DETAILED ACTION
This Office Action is responsive to the amendment filed on 12/1/2025.
The objections and rejections not addressed below are deemed withdrawn.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 § 103
Claims 1-13, 15, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kahlen et al, WO2018/099882 (of record).
Kahlen discloses a polypropylene composition comprising a first heterophasic propylene copolymer (HECO1), a second heterophasic propylene copolymer (HECO2), HDPE, an inorganic filler, and a plastomer (Page 1: line 31 to Page 2: line 12). Said propylene composition is characterized by a melt flow rate (MFR) in the range of 10 to 40 dg/min (for claims 1, 11, 17, 23) (Page 8: lines 28-31). The prior art composition is prepared and used in the production of automotive parts, corresponding to the claimed article (for claims 12, 13) (see Kahlen claims 14-15).
Regarding the claimed first heterophasic propylene copolymer: Prior art HECO1 is a heterophasic propylene copolymer characterized by a MFR in the range of 50 to 90 dg/min (Page 10: lines 20-24), overlapping the claimed range (for claims 1, 3, 15, 17, 23); a xylene cold soluble fraction in an amount in the range of 10.0 to 40.0 wt% (Page 11: lines 28-31), overlapping the claimed range (for claims 1, 15, 17, 23); and an intrinsic viscosity of said xylene cold soluble fraction in the range of 1.0 to 3.3 dl/g (Page 12: lines 1-7), overlapping the claimed range (for claims 1, 15, 17, 23).
Said HECO1 comprises a matrix of a propylene polymer (M1) in which an elastomeric polymer E1 is dispersed (Page 13: lines 30-32). Said propylene polymer (M1) is preferably a homopolymer (Page 12: lines 17-22), corresponding to the claimed first propylene polymer (for claims 1, 5, 17). Said elastomeric polymer E1 is preferably an ethylene/propylene copolymer (for claims 1 , 17) having an ethylene content of (page 14: lines 9-10) in the range of 35.0 to 70.0 mol% (page 14: lines 12-14). Based on the molecular weights of ethylene (28.05 g/mol) and propylene (42.081 g/mol), it is calculated that this corresponds to an ethylene content in the range of about 26.4 to 60.9 wt%, overlapping the claimed range (for claims 1, 17, 18, 21). The prior art polymer E1 therefore corresponds to the claimed first ethylene/α-olefin copolymer (for claims 1, 17). Said HECO1 is present in an amount in the range of 40 to 60 wt% (for claims 1, 4, 17, 23) (Page 2: line 28). The prior art HECO1 therefore corresponds to the claimed first heterophasic propylene copolymer (for claims 1, 17, 23).
Regarding the claimed HDPE: As noted above, the prior art composition comprises HDPE (for claims 1, 17, 23). Said HDPE is present in an amount in the range of 2.0 to 10.0 wt% (Page 2: line 31), overlapping the claimed range (for claims 1, 17), and preferably has a density in the range of 0.900 to 0.965 g/cm3 (Page 39: lines 8-11), overlapping the claimed range (for claim 7), and a MFR in the range of 20 to 40 g/10 in (i.e., 20 to 40 dg/min) (Page 39: lines 22-26).
Regarding the claimed second heterophasic propylene copolymer: The prior art HECO2 is a heterophasic propylene copolymer characterized by a MFR in the range of 1.0 to 20.0 dg/min (Page 26: lines 24-28), overlapping the claimed range (for claims 1, 17, 23). The intrinsic viscosity of the xylene soluble portion of HECO2 above 3.5 dl/g (page 28: lines 4-9), overlapping the claimed range (for claim 7). Said HECO2 comprises a matrix polymer P2 in which an elastomeric polymer E2 is dispersed (for claims 1, 17) (page 31: lines 11-13). Said polymer P2 is a propylene (co)polymer (page 28: lines 26-27), corresponding to claimed second propylene polymer (for claims 1, 17). Said elastomeric polymer E2 is preferably an ethylene/propylene copolymer (for claims 1, 17) having an ethylene content in the range of 15.0 to 55.0 mol% (page 31: lines 22-28); it is calculated that this corresponds to an ethylene content of about 10.5 to 44.9 wt%, overlapping the claimed range (for claims 1, 17, 19-21). The prior art polymer E2 therefore corresponds to the claimed second ethylene/α-olefin copolymer (for claims 1, 17). Said HECO2 is present in an amount in the range of 21 to 31 wt% (for claims 1, 17, 23) (Page 2: line 29). The prior art HECO2 therefore corresponds to the claimed second heterophasic propylene copolymer (for claims 1, 17, 23).
Regarding the claimed inorganic filler: As noted above, the prior art composition comprises an inorganic filler (for claims 1, 17). Said inorganic filler is present in an amount in the range of 10 to 20 wt% (Page 2: line 30), overlapping the claimed range (for claims 1, 17, 23).
Regarding the claimed elastomer: As noted above, the prior art composition comprises a plastomer. Said plastomer may be an elastomeric copolymer of ethylene and a C4 to C20 olefin (for claim 8) (Page 37: lines 18-19; Page 38: lines 4-10), and is characterized by a density below 0.900 g/cm3 (Page 37: lines 24-26), overlapping the claimed range (for claim 10), and a MFR less than 50 g/10 min (i.e., less than 50 dg/min) (Page 37: lines 28-30), overlapping the claimed range (for claim 9). Said plastomer is present in an amount of 5.0 to 15 wt% (Page 3: line 1).
Regarding the sum of the amounts of first heterophasic propylene copolymer and HDPE: As noted above, the prior art composition comprises 40 to 60 wt% HECO1 and 2.0 to 10 wt% HDPE. The sum of the amounts of HECO1 and HDPE therefore is in the range of 42 to 70 wt% (for claim 2).
Kahlen does not specifically disclose the production of a composition comprising first and second heterophasic propylene copolymers having properties of xylene soluble fraction, intrinsic viscosity of the xylene soluble fraction, and MFR a and HDPE having MFR as recited in the instant claims.
Regarding the properties of the first and second heterophasic propylene copolymers: As discussed in the previous paragraphs, Kahlen discloses a composition comprising HECO1, HECO2, HDPE, and inorganic filler wherein the xylene soluble fraction of HECO1, intrinsic viscosity of the xylene soluble fraction of HECO1, and MFRs of HECO1 and HECO2 overlap the ranges recited to define the claimed first and second heterophasic propylene copolymers.
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) (MPEP § 2144.05). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a composition having the required properties in view of the teachings of Kahlen (for claim 1).
Regarding the MFR of the HDPE: As noted above, the prior art HDPE has a minimum MFR of 20 dg/min; note that this value is only 0.2 dg/min greater than the claimed upper limit of 19.8 dg/min. It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Because the difference between the prior art value and the claimed upper limit is so small (0.2 dg/min), an ordinary artisan would reasonably expect that the properties of the prior art composition would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 6).
Regarding the claimed ratio of impact resistance to warpage (for claims 1, 22, 23): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the previous paragraphs, Kahlen renders obvious a composition which
comprises the same components combined in the same amounts as the claimed invention,
has the same properties as used to define the claimed invention, and
is used in the same field-i.e., automotive parts- as the claimed invention.
As the prior art composition appears to be the same as the claimed invention, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the composition of Kahlen (for claims 1, 22, 23).
Claim(s) 1-13, 15, and 18-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lederer et al, EP2410007 (of record).
Lederer discloses a composition (for claims 1, 17) comprising first (HECO1) and second (HECO2) heterophasic propylene copolymers, a plastomer, and a mineral filler (¶0104). Said composition has a melt flow rate of 9 to 50 g/10 min (for claims 1, 11, 17, 23) (¶0089). Lederer teaches that the prior art composition can be molded into automotive parts, corresponding to the claimed article (for claims 12, 13) (Lederer claims 14, 15).
Regarding the claimed first heterophasic propylene copolymer: Prior art HECO2 comprises a polypropylene matrix and an elastomeric propylene copolymer disperse phase (for claims 1, 17) (¶0055), and is characterized by a xylene cold soluble content in the range of 7.0 to 20.0 wt% (¶0059), overlapping the claimed range (for claims 1, 15, 17, 23); and an intrinsic viscosity of the xylene cold soluble fraction preferably less than 2.0 dl/g (¶0077), overlapping the claimed range (for claims 1, 15, 17, 23). Said polypropylene matrix is preferably a propylene homopolymer, corresponding to the claimed first propylene polymer (for claims 1, 5, 17). Said elastomeric propylene copolymer may be an ethylene/propylene rubber having an ethylene content of 25.0 to 50.0 wt% (¶0075), overlapping the claimed range (for claims 1, 17, 18, 21); the elastomer of prior art HECO2 therefore corresponds to the claimed first ethylene/olefin copolymer (for claims 1, 17). The prior art HECO2 is present in an amount of 15 to 38 wt% (for claims 1, 4, 17) (¶0104).
Lederer further teaches that 1) the melt flow rate of HECO2 is at least 5 g/10 min greater than the melt flow rate of HECO1 (0078) and 2) the melt flow rate of HECO1 has a minimum value of 3.0 g/10 min (¶0026). Based on these teachings, an ordinary artisan will recognize that the prior art HECO2 can have a melt flow rate greater than or equal to 8.0 g/10 min, overlapping the claimed range (for claims 1, 3, 15, 17, 23). The prior art HECO2 therefore corresponds to the claimed first heterophasic propylene copolymer (for claims 1, 17, 23).
Regarding the claimed HDPE: As noted above, the prior art composition comprises a plastomer. Lederer further teaches that said plastomer may be a HDPE, corresponding to the claimed HDPE (for claims 1, 17, 23), having a density of at least 940 kg/m3 (for claim 7) (¶0083) and a melt flow rate (MFR2) of 5.0 to 30.0 g/10 min (for claim 6) (¶0084). Said plastomer is present in an amount up to 25 wt% (¶0104), overlapping the claimed range (for claims 1, 17, 23).
Regarding the claimed second heterophasic propylene copolymer: Prior art HECO1 comprises a polypropylene matrix and a dispersed elastomer (for claims 1, 17) (¶0027), and is characterized by a melt flow rate in the range of 3.0 to 120.0 g/10 min (¶0026), overlapping the claimed range (for claims 1, 17, 23); 20 to 50 wt% of a xylene cold soluble fraction (¶0031); and an intrinsic viscosity of the xylene cold soluble fraction greater than 2.0 dl/g (¶0049), overlapping the claimed range (for claim 7). Said polypropylene matrix is preferred to be a propylene homopolymer (¶0032), corresponding to the claimed second propylene polymer (for claims 1, 17). Said elastomer may be an ethylene/propylene rubber (¶0046) having an ethylene content in the range of 25.0 to 60.0 wt% (¶0048), overlapping the claimed range (for claims 1, 17, 19-21); said elastomer therefore corresponds to the claimed second ethylene/α-olefin copolymer (for claims 1, 17). The prior art HECO1 is present in an amount in the range of 20 to 40 wt% (¶0104) (for claims 1, 17, 23). The prior art HECO1 therefore corresponds to the claimed second heterophasic propylene copolymer (for claims 1, 17, 23).
Regarding the claimed inorganic filler: The prior art composition comprises 10 to 30 wt% mineral filler (¶0104) such as talc (¶0020), corresponding to the claimed inorganic filler (for claims 1, 17, 23).
Regarding the sum of the amounts of first and second heterophasic propylene copolymer: As noted above, the prior art composition comprises 15 to 38 wt% HECO2 and 20 to 40 wt% HECO1. The sum of their amounts therefore ranges from 35 to 78 wt% (for claim 2).
Regarding claims : Lederer teaches that the prior art plastomer preferably is a blend comprising the HDPE and a linear low density polyethylene (LLDPE) (¶0079), wherein said LLDPE is a copolymer of ethylene and a C4 to C20 olefin (for claim 8) (¶0082) having a density in the range of 0.820 to 0.900 g/cm3 (for claim 10) (¶0080) and a melt flow rate of 0.5 to 40 g/10 min (for claim 9) (¶0081).
Lederer does not specifically disclose the production of a composition comprising first and second heterophasic propylene copolymers having properties of xylene soluble fraction, intrinsic viscosity of the xylene soluble fraction, and MFR a and HDPE having MFR as recited in the instant claims.
As discussed in the previous paragraphs, Lederer discloses the production of a composition comprising first and second heterophasic propylene copolymers, wherein the prior art ranges overlap the ranges for the properties used to define the claimed composition. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare the claimed composition in view of the teachings of Lederer (for claims 1, 17).
Regarding the claimed ratio of impact resistance to warpage (for claims 1, 22, 23): As discussed in the previous paragraphs, Lederer renders obvious a composition which
comprises the same components combined in the same amounts as the claimed invention,
has the same properties as used to define the claimed invention, and
is used in the same field-i.e., automotive parts- as the claimed invention.
As the prior art composition appears to be the same as the claimed invention, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the composition of Lederer; see In re Fitzgerald cited earlier in this Action (for claims 1, 22, 23).
Response to Arguments
Applicant's arguments filed 12/1/2025 have been fully considered but they are not persuasive.
Regarding the rejection over Kahlen: Applicant argues that the prior art composition would not be expected to have the claimed ratio of impact resistance to warpage. Applicant cites the data from the comparative examples in the instant specification to support this argument.
Evidence of non-obviousness must compare the claimed invention to the closest prior art; see MPEP § 716.02(e). As noted earlier in this Action, HECO1 of Kahlen is required to be characterized by a melt flow rate in the range of 50 to 90 dg/min and an intrinsic viscosity of the xylene cold soluble fraction in the range of 1.0 to 3.3 dl/g. In contrast, applicant’s Comparative Example CE1 (see specification: Tables 1 and 2) is reported to comprise polymer A, which has a melt flow rate of 40 dg/min, and polymer B, which has an intrinsic viscosity of the xylene cold soluble fraction of 4 dl/g. Neither of these polymers fall within the scope of Kahlen’s HECO1. Applicant’s CE1 therefore does not correspond to the composition of Kahlen.
Similarly, applicant’s examples CE2, CE3, and CE4 do not correspond to the prior art composition. Example CE2 comprises 56.35 wt% of polymer B having a melt flow rate of 14 dg/min; note that this is almost twice the maximum amount of HECO2 (i.e., 31 wt%) in the composition of Kahlen. Applicant’s CE3 and CE4 are reported to be compositions comprising one heterophasic propylene copolymer and 3 heterophasic propylene copolymers, respectively. In contrast, the composition of Kahlen is a blend comprising two heterophasic propylene copolymers. None of applicant’s comparative examples fall within the scope of the teachings of Kahlen. As such, they do not demonstrate that the prior art composition would not have the claimed ratio of impact resistance to warpage. It is therefore maintained that the prior art composition is reasonably expected to meet this limitation per the rationale outlined earlier in this Action.
Applicant argues that Kahlen does not provide any mechanical property data to demonstrate the suitability of its polymer formulation for automotive parts. In response, it has been held that “[W]hen the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability”; see In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) (MPEP § 2121(I)). Kahlen specifically teaches that the composition of WO2018/099882 is used for automotive components such as bumps and body panels (page 41: lines 26-31). Applicant merely alleges that the prior art composition would not have appropriate mechanical properties for use in automotive components; no evidence has been submitted to demonstrate that Kahlen is inoperable with regards to its explicit teaching that the prior art composition is used in automotive components. Contrary to applicant’s arguments, it is therefore reasonably expected that the prior art composition has mechanical properties that are suitable for use in automotive parts.
Applicant argues that the prior art does not render obvious a composition characterized by the various ranges recited in the instant claims. In response, it is well settled that “even a slight overlap in range establishes a prima facie case of obviousness”; see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). As discussed earlier in this Action, the prior art ranges overlap the ranges recited in the instant claims. Barring a showing of evidence of secondary considerations, it therefore would have been obvious to one of ordinary skill in the art to prepare a composition characterized by the required properties in view of the teachings of Kahlen; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Applicant alleges that the claimed invention yields unexpected results, citing page 3 of the instant application. It is well settled that unexpected results must be established by factual evidence; see In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Arguments presented by the applicant cannot take the place of evidence in the record; see In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) (MPEP §716.01(c)(I) and (II)). Furthermore, applicant nears the burden of explaining any evidence of non-obviousness (MPEP § 716.02(b)). Applicant’s arguments do not cite any factual evidence to support the allegation of unexpected results; rather, the cited portion of the specification is merely a statement alleging that the disclosed composition has surprising properties. As no factual evidence has been cited, applicant’s argument that the claimed invention yield unexpected results is not persuasive. The rejection is therefore maintained.
Regarding the rejection over Lederer: Applicant argues that Lederer does not render the claimed invention obvious per the same reasons as addressed above with respect to Kahlen.
With regards to applicant’s allegation that there is no evidence that the prior art composition is suitable for use in automotive parts, it is noted that Lederer explicitly teaches the production of automotive parts from the prior art composition (see Lederer claim 15). As applicant has not submitted any evidence to the contrary, it is therefore presumed that the prior art is operable with regards to this teaching and that the prior art composition has suitable mechanical properties for use in automotive parts; see In re Sasse cited earlier in this Action.
Furthermore, applicant’s comparative examples do not demonstrate that the prior art composition would not have the required ratio of impact resistance to warpage. Applicant’s CE1 contains 64.75 wt% polymer A, whereas Lederer teaches that the maximum amount of HECO2 -which corresponds to the claimed first heterophasic propylene copolymer-is 38 wt%. Similarly, applicant’s CE2 comprises 56.35 wt% of polymer B, whereas Lederer teaches that the maximum amount of its corresponding component HECO1 is 40 wt%. Finally, applicant’s CE3 and CE4 are reported to be compositions comprising one heterophasic propylene copolymer and 3 heterophasic propylene copolymers, respectively whereas Lederer teaches a composition comprising two heterophasic propylene copolymers. None of applicant’s comparative examples correspond to the prior art composition and therefore do not demonstrate that the composition of Lederer would not have the required ratio.
With regards to the prior art ranges being broader than those of the claimed invention, it is noted that, as discussed above, it is well settled that even a slight overlap in range establishes a prima facie case of obviousness; see In re Peterson. The prior art ranges overlap the ranges recited in the instant claims. It therefore is not persuasive to merely argue that the prior art ranges are broader than those recited in the instant claims. In the absence of any evidence of secondary considerations, it therefore would have been obvious to one of ordinary skill in the art to prepare the claimed composition in view of the teachings of Lederer.
With regards to the allegation of unexpected results, it is noted that, as discussed earlier in this Action, applicant has not cited any factual evidence in support of the allegation that the claimed invention yields unexpected results. This argument therefore is not persuasive. The rejection is therefore maintained.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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