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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki et al. (JP 2019177941). The citations below for Miyazaki et al. are taken from an English language machine translation included herewith.
Regarding claims 1, 2, and 4-6, Miyazaki et al. teaches a master batch comprising 80 parts by mass of polypropylene and 20 parts by mass of medium-chain fatty acid triglyceride (glycerin fatty acid ester) (¶43). The polypropylene can also be a copolymer of propylene and other alpha-olefin (¶33). When the propylene resin is taken to be 100 parts by mass, the triglyceride is present in 25 parts by mass (calculated by Examiner), which falls into the claimed range of 10 parts by mass or greater.
Miyazaki et al. does not teach that the master batch composition meets the claimed temperature conditions of claims 1 and 2 that are determined through testing the composed composition. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the claimed temperature conditions, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 7, Miyazaki et al. does not teach that the master batch composition has a surface bleeding amount of the non-volatile liquid per 1 g of master batch of 20 mg or less after storage for 60 days in an environment of 60% relative humidity and 22° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the amount of surface bleeding of the non-volatile liquid, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2018/0244905).
Regarding claims 1, 2, 4-6, Wang et al. teaches a polypropylene composition (master batch) comprising 55 to 90% by weight of a crystalline propylene copolymer comprising propylene monomers and at least one of ethylene and a C4-C12 alpha-olefin, from 10 to 45% by weight of an amorphous propylene copolymer comprising propylene monomers and at least one of ethylene and a C4-C12 alpha-olefin (¶12, 14). These components result in the composition comprising 100 parts by weight of a propylene copolymer composed of propylene monomers and at least one of ethylene and a C4-C12 alpha-olefin. The composition further comprises up to 60% by weight, preferably 5 to 45% by weight, of a plasticizer such as vegetable oil (¶85, 92, 97).
Wang et al. does not teach a specific example comprising the propylene resin and the vegetable oil. However, Wang et al. teaches that the composition may contain a plasticizer and that the plasticizer may be vegetable oil. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a plasticizer, such as vegetable oil, to the propylene composition, and would have been motivated to do so by following the teaching of Wang et al. and would have a reasonable expectation of success in doing so.
Wang et al. does not teach that the master batch composition meets the claimed temperature conditions of claims 1 and 2 that are determined through testing the composed composition. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the claimed temperature conditions, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 3, Wang et al. teaches that the composition may additionally contain a nucleating agent (̬¶86).
Regarding claim 7, Wang et al. does not teach that the master batch composition has a surface bleeding amount of the non-volatile liquid per 1 g of master batch of 20 mg or less after storage for 60 days in an environment of 60% relative humidity and 22° C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., the amount of surface bleeding of the non-volatile liquid, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 8, Wang et al. teaches that the composition may include an additional polymer other than the crystalline and amorphous propylene copolymers, such as various polyethylene homopolymers and copolymers (¶80). Wang et al. also teaches that the composition can be formed into an article such as a bottle or a container (¶109). An article made of the composition would inherently possess an inner surface made of the composition.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767