DETAILED ACTION
This Office Action is responsive to the amendment filed on 1/16/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
The indicated allowability of claim 10 is withdrawn in view of the newly discovered reference(s) to Winter et al, EP0384264. Rejections based on the newly cited reference(s) follow.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Claim Rejections - 35 USC § 103
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Becker et al, US2010/0279033 (of record).
Becker discloses a polyolefin (abstract) which may be a propylene/ethylene copolymer (for claim 9) having a propylene content of 70 wt% or more, overlapping the required range, and an ethylene content of 30 wt% or less (¶0043), overlapping the disclosed range. Said polyolefin is further characterized by a propylene triad tacticity of 40 to 80% (¶0030), overlapping the required range; Ring and Ball softening point not more than 140 °C (¶0076), overlapping the required range; viscosity at 190 °C in the range of 500 to 100000 MPa*s (i.e., 500 to 100000 cP) (¶0057), overlapping the required range; tensile strength of at least 0.2 MPa (¶0087), overlapping the required range; heat of fusion not more than 30 J/g (¶0073), overlapping the disclosed range; a needle penetration of 60 dmm or less (¶0068), overlapping the disclosed range; and a maximum elongation of 50 to 1200% (¶0087), overlapping the disclosed range. The prior art copolymer is used in the production of adhesive compositions (for claim 9) (¶0120).
Becker does not specifically disclose the production of a propylene/ethylene copolymer characterized by the required values of propylene content, triad tacticity, Ring and Ball softening point, Brookfield viscosity (190 °C), and tensile strength.
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). As noted above, Becker teaches a propylene/ethylene copolymer wherein the prior art ranges for propylene content, triad tacticity, softening point, viscosity, and tensile strength all 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 to prepare the claimed copolymer in view of the teachings of Becker.
Regarding the claimed method: Note that claim 9 is written in product-by-process format. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process"; see In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113(I)).
As discussed in the previous paragraphs, the ranges disclosed by Becker all overlap the ranges disclosed by applicant to describe the propylene/ethylene copolymer of the instant disclosure. Becker therefore renders obvious a propylene/ethylene copolymer having the same properties of propylene content, ethylene content, propylene triad tacticity, Ring and Ball softening point, viscosity at 190 °C, tensile strength, heat of fusion, needle penetration, and maximum elongation as the propylene/ethylene copolymer of the instant application. The propylene/ethylene copolymer rendered obvious by the prior art therefore appears to be identical to the copolymer of the instant claim. The burden is therefore shifted to applicant to provide evidence demonstrating that the step of polymerization in the presence of the claimed catalyst results in an nonobvious difference between the claimed invention and the prior art (for claim 9).
Claim(s) 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Becker et al, US2010/0279033 (of record), in view of Winter et al, EP0384264.
The examiner notes that Winter, US5081322, is part of the same patent family as EP0384264 and has been used as an equivalent English translation thereof for the preparation of this Action.
Becker discloses a polyolefin (abstract) which may be a propylene/ethylene copolymer having a propylene content of 70 wt% or more, overlapping the claimed range (for claim 1), and an ethylene content of 30 wt% or less (¶0043), overlapping the claimed range (for claims 2, 7). Said polyolefin is further characterized by a propylene triad tacticity of 40 to 80% (¶0030), overlapping the claimed range (for claim 1); Ring and Ball softening point not more than 140 °C (¶0076), overlapping the claimed range (for claims 1, 5, 7); viscosity at 190 °C in the range of 500 to 100000 MPa*s (i.e., 500 to 100000 cP) (¶0057), overlapping the claimed range (for claims 1, 3, 7); tensile strength of at least 0.2 MPa (¶0087), overlapping the claimed range (for claims 1, 6);heat of fusion not more than 30 J/g (¶0073), overlapping the claimed range (for claim 4); a needle penetration of 60 dmm or less (¶0068), overlapping the claimed range (for claims 5, 7); and a maximum elongation of 50 to 1200% (¶0087), overlapping the claimed range (for claims 6, 7).
The prior art copolymer is prepared via polymerization in the presence of a metallocene catalyst in combination with methylaluminoxane cocatalyst (¶0090). Said metallocene catalyst may be a titanium-based catalyst (¶0096); Becker therefore renders obvious the use of a catalyst system comprising aluminum and titanium. The prior art further teaches that 1) polymerization is performed at a temperature above the boiling point of the solvent used in the reaction (¶0093), and 2) that the solvent has a boiling point not more than 101 °C (¶0094). An ordinary artisan will therefore recognize that the prior art polymerization can be performed at a temperature greater than 101 °C, overlapping the claimed range (for claim 1).
Regarding claim 8: As noted above, Becker specifically envisions the use of a propylene/ethylene copolymer (¶0043); the prior art therefore reads on copolymers wherein the content of C4 to C10 olefins is 0 wt%.
Regarding the properties of propylene content, triad tacticity, softening point, viscosity, and tensile strength: As noted above, the prior art teaches a propylene/ethylene copolymer wherein the ranges taught for propylene content, triad tacticity, softening point, viscosity, and tensile strength all 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 to prepare the claimed copolymer in view of the teachings of Becker.
Regarding the claimed heat of crystallization: As discussed above, the prior art renders obvious a propylene/ethylene copolymer having the same propylene content, ethylene content, triad tacticity, softening point, viscosity, needle penetration, heat of fusion, elongation, and tensile strength as the claimed invention. As the prior art copolymer 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 copolymer. The burden is therefore shifted to applicant to provide evidence that the copolymer taught by the prior art would not have the claimed heat of crystallization (for claim 4).
Becker is silent regarding the step of polymerization using a catalyst having a molar ratio of aluminum to titanium in the range of 1:1 to 100:1.
Winter discloses the copolymerization of propylene with a comonomer such as ethylene using a metallocene catalyst and alumoxane cocatalyst (abstract; Column 1, lines 59-63). As taught by Winter, it was known in the art that such catalyst systems comprise metallocene in an amount of 10-3 to 10-7 mol transition metal per dm3 of solvent and 10-5 to 10-1 mol alumoxane per dm3 solvent (Column 8, lines 8-16) to control isotacticity of the resulting polymer (Column 1, lines 5-58). This molar ratio of aluminum to transition metal in the range of 10-5: 10-3 to 10-1: 10-7-i.e., about 0.01:1 to 106:1, overlapping the claimed range.
Becker and Winter both disclose the production of propylene/ethylene copolymers via polymerization using a metallocene catalyst in combination with an alumoxane cocatalyst. Furthermore, note that Becker cites Winter as teaching known methods of polymerizing propylene using such catalyst systems (¶0011). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the process of Becker by varying the ratio of aluminum to titanium in the catalyst system within the range of about 0.1: 1 to 106:1, as taught by Winter, in order to control the isotacticity of the final copolymer (for claim 1).
Response to Arguments
Applicant’s arguments, filed 1/16/2026, with respect to the rejection(s) of claims 1-8 over Becker have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Becker in view of Winter as discussed earlier in this Action.
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive with regards to the rejection of claim 9 over Becker.
Applicant argues that the Becker does not render the claimed invention obvious because the prior art does not teach the method of polymerization using a catalyst having a molar ratio of aluminum to titanium in the range of 1:1 to 100:1 as required. This is not persuasive because the invention of claim 9 is not a process. As noted earlier in this Action, the invention of claim 9 is a composition defined using product-by-process language.
As discussed in paragraphs 8 to 13 of this Action, Becker renders obvious an adhesive composition, corresponding to the claimed composition, which comprises a propylene/ethylene copolymer. Said propylene/ethylene copolymer is characterized by values for properties of propylene content, ethylene content, propylene triad tacticity, Ring and Ball softening point, viscosity at 190 °C, tensile strength, heat of fusion, needle penetration, and maximum elongation that all overlap the ranges recited either in independent claim 1 or in applicant’s specification to describe the propylene/ethylene copolymer of the instant disclosure. As the ranges overlap, Becker renders obvious a propylene/ethylene copolymer having the same value for each of these properties as the propylene/ethylene copolymer obtained from applicant’s disclosed process; see In re Wertheim, In re Woodruff, and In re Fitzgerald cited earlier in this Action. The copolymer rendered obvious by Becker therefore appears to be the same as the copolymer that would result from the process step(s) used to define the claimed invention.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion; see In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product; see In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (MPEP § 2113(II)).
As discussed above, Becker renders obvious a composition comprising a propylene/ethylene copolymer which appears to be the same as the copolymer that would be obtained from the recited process step. It is therefore insufficient to merely argue that Becker does not teach the same process steps as recited in the instant claim. Rather, applicant must provide evidence that the claimed process step(s) results in a nonobvious difference between the claimed invention and the prior art. As such evidence has not been provided, it is maintained that Becker renders obvious the invention of claim 9.
Allowable Subject Matter
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Becker et al, US2010/079033. As discussed earlier in this Action, Becker teaches the production of a propylene/ethylene copolymer having a propylene content of 70 wt% or more, a propylene triad tacticity of 40 to 80%, Ring and Ball softening point not more than 140 °C, viscosity at 190 °C in the range of 500 to 100000 MPa*s (i.e., 500 to 100000 cP), and tensile strength of at least 0.2 MPa .
Note that Becker specifically teaches that the prior art copolymer is prepared using a metallocene catalyst (¶0090). Becker does not teach the use of a Ziegler Natta catalyst as required by the instant claims. Furthermore, no reference has been found that would suggest that the prior art process could be modified by using a Ziegler Natta catalyst and still obtain a final copolymer having the combination of properties required by Becker. The claimed invention is therefore allowable in view of the requirement that polymerization be performed using a Ziegler Natta catalyst having a molar ratio of aluminum to titanium in the range of 1:1 to 100:1.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765