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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/13/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant specification does not disclose particular embodiments simultaneously having a melt flow increase, elongation at yield, and Charpy impact strength values of instant claim 1 that provide support over the entire claimed ranges. Although instant specification citations [0114-0115] discuss the polyolefin composition can have least one of these acceptable mechanical properties at generically discloses ranges, the instant specification does not convey to a person of ordinary skill in the art that applicant has possession of the particularly claimed invention including the newly claimed combination of MFR, elongation at yield, and Charpy impact strength in the newly claimed ranges as set forth in claim 1.
Claims 2 and 4-17 are further rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as being dependent on a 35 U.S.C. 112(a) rejected claim.
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 1-2 and 4-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claim 1 recites the limitation "the random alpha-olefinic copolymer" in line 5. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “the at least one random alpha-olefinic copolymer”.
Use of parentheses in Claims 9 and 15 – e.g. (ASTM D1709A), (ISO180), etc. – renders the scope of the claims indefinite, as it is unclear whether the limitations enclosed in parentheses are optional or required. For the purposes of examination, these limitations will be interpreted as not being required.
Claims 2 and 4-17 are further rejected under 35 U.S.C. 112(b) because they ultimately depend on claim 1 and therefore inherit the deficiencies thereof.
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 1-2 and 4-17 are rejected under 35 U.S.C. 103 as being unpatentable over US2019/0136100 to Tran et al. in view of US2018/0282451 to Carvagno et al.
Regarding Claim(s) 1, 13, 14, and 16, Tran teaches a hot melt adhesive composition [0040] comprising 10-100 wt% of a visbroken polyethylene copolymer [0041] that is recycled [0141] (reading on all limitations of component (A) in claim 1); one or more tackifiers in an amount of 0-70 wt% [0043] such as polyterpene resins having a softening point of from 10-140°C [0163], preferably above 70°C [0166] (i.e., terpene resins with glass transition temperature above 25°C, therefore reading on limitations of component (C) of claims 1 and 16); and 0-60 wt% of plasticizer [0172] such as oligomers of polypropylene [0171] (reading on 1-60 wt% (D) of PP homopolymer of claims 1 and 13). Tran further teaches the starting polymer (before visbreaking) has an MFR of 1-100 g/10 min [0028] and it is preferred if the final MFR of the visbroken polymer has an MFR at least 3 times higher than the MFR of the starting polymer [0029]. As such, it is reasonably calculated that the visbroken recycled polyolefin has a MFR of 3-300 g/10 min, thereby reading on an MFR of at least 4 of claim 1 and MFR of 0.1-10 g/10 min of claim 11.
Tran does not particularly teach a component (B) that is an amorphous polypropylene-ethylene copolymer comprising at least 60 weight percent of propylene, and is further silent on the claimed amount of 2-20 wt% of (B) and further silent still on the claimed molecular weight or glass transition temperature specified in claim 13.
However, Carvagno teaches a composition comprising polyolefins and 1 to 20 weight percent amorphous propylene-ethylene copolymer and amorphous polyolefins [Carvagno, title and 0017], such as Aerafin® 17 [Carvagno, 0118]. Aerafin® 17 is the same commercially available amorphous polyolefin used in instant application [instant specification, 0074] therefore it is reasonably expected that the addition of AERAFIN 17 reads on all limitations of component (B) of claim 1 and claim 14. Tran and Carvagno are analogous art as they are from the same field of endeavor, namely polyolefin 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 add Carvagno’s Aerafin® 17 polyolefin to Tran’s polyolefin adhesive composition.
The motivation would have been that Carvagno teaches combining various types of polyolefins may provide improved adhesion, cohesive strength, temperature resistance, viscosity, and set times [Carvagno, 0117]
The combination of Tran and Carvagno is silent regarding said polyolefin composition having a melt flow rate increase of about 3 to 400%, an elongation at yield of at least 110% and a charpy impact strength that is at least 125% when compared to a same polyolefin composition without said random alpha-olefinic copolymer, said tackifier and said at least one additional polymer. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tran in view of Carvagno, 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 such as extruding [Tran, 0196]. Therefore, the claimed effects and physical properties as mentioned above 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 2, Tran in view of Carvagno teaches the polyolefin composition of claim 1 wherein Train teaches 10-70 wt% of tackifiers (C) are provided [Tran, 0176], as well as 0-60 wt% of plasticizer [Tran, 0172] (i.e., additional polymer (D)). For the reasons detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide said an amorphous propylene-ethylene copolymer in an amount of 1 to 20 weight percent, as taught by Carvagno [0117] (i.e., component (B)), in the composition of Tran. As such, the combination of (B) and (C) is in an amount of 11-90% and the ((B)+(C))/(D) weight ratio is calculated to be greater than 0.18 thereby meeting the limitation of a weight ratio of 0.2-20.
Regarding Claim 4, Tran in view of Carvagno teaches the polyolefin composition of claim 1 comprising 0-60 wt% of plasticizer [Tran, 0172] (i.e., additional polymer (D)). For the reasons detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide said an amorphous propylene-ethylene copolymer in an amount of 1 to 20 weight percent, as taught by Carvagno [0117](i.e., component (B)), in the composition of Tran. As such, the combination of (B) and (D) is reasonably calculated in an amount of 1-80 wt% thereby reasonably reading on 3-80 wt% of claim 4.
Regarding Claim 5, Tran in view of Carvagno teaches the polyolefin composition of claim 1 comprising 0-60 wt% of plasticizer [Tran, 0172] (i.e., additional polymer (D)). For the reasons detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide said an amorphous propylene-ethylene copolymer in an amount of 1 to 20 weight percent, as taught by Carvagno [0117](i.e., component (B)), in the composition of Tran. As such, the weight ratio is calculated to be greater than 0.02 thereby reasonably reading on the weight ratio of 0.2 to about 5.0 of claim 5.
Regarding Claims 6-7, Tran in view of Carvagno teaches the polyolefin composition of claim 1 wherein the recycled polyolefin is a polyethylene copolymer with the majority by weight of ethylene monomer units [Tran, 0057] (i.e., at least 50 mol% ethylene derived units of claim 6) and the copolymerizable monomers are preferably 1-octene [0058] (i.e., C8 alpha-olefin of claim 7)
Regarding Claims 8-9, Tran in view of Carvagno teaches the polyolefin composition of claim 1 as set forth above and incorporated herein by reference.
Tran in view of Carvagno is silent regarding said polyolefin composition having a notched impact strength increase of about 2-150%, shows an elongation at break increase of up to 400%, and retains at least 66% of at least one acceptable mechanical property when compared to said same polyolefin composition without said at least one random alpha-olefinic copolymer, said at least one tackifier, and said at least one additional polymer. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tran in view of Carvagno, 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 such as extruding [Tran, 0196]. Therefore, the claimed effects and physical properties as mentioned above 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 10, Tran in view of Carvagno teaches the polyolefin composition of claim 1 wherein the at least one recycled polyolefin is the majority by weight of ethylene monomer units [Tran, 0057] (i.e., polyethylene-rich polyolefin) therefore since the final polymer is recycled [Tran, 0141] it is required to either post-consumer waste or post-industrial waste, thereby reasonably reading on claim 10.
Regarding Claims 11-12 and 15, Tran in view of Carvagno teaches the polyolefin composition of claim 1 comprising 10-70 wt% of tackifiers (C) [Tran, 0176], and 0-60 wt% of plasticizer [Tran, 0172] (i.e., additional polymer (D)). For the reasons detailed in the rejection of Claim 1, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to provide said an amorphous propylene-ethylene copolymer in an amount of 1 to 20 weight percent, as taught by Carvagno [0117](i.e., component (B)), in the composition of Tran. As such, the combination of (B), (C), and (D) is reasonably calculated as 1-150 wt% (i.e., 5-70 wt% of claim 11 and 15); the (B)/(C) weight ratio is calculated to be greater than 0.02 (i.e., (B)/(C) weight ratio of 0.2 to about 5.0 of claims 12 and 15); the combination of (B) and (C) is in an amount of 11-90% and the ((B)+(C))/(D) weight ratio is calculated to be greater than 0.18 (i.e., ((B)+(C))/(D) weight ratio of 0.2-20 of claims 12 and 15).
Tran in view of Carvagno is silent regarding said polyolefin composition retains at least 66% of at least one acceptable mechanical property compared to a same polyolefin composition without said random alpha-olefinic copolymer, said tackifier and said at least one additional polymer. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Tran in view of Carvagno, 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 such as extruding [Tran, 0196]. Therefore, the claimed effects and physical properties as mentioned above 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 17, Tran in view of Carvagno teaches the polyolefin composition used in diapers and footwear [0002] (i.e., footwear components)
Response to Arguments
Applicant's arguments filed 7/13/2026 have been fully considered but they are not persuasive.
Applicant request the 112(b) rejected Claims 9 and 15 be withdrawn in view of the amendments, However, there are still parameters in parenthesis e.g., (ISO180) etc. in claims 9 and 15 wherein it is unclear if these parameters are optional or required.
Applicant states Yalvac, Kulshreshtha, Rebih and Zhou do not teach the newly amended claim 1 individually or in combination.
In response, Applicant’s arguments with respect to claim(s) 1-2 and 4-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Furthermore Applicant states the newly claimed combination yields unexpected results by comparing the data in instant application tables 22 and 23 to the reference example 52 which only comprises visbroken polyethylene.
In response, it is noted that these examples show a melt flow rate increase, elongation of yield increase, and a Charpy impact strength increase. However, Tran in view of Carvagno teaches the polyolefin composition of the instant claims wherein all ingredients are within or overlap with the claimed ranges. Therefore the properties of melt flow rate increase, elongation of yield increase, and Charpy impact strength increase would naturally flow from Tran in view of Carvagno’s composition.
Furthermore, this data is not commensurate in scope with the claim language. 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 re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP 716.02(d). For example, the language is drawn to a polymer composition comprising any recycled polyolefin, any random amorphous propylene-ethylene copolymer and any additional polymer as defined in claim 1 wherein inventive examples specifically comprise only one HDPE, Aerafin® 180 alpha-olefinic copolymer, and MDPE additional polymer. As such, there is no evidence that any recycled polyolefin of claim 1, alpha-olefinic copolymer of claim 1, and additional polymer of claim 1 would have the same unexpected results.
Conclusion
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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