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 .
This Office action is in response to the amendment filed 8/27/2025. Claims 1, 6, 8-10 and 13 are amended; and claim 7 is cancelled. Accordingly, claims 1-6 and 8-15 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 recites “”wherein the temperature peak is confirmed at 750C to 1500C when measured by the differential scanning calorimetry precise measurement method (SSA)” and fail to further limit the scope of claim 1 on which it is dependent. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-6 and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al (US 2016/0272743 A1) in view of Han et al (US 2015/0122529 A1).
Regarding claims 1 and 5-6, Park et al disclose in example 2 (Table 1), an olefin polymer having a melt-index of 3.2 g/10 min (i.e., reads on the melt index in present claim 1, and 5), a Tm1 of 46.30C (i.e., reads on the melting temperature in present claim 1) and Tm2 of 85.20C (i.e., reads on the high temperature melting peak in present claims 1 and 6). The Tm means highest point of each peak in the temperature-heat flow graph of DSC (paragraph 0057). The olefin-based copolymer in example 2 is a copolymer of ethylene and 1-octene (paragraph 0181) which reads on the copolymer of ethylene and α-olefin comonomer of 8 carbon atoms in present claim 1. The α-olefin may be homopolymerized or alternating or random copolymerized (paragraph 0154) which reads on polymer is a random or alternating copolymer in present claim 1. Examples include copolymerization of ethylene with propylene, 1-butene (paragraph 0154).
Park et al are silent with respect to total enthalpy of fusion.
However, Park et al in the general disclosure teach that polymerization may be performed in the presence of inert gas such as hydrogen (paragraphs 0163-0164) and a transition metal catalyst (paragraph 0075). Additionally, Han et al teach polymerization of ethylene and propylene in the presence of hydrogen. The obtained polymer has a melting temperature of 134.110C and 140.500C and melt enthalpy of greater than 1.0 J/g (see Table 2). Therefore, given that olefin polymer, of Park et al, satisfies the melt-index, melting temperature, high temperature melting peak, weight average molecular weight, density and molecular weight distribution, and may be prepared in the presence of a group IV transition metal catalyst in an inert gas such as hydrogen as in present invention and Han et al has shown in examples a copolymer having melt enthalpy of greater than 1.0 J/g when prepared in the presence of hydrogen, it would have been obvious to one skilled in art prior to the filing of present application to prepare olefin polymer, of Park et al, in the presence of hydrogen to obtain olefin polymer having presently claimed total enthalpy of fusion (such as 1.0 to 2.0 J/g as in present claims 1 and 6), absent evidence to the contrary.
Regarding claim 2, see example 2 (Table 1) of Park et al, wherein the olefin polymer has a density of 0.870 g/cc.
Regarding claim 3, see example 2 (Table 1) of Park et al, wherein the olefin polymer has a weight average molecular weight of 117,975.
Regarding claim 4, see example 2 (Table 1) of Park et al, wherein the olefin polymer has a molecular weight distribution of 2.36.
Regarding claim 8 and 9, see example 1, of Park et al, wherein the olefin polymer is prepared using ethylene and 1-butene (paragraph 0181) which reads on the α-olefin is 1-butene of present claims 8 and 9.
Regarding claim 10, Park et al disclose in example 2 (Table 1), an olefin polymer having a melt-index of 3.2 g/10 min (i.e., reads on the melt index in present claim 10), a Tm1 of 46.30C (i.e., reads on the melting temperature in present claim 10), Tm2 of 85.20C (i.e., reads on the high temperature melting peak in present claim 10), density of 0.870 g/cc (i.e., reads on the density in present claim 10), weight average molecular weight of 117,975 (i.e., reads on the weight average molecular weight in present claim 10), and molecular weight distribution of 2.36 (i.e.; reads on the MWD in present claim 10). . The Tm means the highest point of each peak in the temperature-heat flow graph of DSC (paragraph 0057). The olefin-based copolymer in example 2 is a copolymer of ethylene and 1-octene (paragraph 0181) which reads on the copolymer of ethylene and α-olefin comonomer of 8 carbon atoms in present claim 10. The α-olefin may be homopolymerized or alternating or random copolymerized (paragraph 0154) which reads on polymer is a random or alternating copolymer in present claim 10.
Park et al are silent with respect to total enthalpy of fusion.
However, Park et al in the general disclosure teach that polymerization may be performed in the presence of inert gas such as hydrogen (paragraphs 0163-0164) and a transition metal catalyst (paragraph 0075). Additionally, Han et al teach polymerization of ethylene and propylene in the presence of hydrogen. The obtained polymer has a melting temperature of 134.110C and 140.500C and melt enthalpy of greater than 1.0 J/g (see Table 2). Therefore, given that olefin polymer, of Park et al, satisfies the melt-index, melting temperature, high temperature melting peak, weight average molecular weight, density and molecular weight distribution, and may be prepared in the presence of a group IV transition metal catalyst in an inert gas such as hydrogen as in present invention and Han et al has shown in examples a copolymer having melt enthalpy of greater than 1.0 J/g when prepared in the presence of hydrogen, it would have been obvious to one skilled in art prior to the filing of present application to prepare olefin polymer, of Park et al, in the presence of hydrogen to obtain olefin polymer having presently claimed total enthalpy of fusion (such as in the range of 1.0 J/g to 2.0 J/g), absent evidence to the contrary.
Regarding claims 11-12, claims are written in a product-by-process manner. 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 a 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 13-15, Park et al disclose in example 2 (Table 1), an olefin polymer having a melt-index of 3.2 g/10 min (i.e., reads on the melt index in present claim 13, and Tm2 of 85.20C (i.e., reads on the high temperature melting peak in present claim 13). The Tm means the highest point of each peak in the temperature-heat flow graph of DSC (paragraph 0057). The polymerization may be performed in the presence of inert gas such as hydrogen (paragraphs 0163-0164) and a transition metal catalyst (paragraph 0075). The olefin-based copolymer in example 2 is a copolymer of ethylene and 1-octene (paragraph 0181) which reads on the copolymer of ethylene and α-olefin comonomer of 8 carbon atoms in present claim 13. The α-olefin may be homopolymerized or alternating or random copolymerized (paragraph 0154) which reads on polymer is a random or alternating copolymer in present claim 13.
Park et al are silent with respect to total enthalpy of fusion; and process of preparing the olefin polymer.
However, regarding total enthalpy of fusion, Park et al in the general disclosure teach that polymerization may be performed in the presence of inert gas such as hydrogen (paragraphs 0163-0164) and a transition metal catalyst (paragraph 0075). Additionally, Han et al teach polymerization of ethylene and propylene in the presence of hydrogen. The obtained polymer has a melting temperature of 134.110C and 140.500C and melt enthalpy of greater than 1.0 J/g (see Table 2). Therefore, given that olefin polymer, of Park et al, satisfies the melt-index, melting temperature, high temperature melting peak, weight average molecular weight, density and molecular weight distribution, and may be prepared in the presence of a group IV transition metal catalyst in an inert gas such as hydrogen as in present invention and Han et al has shown in examples a copolymer having melt enthalpy of greater than 1.0 J/g when prepared in the presence of hydrogen, it would have been obvious to one skilled in art prior to the filing of present application to prepare olefin polymer, of Park et al, in the presence of hydrogen to obtain olefin polymer having presently claimed total enthalpy of fusion (such as in the range of 1.0 J/g to 2.0 J/g), absent evidence to the contrary.
Regarding process of preparing the olefin polymer, claims are written in a product-by-process manner. 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 a 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraph 9, of office action mailed 5/27/2025, is withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 12 below).
Applicant's arguments filed 8/27/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) copolymer of Han is a block copolymer which is different from the olefin-based polymer of present claims which is selected from the group consisting of random, alternating or a graft copolymer. The catalyst used in Han and the polymerization method is different from that in Park, Han fails to disclose or imply the correlation between the total enthalpy of fusion, tensile strength and tearing strength; (B) Applicant has amended the claims to limit the olefin based polymer to a copolymer of ethylene and α-olefin comonomer of 3 to 12 carbon atoms and total enthalpy range to 1,0-2.0 J/g. Examples in which ethylene and 1-butene are used can be deemed to sufficiently represent the scope of copolymer of ethylene and α-olefin comonomer of 3 to 12 carbon atoms. Copolymer having total enthalpy of fusion range of 1.04 to 1.6 J/g in examples of present application are deemed to represent total enthalpy of fusion range of 1.0 to 2.0 J/g of amended claim 1. Comparative example 2-2 having total enthalpy of fusion of 0.97 (which is close to that claimed but outside that presently claimed) exhibits inferior tensile strength and tear strength.
With respect to (A), Park et al disclose in an exemplary embodiment a random copolymer having the presently claimed properties (such as melt index, high temperature melting peak, melting temperature, is a copolymer of ethylene and α-olefin comonomer). Additionally, Park et al teach that polymerization can be conducted in the presence of inert gas such as hydrogen. Graham v. Deere analysis was done, and the secondary reference of Han is only used for its teaching that polymers prepared in the presence of hydrogen and transition metal catalyst result in the polymer exhibiting high total enthalpy of fusion and can be optimized.
With respect to (B), while exemplary embodiments have a total enthalpy of 1.04 to 1.6 J/g, there is no data showing olefin-based polymer exhibiting total enthalpy other than 1.04 J/g of the claimed range would exhibit improved tear strength and tensile strength. Even if there is a showing of unexpected results as argued by Applicant such showing is not commensurate with scope of claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764