DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/17/2025 has been entered.
Claim(s) 7-10, 20-22, 34-35, 38 and 41-44 are withdrawn due to a previous restriction requirement.
Claim(s) 1, 3, 6-10, 20-24, 34-35, 38, 41-45 and 48 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, 3, 6, 23-24, 45, and 48 rejected under 35 U.S.C. 103 as being unpatentable over US2017/0368810 to Zacarias et al. in view of US2018/0162971 to Chen et al.
Regarding Claim 1, Zacarias teaches a roofing composition [title] comprising a propylene based elastomer, a thermoplastic resin, a flame retardant, and a ultraviolet stabilizer [0015] wherein the propylene based elastomer has a molecular weight of 100,000 to 500,000 [0050] thereby reading on the claimed range of from 300,000 to 600,000 g/mol.
Zacarias does not specifically teach a melt flow rate of greater than 0.15 g/10min and less than about 0.5 g/10min.
However, Chen teaches a propylene-based elastomer [Chen, 0021] with a melt flow rate of greater than 0.3 g/10 minutes. Chen and Zacarias are analogous art as they are from the same field of endeavor, namely propylene-based elastomer compositions.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to select the melt flow rate taught by Chen’s in Zacaria’s propylene based elastomer.
The motivation to modify Zacaria with Chen is that high melt flow rate resins are difficult to toughen, resulting in products that have low impact strength. As such it would have been obvious to one of ordinary skill in the art to decrease the melt flow rate as taught by Chen’s range, to increase the impact strength [Chen [0005]
Though the prior art range reading melt flow rate (greater than 0.3 min) is not identical to the claimed range (from 0.15 g/10 min to 0.5 g/10 min), 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).
Zacarias is silent regarding a Henchy rate. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Zacarias, when modified 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. Henchy rate - would implicitly 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 3, Zacarias teaches the roofing composition of claim 1, comprising a propylene based elastomer has a density of 0.84 – 0.92 g/cm3 [0046] reading on a density of from 0.85-0.87 g/cm3.
Regarding Claim 6, Zacarias teaches the roofing composition of claim 1, comprising 10-50 wt% propylene based elastomer with an ethylene content of from 16-18 wt% [0016] and 5-40 wt% of a thermoplastic resin [0016] comprising 90 wt% propylene derived units [0097] therefore comprising up to 10 wt% of olefins such as ethylene [0097]. Therefore these concentrations are used to reasonably calculate that the polymer blend comprises 1.6-13 wt% ethylene ((10 wt% * 16 wt% = 1.6 wt%) + (5wt% * 0 wt% = 0 wt%) = 1.6 wt% to ((50 wt% * 18 wt% = 9 wt%) + (40 wt% * 10 wt% = 4 wt%) = 13 wt%) reading on 8-15 wt% ethylene.
Regarding Claim 23, Zacarias teaches the roofing composition of claim 1, wherein the roofing composition comprises 5-40% thermoplastic resin [0016] thereby reading on 5-50 wt%.
Regarding Claim 24, Zacarias teaches the roofing composition of claim 1, wherein the thermoplastic resin comprises polypropylene such as impact copolymers of propylene [0097].
Regarding Claim 45, Zacarias teaches a roofing material comprising the roofing membrane adhered to a base material such as a roof decking [0119].
Regarding Claim 48, Zacarias teaches blending a composition [0033] comprising a propylene based elastomer, a thermoplastic resin, a flame retardant, and a ultraviolet stabilizer [0015] wherein the propylene based elastomer has a molecular weight of 100,000 to 500,000 [0050].
However, Chen teaches a propylene-based elastomer [Chen, 0021] with a melt flow rate of greater than 0.3 g/10 minutes. Chen and Zacarias are analogous art as they are from the same field of endeavor, namely propylene-based elastomer compositions.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to select the melt flow rate taught by Chen’s in Zacaria’s propylene based elastomer.
The motivation to modify Zacaria with Chen is that high melt flow rate resins are difficult to toughen, resulting in products that have low impact strength. As such it would have been obvious to one of ordinary skill in the art to decrease the melt flow rate as taught by Chen’s range, to increase the impact strength [Chen [0005]
Though the prior art range reading melt flow rate (greater than 0.3 min) is not identical to the claimed range (from 0.15 g/10 min to 0.5 g/10 min), 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).
Zacarias is silent regarding a Henchy rate. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Zacarias, when modified 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. Henchy rate - would implicitly 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.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Applicant states Zacarias does not teach the amended limitation of 0.15 g/10 min – 0.5 g/10 min
In response, attention is drawn to the updated rejection above, wherein the limitations of claims 1 and 48 are rejected over Zacarias in view of Chen wherein it would have been obvious to one of ordinary skill in the art to decrease the melt flow rate using Chen’s range, in order to increase the impact strength [Chen [0005].
Conclusion
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764