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 .
Election/Restrictions
Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over De Palo et al. (US 2020/0263013) in view of Costantini et al. (US 2009/0048403) or Kahlen et al. (US 2020/0385555).
In the abstract and ¶’s 5, 15, 26 and 30, De Palo et al. teach a polyolefin composition that is combined with B) a heterophasic propylene copolymer with improved properties from post-consumer waste using more of the A) recycled polyethylene/polypropylene blends in commercial products; wherein the heterophasic propylene ethylene copolymer has a xylene soluble content of 15 to 45 wt%; a C2 (ethylene) content of 6.0 to 16.0 wt%; and an MFR2 (230°C, 2.16 kg) of from 0.3 to 50.0 g/10min.
While De Palo et al. does not explicitly state that the recycled polyethylene/polypropylene blend contains limonene, we submit that while limonene is normally not present in virgin polymer material, the claimed amounts of limonene content is typically present in recycled polymer material from consumer waste.
Therefore, the requirement for limonene content of 0.1 to 100 parts in the recycled material blend of De Palo et al. is an intrinsic feature of recycled material. It is noted that no data in the present disclosure is given for the limonene content of the recycled mixtures used in the examples, indicating further that the presence of limonene within the claimed range is inherent to all recycled polymers.
Further, while De Palo et al. fail to teach the claimed 40-60 wt% of the recycled blend component and instead teach 70 to 95 wt% of the recycled blend component, this distinction does not provide a technical effect over De Palo et al., which actually uses more of the recycled component in making a commercially viable material. Thus, the difference in the amounts of A) and B) is not associated with an improved technical effect. Further, all the applicants working examples compare compositions which are either 100 wt% of A) or B) with compositions having 50 wt% A) and 49.5 wt% B). Thus, there is no evidence that the relative amounts of A) and B) required by the claims is in any way significant over the 70 wt%. recycled polymers taught in De Palo et al.
For illustration, in claim 1, Costantini et al. teach a composition comprising recycled materials and higher proportions of heteraphasic polypropylene copolymers, which comprise up to 70 wt% of the heterophasic polyolefin component.
Also, in claim 1, Kahlen et al. teach a composition comprising recycled materials and higher proportions of heteraphasic polypropylene copolymers, which comprise up to 60 wt% of HEC.
The issue with the practical application of recycled materials is their relatively poor mechanical properties and a person of ordinary skilled in the art would recognize that the greater the relative amount of recycled material in a composition, the more difficult it will be for its properties to be improved. Thus, it would have been obvious to one of ordinary skill in the art that compositions with lower amounts of the problematic recycled material from the teachings of De Palo et al. using up to 95 wt% of the recycled blend component in the composition, particularly in view of Costantini et al. or Kahlen et al., which include the problematic recycled material in ranges from 40 to 60 wt%.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duranel et al. (WO 2019/224129) in view of Doshev et al. (US 2013/0005902), Marques Ferreira Custodio et al. (US 2016/0326355) or Kahlen et al. (US 2020/0385555).
In page 2, lines 16-25 and page 3, lines 1 to 14, and claim 1, Duranel et al. teach a composition comprising a recycled polypropylene blend from domestic waste polypropylene having good mechanical properties, such as toughness and stiffness as measured by impact strength, wherein in Example E1 from Table 4, the composition comprises a 50:50 wt% mixture of polypropylene post-consumer resin and a heterophasic propylene copolymer having a xylene soluble content (XCS) of 14 wt, a C2-content of 8 wt%, and an MFR, of 0.3 g/10min.
Although Duranel et al. does not explicitly disclose the limonene content of recycled polypropylene blend (PCR-PPS), it is a recycled material, so will inevitably contain a small amount of limonene (see above).
While Duranel et al. doesn’t teach the present MFR value for the heterophasic propylene copolymer, applicant’s disclosure does not contain any examples of the claimed invention with all the claimed components, and from Table 3 of the Patent, the MFR of the heterophasic propylene copolymer used by applicants is not within the range of the claims (Example CE4 is 100wt% Component B and has an MFR2 of 21.4 ¢/10min). Thus, there is no evidence that the particular claimed MFR range (30 to 55 g/10min) is in any way critical to applicant’s invention. It is also noted that applicant only uses one type of recycled material, i.e., Purpolen, while claiming all types of recycled polyethylene/polypropylene blends.
Further, It is known to use heterophasic propylene copolymers having the claimed MFR, of 0.3 g/10min in blends with recycled material, such as taught in Doshev et al., Marques Ferreira Custodio et al. or Kahlen et al.
Example 1 in Table 1, Doshev et al. teach a heterophasic propylene copolymer that has a xylene soluble content of 16.6 wt%; an MFR2 of 36 2/10min; and an ethylene (C2) content of around 8.4 wt%.
In CEx1, Ex1, Ex2 and Ex4 from Table 2 of Marques Ferreira Custodio et al. all satisfy the MFR2 features of for the heterophasic propylene up to 30 wt%.
In page 1, ¶ 1 and page 2, ¶ 2, Kahlen et al. teach the use of a heterophasic polypropylene (HECO) for recycled polyolefin blends, to provide polyolefin materials having high stiffness and high impact strength, On page 12, lines 17 - 28, Kahlen et al. teach a preference for heterophasic polypropylene with an MFR of 30 g/ 10min or more.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to use heterophasic polypropylene with MFR ranging from 30 to 55 g/10min with blends for recycled polyolefin of Duranel et al., in order to obtain the advantages taught by Doshev et al., Marques Ferreira Custodio et al. or Kahlen et al., motivated by a reasonable expectation of success.
Response to Arguments
Applicant's arguments and declaration filed 12/01/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against De Palo et al. or Costantini et al. individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Also, it is noted that the teaching of the prior art is not limited to their Examples. Disclosed examples and preferred embodiments (even if the embodiments tested by appellant were preferred) do not constitute a teaching away from a broader disclosure. De Palo et al. still teach wherein the heterophasic propylene ethylene copolymer has a xylene soluble content of 15 to 45 wt%; a C2 (ethylene) content of 6.0 to 16.0 wt%; and an MFR2 (230°C, 2.16 kg) of from 0.3 to 50.0 g/10min.
In response to applicant's argument against De Palo et al. in view of Costantini et al. or Kahlen et al., the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It still would have been obvious to one of ordinary skill in the art to have a lower ratio of the problematic recycled material in the composition from the teachings of De Palo et al., particularly in view of Costantini et al. or Kahlen et al., which include the problematic recycled material in ranges from 40 to 60 wt%.
In response to applicant's argument that a skilled person would not combine the teachings of De Palo with those of Kahlen et al., the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Further, De Palo et al. does not exclude any additional virgin polyolefin resin in the blend.
For the reasons stated above, the declaration is not persuasive as it only goes on the further illustrate the above non-persuasive arguments of bodily incorporation of the examples in the primary and secondary references.
In response to applicant's arguments against Duranel et al., Doshev et al. and Custodio et al. individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that a skilled person would not combine the teachings of Duranel et al. with Kahlen et al., the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It still would have been obvious to one having ordinary skill in the art at the time the invention was made, to use heterophasic polypropylene with MFR ranging from 30 to 55 g/10min with blends for recycled polyolefin of Duranel et al., in order to obtain the advantages taught by Doshev et al., Marques Ferreira Custodio et al. or Kahlen et al., motivated by a reasonable expectation of success.
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 KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE