DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 12-18)) in the reply filed on 7/7/2025 is acknowledged.
Group I (claims 1-11) are canceled by the applicant on 7/7/2025.
Response to Amendment
The amendment filed on 12/23/2025 has been entered. Claim(s) 12 is/are currently amended. Claim(s) 1-11 has/have been cancelled. Claim(s) 12-18 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 12/23/2025, with respect to 112(b) rejection has been fully considered and is persuasive. The 112(b) rejection is withdrawn.
Applicant's argument filed on 12/23/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Sherman fails to disclose a range of calcium concentration, and only lists a single numerical value. Even if, arguendo, the numerical value disclosed in Sherman could be considered to be close to that of independent claim 12, Sherman fails to contemplate the issue of reducing calcium elution at all. In contrast, the claimed composition aims to reduce calcium elution, and recites a calcium concentration range for polyethylene resin compositions. As such, because Sherman, JR. fails to disclose any information about calcium elution at all, and only lists a single calcium concentration, it would have been nonobvious to arrive at the claimed composition which recites a calcium concentration range with the aim of reducing calcium concentration.
In response, reducing calcium elution is not part of the claim. It is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches a calcium content that is merely close to the claimed value, the product of the prior art is considered to be able to reduce calcium elution as the claimed product.
Applicant argued that MFR21.6 in the whole of the composition is small in Sherman, JR. and large in Leiden. The comparison of the example in Leiden and the example in Sherman, JR. shows that MFR21.6 in Leiden (see, e.g., TABLE 2 in Col. 9, Ln. 6-24 of Leiden) tends to be greater than that of Sherman, JR. (see, e.g., 0017 of Sherman, JR.). The difference in MFR2.16 is greater than the difference in MFR21.6, and it is evident that the FR (MFR21.6/MFR2) values between Sherman, JR. and Leiden are completely different, and that the FR (MFR21.6/MFR5) values are also completely different between Sherman, JR. and Leiden. Accordingly, it would have been apparent to a skilled artisan that the compositions of Sherman, JR. and Leiden are completely different and the performance of each as a resin composition is completely different.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Leiden teaches FR (MFR21.6/MFR5) of 10-50 which overlaps the claimed 25-60, as stated in the 103 rejection. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I). The claimed FR is not (MFR21.6/MFR2), but (MFR21.6/MFR5).
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.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12-14 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sherman et al (US 20100272937 A1) in view of Leiden et al (US 6645588 B1).
Regarding claim 12, Sherman teaches a pipe resin composition comprising a polyethylene pipe resin and an antioxidant [abstract].
The polyethylene pipe resin is a bimodal polyethylene resin having a density of 0.947 to 0.949 g/cm3 and a high load melt index HLMI (ASTM D1238, 21.6 kg, 190 °C.) of 3 dg/min to 20 dg/min [0008] (equivalent to 3-20 g/10 min).
The examiner submits that the density falls within the claimed range of 0.946 g/cm3 or more and 0.960 g/cm3; the melt index overlaps the claimed range of 6 g/10min or more and 25 g/10min or less. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The bimodal polyethylene resin contains a first polyethylene component and a second polyethylene component of relatively higher molecular weight comprising an α-olefin comonomer butene-1; the mole ratio of the comonomer to ethylene is 0.02 to 0.15; the bimodal resin comprises from 49 wt % to 60 wt % of the first polyethylene component and from 40 wt % to 51 wt % of the second polyethylene component [0008].
The examiner submits that first polyethylene component reads on the claimed low molecular weight component (B); the second polyethylene component reads on the claimed high molecular weight component (A). The mole ratio of the α-olefin comonomer to ethylene of 0.02 to 0.15 yields an α-olefin content that excludes ethylene being 1.9 mol% or more and 13 mol% or less, as calculated by the examiner, overlapping the claimed 0.8 mol% or more and 2.0 mol% or less. The 40 wt % to 51 wt % of the second polyethylene component overlaps the claimed 35 wt% or more and 50 wt% or less of the content portion of the high molecular weight component (A) in relation to the entire resin composition.
Sherman is silent about the MFR21.6 of the first polyethylene component or the second polyethylene component.
In the same field of endeavor, Leiden teaches a bimodal polyethylene composition for pipe application [col.6 lines 19-37, col.7 lines 31-32], comprising a first ethylene polymer having a first average molecular weight and a second ethylene polymer having a second molecular weight, which is higher than said first molecular weight [col.1 lines 46-50]. The second ethylene polymer has 1-25 wt% of α-olefin [col.3 lines 52-56]. The first ethylene polymer has melt flow rate of from 50 to 2000 g/ 10 min; the second ethylene polymer has melt flow rate of from 0.05 to 50 g/10 min [col.4 lines 37-43], measure at 190 °C and 2.16 kg load [col.2 lines 18-20].
The examiner submits that the first ethylene polymer corresponds to Sherman’s first polyethylene component and the claimed low molecular weight component (B); the second ethylene polymer corresponds to Sherman’s second polyethylene component and the claimed high molecular weight component (A). The melt flow rate of 0.05 to 50 g/10 min for the second ethylene polymer overlaps the claimed MFR21.6 of 0.05 g/10 min or more and 1.0 g/10 min or less. The melt flow rate of from 50 to 2000 g/ 10 min for the first ethylene polymer overlaps the claimed MFR21.6 of 20 g/10 min or more and 500 g/10 min or less.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a bimodal polyethylene composition for pipe application according to Sherman including a first polyethylene component having melt flow rate of 50-2000 g/10 min, a second polyethylene component having melt flow rate of 0.05-50 g/10 min, as Leiden demonstrates these ranges to be suitable for similar bimodal polyethylene composition. This represents the use of a suitable range of melt flow rates in a bimodal polyethylene composition which is compositionally similar to those of Leiden and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Sherman is silent about the FR (MFR21.6/MFR5). However, Leiden teaches that the FR (MFR21.6/MFR5) for the polyethylene blend is 10-50 [col.2 lines 23-29, col.4 lines 2-3], which overlaps the claimed 25 or more and 60 or less.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a bimodal polyethylene composition for pipe application according to Sherman including a polyethylene resin having FR (MFR21.6/MFR5) of 10-50, as Leiden demonstrates this ranges to be suitable for similar polyethylene composition. This represents the use of a suitable range of FR (MFR21.6/MFR5) in a polyethylene composition which is compositionally similar to those of Leiden and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Sherman does not teach a range of calcium amount, but teaches an example in which the polyethylene pipe resin contains 1000 ppm of calcium stearate [0017]. Based on the molar mass of calcium and calcium stearate, 1000 ppm of calcium stearate is equivalent to 62 ppm of calcium, as calculated by the examiner, which is merely close to the claimed upper limit of 60 ppm. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Regarding claim 13, Sherman teaches that the polyethylene resin is polymerized using a Ziegler catalyst [0010].
Regarding claim 14, Sherman teaches that the polyethylene pipe resin contains a phenolic antioxidant [0011].
Regarding claim 16, Sherman teaches that the antioxidant is Irganox 1010 [0011]. As evidenced by the applicant, Irganox 1010 is a phenolic antioxidant containing oxygen derived from anything other than phenol groups [0127, Fig. 5 spec.].
Sherman teaches a calcium amount being 62 ppm, as stated above, which is merely close to the claimed upper limit of 50 ppm. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Regarding claim 17, Sherman does not teach that the composition needs photostabilizer. Therefore, the polyethylene resin composition is substantially free of photostabilizers.
Regarding claim 18, the recited oxidation induction time is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Nevertheless, Sherman teaches oxidation induction time (OIT) of 130 min for Example 2 [Table 1].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sherman in view of Leiden as applied to claim 14 above, further in view of Hagstrand et al (US 20140109975 A1).
Regarding claim 15, Sherman teaches a phenolic antioxidant in claim 14. Sherman teaches Irganox 1010 but does not teach a phenolic antioxidant free of oxygens derived from anything other than phenol groups.
In the same field of endeavor, Hagstrand teaches a bimodal polyethylene composition for pipe application, comprising an antioxidant including Irganox 1010 and Irganox 1330 [0004, 0056].
Since Hagstrand recognized Irganox 1010 and Irganox 1330 are equivalent as an antioxidant in similar polyethylene resin product for the same application, it would have been obvious for one of ordinary skill to combine Irganox 1010 and Irganox 1330 in Sherman’s polyethylene composition. It is prima facie obvious to combine or substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06.
Irganox 1330 reads on the claimed phenolic antioxidant free of oxygens derived from anything other than phenol groups, as evidenced by the applicant [Fig. 6 spec.].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sherman in view of Leiden as applied to claim 14 above, further in view of Turner et al (US 20090283939 A1).
Regarding claim 16, Sherman teaches the polyethylene-based resin composition in claim 14. Sherman teaches that the antioxidant is Irganox 1010 [0011]. As evidenced by the applicant, Irganox 1010 is a phenolic antioxidant containing oxygen derived from anything other than phenol groups [0127, Fig. 5 spec.].
Sherman does not teach a range of calcium amount.
In the same field of endeavor, Turner teaches a polyethylene resin for pipe application [0128], comprising Irganox 1010 and 600 ppm of calcium stearate [0179].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a bimodal polyethylene composition for pipe application according to Sherman including calcium stearate in an amount of 600 ppm, as Turner demonstrates this amount to be suitable for similar polyethylene composition. This represents the use of a suitable amount of calcium stearate in a polyethylene composition which is compositionally similar to those of Turner and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Based on the molar mass of calcium and calcium stearate, 600 ppm of calcium stearate is equivalent to 37 ppm of calcium, as calculated by the examiner, which falls within the claimed range of 50 ppm or less.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762