed in the absence of any free radical initiators (abstract; Column 2, lines 15-18; Marczinke claim 1); the prior art process is therefore free of peroxides (for claims 7, 19) and their coagents (for claim 19).
Regarding the claimed polyolefin resin (A): As noted above, the prior art process requires the reaction of a polyolefin, corresponding to claimed polyolefin resin (A) (for claim 7), with a bismaleimido compound. Said polyolefin is an ethylene (co)polymer or a propylene (co)polymer (Column 1, lines 7-21), corresponding to the claimed polyolefin which is a polyethylene resin or a polypropylene resin, respectively (for claim 17). Said ethylene (co)polymer may have a density as high as 0.970 g/cm3 (Column 2, lines 22-24); one of ordinary skill in the art will recognize that a polyethylene having a density of 0.970 g/cm3 corresponds to the claimed high density polyethylene (for claim 18).
Regarding the use of hexamethylene-1,6-dimaleimide: Marczinke teaches that the hexamethylene-1,6-dimaleimide is a particularly preferred embodiment of the prior art bismaleimido compound (Column 5, lines 52-57) (for claim 7). Said bismaleimido compound is used in an amount in the range of 0.001 to 5 wt% (i.e., 10 to 50000 ppm) (for claim 1) (Column 5, line 66 to Column 6, line 1).
Regarding the claimed specific energy: Note that applicant has stated on the record that a specific energy in the range of 0.20 to 0.30 kWh/kg is required to achieve crosslinking of a polyolefin using hexamethylene-1,6-dimaleimide (see remarks filed 10/28/2024: page 8, 2nd paragraph). Given that Marczinke discloses crosslinking polyolefins with this compound, it is therefore reasonably expected that the prior art process provides a specific energy in the required range. The burden is therefore shifted to applicant to provide evidence demonstrating that the prior art process does not provide a specific energy in the range of 0.20 to 0.30 kWh/kg during the reaction of the polyolefin with hexamethylene-1,6-dimaleimide (for claims 7, 8).
Regarding claim 10: As noted above, the prior art process is performed in an extruder. An ordinary artisan will recognize that rotation of the screw(s) in an extruder results in a shearing force on the composition.
Marczinke is silent regarding the use of a mixer speed of 300 to 500 rpm.
As taught by Mélo, it was known in the art that screw speed is a parameter that affects barrel pressure and residence time in extruders, with residence time decreasing and barrel pressure increasing as screw speed increases (page 325: left column lines 1-9; right column lines 17-18).
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation"; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05)(II)(A)). Marczinke teaches a process which
comprises reacting a polyolefin with the same compound-i.e., hexamethylene-1,6-dimaleimide- as in the claimed process;
is performed in the same type of mixer-i.e., an extruder- at a temperature in the range claimed by applicant; and
results in the production of the same product-i.e., a partially crosslinked polyolefin- as the claimed process.
The difference between the claimed invention and the prior art process is the speed at which the mixer was run. As taught by Mélo, it was known in the art that the screw speed of an extruder was a result-effective variable, with parameters such as residence and barrel pressure changing as screw speed is changed. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to vary the screw speed through routine experimentation in order to increase or decrease the residence time as desired (for claims 7,9).
Regarding the claimed properties (for claims 11, 12): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed above, the prior art teaches the production of a partially crosslinked polyolefin made by reacting a polyolefin with the same bismaleimide in the same ratio under the same conditions as disclosed by applicant for the production of the claimed invention. As the prior art partially crosslinked polyolefin appears to be identical to the claimed invention, it is reasonably expected that its properties would necessarily be the same as claimed . The burden is therefore shifted to applicant to provide evidence that the claimed properties are not inherently met by the prior art (for claims 11, 12).
Response to Arguments
Applicant's arguments filed 9/22/2025 have been fully considered but they are not persuasive.
Applicant argues that the examples of Marczinke disclose processes wherein 1,3-bismaleimido benzene is used as a crosslinker in amounts much higher than the claimed amount. Applicant argues that the prior art therefore does not render obvious a process wherein hexamethylene-1, 6-dimaleimide is used in the claimed amount of 100 to 750 ppm.
In response, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123 [R-5]).
As discussed above and in the previous Office Action, Marczinke specifically teaches that hexamethylene-1, 6-dimaleimide can be used as the bismaleimido crosslinker in the prior art process. Furthermore, Marczinke teaches that the bismaleimido crosslinker may be used in an amount in the range of 0.001 to 5 wt% (i.e., 10 to 50000 ppm), overlapping the claimed range. Contrary to applicant’s arguments, the mere fact that Marczinke teaches examples wherein 1,3-bismaleimido-benzene is used as the crosslinker in greater amounts than that allowed by the instant claims does not teach away from the facts that Marczinke specifically discloses that the crosslinker may be hexamethylene-1, 6-dimaleimide and that the amount of crosslinker may be as low as 10 ppm.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art range for the amount of crosslinker overlaps the claimed range of 100 to 750 ppm. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to perform the prior art process using hexamethylene-1, 6-dimaleimide as the crosslinker in the claimed amount.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that mechanical properties are not changed in the claimed process) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As written, the claimed process only requires that a thermoplastic polyolefin is subjected to reactive extrusion with 100 to 750 ppm hexamethylene-1,6-dimaleimide under recited conditions. The claimed invention does not recite any limitations regarding the degree to which mechanical properties of the final product change and/or do not change compared to the starting material.
Applicant argues that the previous Office Action asked that data be provided that shows the process of the claimed invention achieves a better effect than that of Marczinke. This argument misinterprets the position outlined in the previous Office Action, however.
Applicant previously cited the declaration of Ashish Kumar submitted on 10/28/2004 as evidence that the claimed invention allegedly yields unexpected results. However, as discussed in paragraphs 24 to 25 of the Office Action mailed on 4/22/2025, the submitted declaration indicates that the comparative examples disclosed therein were not crosslinked. In contrast, Marczinke specifically teaches that the prior art process results in partial crosslinking of the polyolefin.
Applicant can rebut a prima facie case of obviousness by showing that there are new or unexpected results relative to the prior art; see Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). The previous Office Action did not request data that the claimed process achieves a “better effect”-which is subjective terminology- but rather stated that any evidence of secondary considerations must compare the claimed invention to the closest prior art. As noted in the previous paragraph, the declaration indicates that its comparative examples were not crosslinked; the comparative examples of the declaration therefore do not correspond to the closest prior art. Similarly, the comparative examples CE1 to CE5 of the instant specification are all reported to contain 0 ppm rheology modifier (see Tables 2-6) and therefore do not correspond to the prior art process which requires the use of a crosslinker. Applicant therefore has not compared the claimed invention to the closest prior art as required.
Furthermore, applicant’s arguments state the following (page 6: lines 11-12).
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The evidence currently in the record, however, does not demonstrate that this allegedly unexpected result is obtained commensurate in scope with the claimed invention. See Table 2 of applicant’s specification. Inventive Example IE1 discloses a crosslinked sample prepared using 300 ppm hexamethylene-1,6-dimaleimide as a crosslinker. Comparing this sample to comparative example CE1-which differs from IE1 in that CE1 was performed using 0 ppm hexamethylene-1,6-dimaleimide-shows that the use of the rheology modifier resulted in decrease of about 14% in tensile strength at break (see specification Table 2). See also the reported values for the elongation at break and tensile modulus, both of which are decreased compared to the values obtained from the non-crosslinked sample.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As discussed above, Marczinke discloses a process wherein an ethylene polymer (i.e., a polyolefin) is subjected to reactive extrusion with hexamethylene-1,6-dimaleimide in the absence of a free radical initiator. Further note that the prior art range for the amount of hexamethylene-1,6-dimaleimide overlaps the claimed range. The prior art therefore teaches a process wherein the same base polymer (i.e., a polyolefin) is reacted with the same modifier (i.e., hexamethylene-1,6-dimaleimide) in the same amount in the absence of a radical initiator. Contrary to applicant’s argument, impermissible hindsight is not required to use a modifier specifically disclosed by Marczinke in an amount taught by the prior art in order to obtain the final product-a partially crosslinked polyolefin-which the prior art specifically discloses. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to perform the claimed process in view of the teachings of Marczinke.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765