DETAILED ACTION
This Office Action is in response to the Amendment filed on 3/25/2026.
Claim(s) 9, 10, 12,13, 15, and 18-24 were cancelled.
Claim(s) 27-39 have been added.
Claim(s) 1, 6, 8, 14, 16, 25-39, are now pending in the application.
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.
Claims 1, 6, 8, 14, 16, and 25-39 are rejected under 35 U.S.C. 103 as being unpatentable over US20150252180 to Herklots et al. in view of EP0716119 to Gilliard et al. (as found on the IDS dated 5/17/2022). For the purposes of examination, citations for Gilliard are taken from a machine translation obtained from the European Patent Office website in December 2024.
Regarding Claims 1 and 14, Herklots teaches a polymer composition [abstract] that can be extruded into a pipe [0124]. The polymer composition comprises a propylene-based polymer such as a heterophasic propylene copolymer [0012] that comprises a propylene based matrix wherein the propylene based matrix comprises of a propylene homopolymer and/or a propylene-α-olefin copolymer consisting of at least 70% by mass of propylene copolymer and up to 30% by mass of α-olefin [0013], reading on the limitations of (a1). The heterophasic propylene copolymer further comprises of a dispersed ethylene-α-olefin copolymer present in the amount of 40-5 wt% [0014], reading on a dispersed ethylene-α-olefin copolymer (a2) in an amount of 2.0 to 30 wt% with respect to the propylene-based copolymer or the propylene-based polymer.
Herklots does not expressly teach the pipe is a biaxially oriented pipe made by a process comprising stretching a heated tube that has a drawing temperature Td (°C) in the axial direction and in the peripheral direction wherein Tm + 1.0°C ≤ Td ≤ Tm + 15.0°C.
However, Gilliard discloses a biaxially oriented tube, essentially consisting of a polyolefin composition [0010] that is subjected to biaxial stretching induced by a divergent annular die [0025]. Gilliard further teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Tm + 1.0°C ≤ Td ≤ Tm + 15.0°C. Herklots and Gilliard are analogous art as they are from the same field of endeavor, namely polyolefin compositions and articles made therefrom.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the pipe of Herklots using the process taught by Gilliard.
The motivation to modify Herklots with Gilliard is to have improved mechanical properties, in particular a tensile modulus [Gilliard, 0009] which is particularly desirable for the production of pipelines for the transport and distribution of pressurized fluids subjected to significant stresses [Gilliard, 0002].
Herklots and Gilliard are silent with respect to the shrinkage of the pipe. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots, when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a pipe having a shrinkage of at most 2.0% - are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 6, Herklots in view of Gilliard teaches the pipe according to claim 1 as set forth above and incorporated herein by reference.
Herklots in view of Gilliard does not teach a composition having a melting temperature Tm of 150 to 165°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots , when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a composition melting temperature of 150 to 165°C – are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 8, Herklots in view of Gilliard are silent with respect to the time to failure according to ISOP1167-1 of the pipe. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots, when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a pipe having a time to failure of at least 100 hours according to ISOP 1167-1 – are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 16, Herklots in view of Gilliard teach the biaxial orientated pipe of claim 1, teaching the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Tm + 3.0°C ≤ Td.
Regarding Claims 25-26, Herklots in view of Gilliard teaches the pipe according to claim 1 as set forth above and incorporated herein by reference.
Herklots in view of Gilliard teach the biaxial orientated pipe of claim 1, teaching the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Tm + 5.0°C ≤ Td ≤ Tm + 8.0°C of claim 25 and claim 26.
Herklots in view of Gilliard is silent regarding composition having a melting temperature Tm of 150 to 165°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots , when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a composition melting temperature of 150 to 165°C – are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Though the prior art temperature range is not identical to the claimed range (Tm + 5.0°C ≤ Td ≤ Tm + 8.0°C), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claims 27-28, Herklots in view of Gilliard teaches the pipe according to claim 1,
teaching the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Tm + 1.0°C ≤ Td ≤ Tm + 10.0°C of claim 27, and Td ≤ Tm + 8.0°C of claim 28.
Though the prior art temperature range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 29, Herklots teaches a polymer composition [abstract] that can be extruded into a pipe [0124]. The polymer composition comprises a propylene-α-olefin copolymer [0013] that consists of at least 90% by mass propylene and up to 10% by mass α-olefin [0024] wherein the α-olefin is preferably ethylene [0025] reading on a polymer composition comprising a propylene-based polymer comprising a copolymer of propylene and a comonomer which is ethylene.
Herklots does not expressly teach the pipe is a biaxially oriented pipe made by a process comprising stretching a heated tube that has a drawing temperature Td (°C) in the axial direction and in the peripheral direction wherein Tm + 1.0°C ≤ Td ≤ Tm + 15.0°C.
However, Gilliard discloses a biaxially oriented tube, essentially consisting of a polyolefin composition [0010] that is subjected to biaxial stretching induced by a divergent annular die [0025]. Gilliard further teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Tm + 1.0°C ≤ Td ≤ Tm + 15.0°C. Herklots and Gilliard are analogous art as they are from the same field of endeavor, namely polyolefin compositions and articles made therefrom.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the pipe of Herklots using the process taught by Gilliard.
The motivation to modify Herklots with Gilliard is to have improved mechanical properties, in particular a tensile modulus [Gilliard, 0009] which is particularly desirable for the production of pipelines for the transport and distribution of pressurized fluids subjected to significant stresses [Gilliard, 0002].
Herklots and Gilliard are silent with respect to the shrinkage of the pipe. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots, when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a pipe having a shrinkage of at most 2.0% - are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 30 and 31, Herklots in view of Gilliard teaches the pipe according to claim 29, wherein the propylene-α-olefin copolymer [0013] consists of at least 90% by mass propylene and up to 10% by mass α-olefin [0024] (i.e., a comonomer content of 0-10 wt%) thereby reading on a comonomer content of 0.1 – 3.4wt% and 0.1 to 3.8 wt% of claims 30 and 31 respectively.
Though the prior art range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 32, Herklots in view of Gilliard teaches the pipe according to claim 29, wherein the propylene based matrix has a MFI of 0.3-200 dg/min [0026].
Though the prior art range is not identical to the claimed range (0.1-10. g/10min), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claims 33-36 and 38-39, Herklots in view of Gilliard teaches the pipe according to claim 29, wherein Gilliard further teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus reasonably reading on Td ≥ Tm + 3.0°C of claim 33, Tm + 3.0°C ≤ Td ≤ Tm + 5.0°C of claim 34, Tm + 1.0°C ≤ Td ≤ Tm + 10.0°C of claim 38, and Td ≥ Tm + 5.0°C of claim 39.
Herklots in view of Gilliard does not teach a composition having a melting temperature Tm of 150 to 170°C. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Herklots , when modified by Gilliard in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a composition melting temperature of 150 to 170°C – are expected to be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claims 37, Herklots in view of Gilliard teaches the pipe according to claim 36, wherein the propylene-α-olefin copolymer [0013] consists of at least 90% by mass propylene and up to 10% by mass α-olefin [0024] (i.e., a comonomer content of 0-10 wt%) thereby reading on a comonomer content of 0.1 – 3.4wt%.
Though the prior art range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 29-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 9-15, and 19-20 of U.S. Patent No. 12,066,145 in view of EP0716119 to Gilliard et al. (as found on the IDS dated 5/17/2022). For the purposes of examination, citations for Gilliard are taken from a machine translation obtained from the European Patent Office website in December 2024.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other. The claims of U.S. Patent No. 12,066,145 do not expressly set forth the melting temperature and drawing temperature relationship. However, Gilliard discloses a biaxially oriented tube, essentially consisting of a polyolefin composition [0010] and teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus resulting in a drawing temperature which is higher than the melting temperature. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the pipe of U.S. Patent No. 12,066,145 using the process taught by Gilliard.
The motivation to modify U.S. Patent No. 12,066,145 with Gilliard is to have improved mechanical properties, in particular a tensile modulus [Gilliard, 0009] which is particularly desirable for the production of pipelines for the transport and distribution of pressurized fluids subjected to significant stresses [Gilliard, 0002].
Claims 1, 6, 8, 14, 16, and 25-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,083,732 in view of EP0716119 to Gilliard et al. (as found on the IDS dated 5/17/2022). For the purposes of examination, citations for Gilliard are taken from a machine translation obtained from the European Patent Office website in December 2024.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other. The claims of U.S. Patent No. 12,083,732 do not expressly set forth the melting temperature and drawing temperature relationship. However, Gilliard discloses a biaxially oriented tube, essentially consisting of a polyolefin composition [0010] and teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thus resulting in a drawing temperature which is higher than the melting temperature. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to prepare the pipe of U.S. Patent No. 12,083,732 using the process taught by Gilliard.
The motivation to modify U.S. Patent No. 12,066,145 with Gilliard is to have improved mechanical properties, in particular a tensile modulus [Gilliard, 0009] which is particularly desirable for the production of pipelines for the transport and distribution of pressurized fluids subjected to significant stresses [Gilliard, 0002].
Response to Arguments
Applicant's arguments filed 3/25/2026 have been fully considered but they are not persuasive.
Applicant states that the prior art does not necessarily teach the temperature of the annular die as it is not necessarily 1-15°C (of claim 1) or 5-8°C (of claims 25-26) higher than the melting temperature of the composition.
In response, it is noted that Gilliard teaches the concept of providing the temperature of the annular die at a temperature of 1 – 5°C higher than that of the composition entering it [Gilliard, 0027] and further requires the temperature of the composition entering the die be above the melting temperature [0025], thereby overlapping the range of Tm + 1.0°C ≤ Td ≤ Tm + 15.0°C.
Applicant states Gilliard provides not disclosure or suggesting of, for example, limiting the drawing temperature to 15.0°C or 8.0°C greater than the melting point of the polyolefin and the application as filed explains that the present inventors surprisingly discovered that when Td is too high, the resulting pipe has a surface with deficiencies.
In response, attention is drawn to the case law wherein it is held that “a showing of unexpected results must be based on evidence, not argument or speculation”. See In re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1455-56 (Fed. Cir. 1997). The case law has held that arguments unsupported by comparative data were determined insufficient to overcome prima facie case of obviousness. As such, it is suggested that Applicant provide side by side comparative data demonstrating an unexpected, surprising result (such as improved surface deficiencies) when the Td is maintained within the claimed formula Tm + 1 C < Td < Tm + 15 C.
For these reasons, Applicant's arguments are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764 /ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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