DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/18/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1: As amended, claim 1 states the following.
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Both species (A2) and (A3) require a block copolymer (a-3) having a segment of a propylene-based polymer (a-1). Note, however, the amended claim also states the following.
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The use of the singular article “a” in the phrase “a segment of a propylene-based polymer (a-1)” in the description of block copolymer (a-3) implies that the segment contains a single propylene-based polymer; however, the claim also states that polymer (a-1) is a blend of two or more polymers. The structure of the claimed block copolymer (a-3) is therefore indefinite, as it is unclear how a single block would comprise a blend of two or more different polymers.
Claims 2-8 depend from claim 1 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as outlined above with respect to claim 1.
Claim Interpretation
As discussed earlier in this Action, the structure of block copolymer (a-3) is indefinite, as it is unclear what structure is intended to be encompassed by “a segment of a propylene-based polymer (a-1)” when polymer (a-1) is required to be at least two polymers. For the purposes of examination on the merits, the phrase “a segment of a propylene-based polymer (a-1)” has been interpreted to read on any propylene-based polymer block/segment that satisfies the properties of melt flow rate (MFR), propylene content, and olefin comonomer content recited in lines 4-9 of claim 1. As such, claimed block copolymer (a-3) reads on any block copolymer having a propylene-based segment that satisfies the properties of melt flow rate (MFR), propylene content, and olefin comonomer content recited in lines 4-9 of claim 1 and a propylene/ethylene segment that satisfies the properties of claimed polymer (a-2) in lines 10-13 of claim 1.
Claim Rejections - 35 USC § 103
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over by Fukuda et al, US2015/0274948 (of record).
Fukuda discloses a composition comprising a polypropylene resin, an ethylene/olefin copolymer, an inorganic filler, a fatty acid amide, and a surfactant, (abstract, ¶0010-0023) which is used in the production of injection molded articles (for claims 5, 6) such as automobile door parts (for claims 7, 8) (¶0197, 0199).
Regarding claimed component (A): The prior art polypropylene resin is preferably a block copolymer comprising a segment of a propylene polymer and a segment of a propylene/ethylene copolymer (¶0047).
Said propylene polymer has a melt flow rate (MFR; 230 °C, 21.16N) in the range of 10 to 300 g/10 min, overlapping the claimed range (for claims 1, 2); and comprises 98 to 100 mol% propylene (for claim 1) and 0 to 2 mol% of ethylene/C4-C8 olefin comonomer (for claim 1) (¶0013). The prior art segment of a propylene polymer therefore corresponds to claimed segment of propylene-based polymer (a-1) (for claim 1).
Said propylene/ethylene copolymer has an intrinsic viscosity at 135 °C in decalin in the range of 1.5 to 8 dl/g, overlapping the claimed range (for claim 1), and an ethylene content in the range of 30 to 60 mol% (for claim 1) (¶0014). The prior art segment of a propylene/ethylene copolymer therefore corresponds to claimed segment of propylene/ethylene copolymer (a-2) (for claim 1). As such, the prior art block copolymer corresponds to claimed component (A) which is (A2) (for claim 1). The total amount of polypropylene resin is 37 to 80 parts by weight (¶0045), overlapping the claimed range (for claim 1).
Fukuda further teaches that the polypropylene resin comprises 30 to 80 parts (for claim 1) of the propylene polymer and 0 to 30 parts, overlapping the claimed range (for claim 1) of the propylene/ethylene copolymer, with the sum of their amounts being in the range of 30 to 80 parts by weight, overlapping the claimed range (for claim 1) (¶0013-0015).
Regarding claimed component (B): The prior art ethylene/olefin copolymer comprises ethylene and at least one C3-C8 olefin comonomer (for claim 1) and is characterized by an ethylene content of 65 to 90 mol% (for claim 1) (¶0016). Fukuda exemplifies the use of ethylene/olefin copolymers having MFR of 2 g/10 min (for claim 1) (¶0256-0257; Examples). The prior art ethylene/olefin copolymer therefore corresponds to the claimed component (B) (for claim 1). Said ethylene/olefin copolymer is included in an amount in the range of 20 to 50 parts by weight (¶0016), overlapping the claimed range (for claim 1).
Regarding claimed component (C): As noted above, the prior art composition comprises a fatty acid amide, corresponding to claimed component (C) (for claim 1). Said fatty acid amide is a compound comprising 8 to 25 carbon atoms or a dimer thereof (for claim 3) (¶0170) and is included in an amount in the range of 0.2 to 1 part by weight (for claim 1) (¶0019).
Regarding claimed component (D): As noted above, the prior art composition comprises a surfactant, corresponding to claimed component (D) (for claim 1). Said surfactant is preferably a compound containing one or two ester groups of 8 to 25 carbon atoms (for claim 4) (¶0175) and is included in an amount in the range of 0.2 to 1 part by weight (for claim 1) (¶0020).
Regarding the requirement that the sum of claimed components (A) and (B) is 100 parts: Fukuda teaches that the sum of the amounts of the polypropylene resin, corresponding to claimed component (A); the ethylene/olefin copolymer, corresponding to claimed component (B); and the inorganic filler is 100 parts (¶0018). Additionally, the amount of inorganic filler may be 0 parts (¶0017). The prior art therefore renders obvious a composition wherein the sum of the amounts of polypropylene resin and ethylene/olefin copolymer is 100 parts (or claim 1) when the amount of filler is 0.
Fukuda does not particularly point to the production of a composition comprising the required amounts of each component wherein the components (a-1) and (a-2) have MFR and intrinsic viscosity in the recited ranges.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time of filing to prepare the claimed composition in view of the teachings of Fukuda.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues that the claimed invention yields unexpected results, citing the data from Tables 1-3 of the specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)).
As noted earlier in this Action, amended claim 1 states the following with regards to the polypropylene-based resin (A).
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As written, claimed species (A2) reads on a single block copolymer. In contrast, none of the provided examples discloses a composition wherein a single block copolymer is used as propylene-based resin (A). The examples therefore are not commensurate in scope with the claimed invention with regards to the number of polymers that are present.
Furthermore, the cited examples are not commensurate with the ranges used to define the claimed invention. Polymer (a-1) has a propylene content in the range of 98 to 100 mol% and a MFR od 120 to 250 g/10min; in contrast, all examples report polymer (a-1) having propylene content of 100 mol% (specification Table 1) and MFR in the range of 129 to 183 g/10 min-i.e., no data is presented from polymers (a-1) having MFR in the upper 50% of the claimed range (specification Tables 1 and 2). Polymer (a-2) is required to have an ethylene content of 30 to 60 mol% and an intrinsic viscosity of 4 to 7 dl/g; in contrast, the examples are all reported to comprise component (a-2) having an ethylene content of 39 mol% and viscosity of at most 6.3 dl/g (specification Tables 1 and 2). No samples are provided that represent the viscosity range of greater than 6.3 up to 7.0-i.e., almost one third of the recited range. Finally, component (B) is an ethylene/C3-C8 olefin copolymer having a MFR of 2 to 8g/10 min and an ethylene content of 65 mol% to 90 mol%. In contrast, all of the examples were prepared using a single species of polymer (B) which is an ethylene/octene copolymer having a MFR of 2.0 g/10 min and an ethylene content of 80 mol% (specification ¶0061, Tables 2 and 3). The cited examples therefore are not commensurate in scope with the broad range of polymers that fall within the scope of the instant claims.
To the extent that applicant argues that Fukuda does not specifically discloses a block copolymer wherein the propylene/ethylene segment has the claimed viscosity and the overall composition has a scuff test rating of 4, it is noted that the rejection of record does not argue that one of the examples of Fukuda has the required viscosity. It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). As noted earlier in this Action, Fukuda broadly teaches the production of a block copolymer wherein the propylene/ethylene copolymer segment has an intrinsic viscosity which overlaps the claimed range. It therefore would have been obvious to prepare a block copolymer meeting this limitation in view of the prior art.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Note that the majority of the examples disclosed by Fukuda are reported to have a scuff rating of 4 (see Fukuda Table 2). One of ordinary skill in the art would therefore reasonably infer that the compositions within the scope of Fukuda may have such rating. "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967) (MPEP § 716.02(c)). The evidence in the record therefore does not demonstrate that the scuff rating disclosed in the instant application is evidence that the claimed invention yields unexpected results relative to the prior art. The rejection is therefore maintained.
Conclusion
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765