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 .
Continued Examination Under 37 CFR 1.114
Applicant’s Request for Continued Examination dated 4/29/2026 is acknowledged. Claims 1 and 7 are amended. Pending claims: 1, 5-11. Cancelled claims: 2-4. Claim amendment incorporates new limitation in the preamble which states that the additive composition is “for improving Charpy impact strength”. The statement is directed to intended use, which does not carry patentable weight. The patentable weight is given to the composition itself. Having said that, if all the components utilized in the prior art are the same as the components of the instant invention, the improved Charpy impact strength will also be expected. This is because properties of the compositions flow from the components utilized therein and each component has properties that are mutually exclusive to that component.
Response to Arguments
Before responding to the argument, the examiner would like to draw applicants’ attention to a paragraph from their response to clear up any confusion that may be with respect to obviousness rejection:
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It is unclear from the statement above if the applicants treat KSR as law or not. For clarification, Graham vs. Deere analysis is the law which have to be followed in order to establish proper grounds for obviousness type rejection. KSR is not a law, but identifies a number of rationales to support a conclusion of obviousness, which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham vs. Deere. It is definitely worth mentioning that the examples in KSR are not exhaustive.
Having said that the examiner did provide obviousness statement which was not addressed by the applicants at all. See rejection of claim 10 by Fukuda and rejection of claim 1 by Ichiyanaga.
In their response dated 4/29/2026 applicants argued following:
With respect to anticipation rejection the applicants stated that:
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First, the applicants failed to explicitly state, which component was subject to picking and choosing. Both references teach references disclose the same nucleating agent, both references disclose the same hydrotalcite, i.e., the same chemical formula. The only part that the examiner can think of is presence of the hydroxy-containing fatty acid lithium salt. If applicants are arguing the hydroxyl group containing fatty acid lithium salt, following should be noted: MPEP 2131.02 (II) and (III) state following:
“…When the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught…”
“…In In re Petering, the prior art disclosed a generic chemical formula "wherein X, Y, Z, P, and R'- represent either hydrogen or alkyl radicals, R a side chain containing an OH group." The court held that this formula, without more, could not anticipate a claim to 7-methyl-9-[d, l'-ribityl]-isoalloxazine because the generic formula encompassed a vast number and perhaps even an infinite number of compounds. However, the reference also disclosed preferred substituents for X, Y, Z, P, R, and R' as follows: where X, P, and R' are hydrogen, where Y and Z may be hydrogen or methyl, and where R is one of eight specific isoalloxazines. The court determined that this more limited generic class consisted of about 20 compounds. The limited number of compounds covered by the preferred formula in combination with the fact that the number of substituents was low at each site, the ring positions were limited, and there was a large unchanging structural nucleus, resulted in a finding that the reference sufficiently described "each of the various permutations here involved as fully as if he had drawn each structural formula or had written each name”. The claimed compound was 1 of these 20 compounds. Therefore, the reference “described” the claimed compound and the reference anticipated the claims.
“… In In re Schauman, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), claims to a specific compound were anticipated because the prior art taught a generic formula embracing a limited number of compounds closely related to each other in structure and the properties possessed by the compound class of the prior art was that disclosed for the claimed compound. The broad generic formula seemed to describe an infinite number of compounds but claim 1 was limited to a structure with only one variable substituent R. This substituent was limited to low alkyl radicals. One of ordinary skill in the art would at once envisage the subject matter within claim 1 of the reference…”
Consistent with guidelines in the MPEP 2131, Fukuda discloses in [0037] 12-hydroxystearic acid out of 7 fatty acids, which is within accepted number of species. One variable is selecting lithium salt out of 8 possible cations. By the way of examples this list is narrowed to two which is sodium salt and lithium salt. Similarly, Ichiyanagi discloses the same nucleating agent, the same lithium aluminum compound and alkali salt of carboxylic acids which has 8-12 carbon atoms wherein this amount of carbon atoms is considered a fatty acid. Applicants claim 1 is open to any fatty acid and while the list of possible acids is rather extensive, preferred embodiments are specifically limited to lithium salts of aliphatic carboxylic acid where the number of carbon atoms is 8-12 (5 possibilities). 12-hydroxystearic acid is explicitly listed and it comprises 12 carbon long aliphatic chain.
With respect to arguments directed at unexpected results:
Applicant’s instant claim 1 recites following:
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Applicant’s claim 7 further requires that the content of nucleating agent is 0.001-10 parts per 100 parts of polyolefin-based resin. With nucleating agent being between 0.001-10 parts, hydroxy group containing fatty acid lithium salt and hydrotalcite should be in a range of 0.00025-40 parts. The only structure listed in both claims is that of nucleating agent as being:
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With substituents defined in both specification and claims.
Applicant’s examples utilize compounds A-1 to A-6 nucleating agents as depicted on page 9 of the specification with A-3 to A-4 not being phosphate compounds. Component B is lithium 12-hydroxystearate and component C is limited to hydrotalcite under tradename DHT-4V.
Frist every single compound utilized in the examples is also disclosed by the prior art of record. Consequently, one of ordinary skill in the art would arrive at the instant invention, since the list of possible hydroxyl group containing fatty acids is not long and it is within the extent in which courts view as anticipatory content and definitely an obvious one.
Second, applicants in their examples use following content:
Nucleating agent amounts: 0.1, 0.015, 0.025, 0.05, 0.075 whereas the claimed amount is 0.001-10 (claim 7 composition).
Hydrotalcite: a very specific tradename in amounts of 0.1, 0.015, 0.025, 0.05, 0.075 whereas based on the content of nucleating agent the hydrotalcite range would be in an amount of 0.00025-40 and it is open to any hydrotalcite.
Hydroxy group containing fatty acid: specific compound utilized in amount of 0.05, 0.075, 0.025, 0.015 and 0.1, yet claims encompass any hydroxy group containing fatty acid with content of 0.00025 to 40.
Applicants’ examples are not commensurate with the scope of the claims or what is described in the specification as originally filed. The examples do not include the entire range and do not show any trends that should be seen not only with using different compounds but providing instant invention with content of the components within the claimed range but also outside of claimed range.
Applicants’ examples only take into consideration very specific compounds while the independent claims encompass countless possibilities of various hydrotalcites and hydroxyl group containing fatty acids that are known in the art.
Since prior art of record discloses all the compounds claimed by both independent and dependent claims, the experimental data does not distinguish over the prior art of record.
While applicant’s summary states that based on KSR case law the rejections on obviousness cannot be sustain by mere conclusory statement, instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, yet none of the grounds of rejection and obviousness statement were addressed and no argument was made as to why the grounds of rejections are improper. The grounds of rejection were directed at mixing additives first before incorporating them into polyolefin and reasons why that would be obvious were also included. None were explicitly traversed.
Furthermore, although KSR also states following:
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
In the obviousness statement, the examiner further relied upon MPEP 2144.04(IV)C which arguments were not addressed by the applicants.
Consequently, applicant’s arguments are not persuasive and all rejections of records will be restated reflecting amendments to the claims.
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Fukuda (JP 6513278 full translation provided).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With respect to claim 7, Fukuda discloses composition for stabilizing polymers. The composition comprises following components:
Component A has following chemical structure:
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Component A is an organic oxoacid metal salt based on phosphate and is utilized in amount of 35-75wt% based on the content of components A-D [0020]. The oxoacids of Fukuda include following compounds:
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All compounds meet the limitation of instant claim 7.
Component B is sodium or lithium carboxylate, encompassed by term comprising [0032], utilized in amount of 10-40 wt.% [0020]. When blended with thermoplastic polymer content of A is 0.001-10 wt.% [0030]
Component C is a metal salt of fatty acid metal salt [0035] is an aliphatic acid comprising 10-30 carbon atoms wherein preferred cation is lithium, potassium or zinc [0035]. The hydrocarbon of the fatty acid comprises hydroxyl group [0036]. 12-hydroxystearic acid is specifically named [0037]. Component C is utilized in 5-20 wt. % [0015], as such the content of the fatty acid meets the claimed range based on the amount of nucleating agent when normalized to 100% the range of component C is 26.6 up to 57%.
Component D is fatty acid as well, also encompassed by the term “comprising”.
Last but not lease Fukuda teaches use of hydrotalcites having following formulae:
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and
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Hydrotalcites are utilized in amount of 0.001-5 wt.% based on the amount of thermoplastic resin. With nucleating resin being up to 10 wt.%, the content of hydrotalcite also meets instantly claimed range (when nucleating agent is normalized to 100 the hydrotalcite is 0.01-50 parts).
With respect to claims 8 and 9, examples depict polypropylene homopolymer, which means that 100% of the repeat units are propylene units [0082]
With respect to claim 11, the pellets obtained are molded into an article [0083]
Claims 7-9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ichiyanagi (US 5,717,013).
With respect to claim 7, Ichiyanagi discloses polypropylene composition comprising following components (per 100 parts of polypropylene) 0.01-5 pbw of alkali salt of carboxylate (Abstract), 0.01-0.5 pbw of phosphate compound of formula 1, and 0.01-0.5 of lithium aluminum compound.
Alkali salt of carboxylate is defined as alkali salt of carboxylic acid, which includes 12-hydroxy stearic acid, wherein alkali salt is lithium, especially when lithium salts of aliphatic monocarboxylic acids are preferred, in particular those having 8-12 carbon atoms.
Phosphate compound has following structure (col. 6):
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Lithium aluminum compound is a hydrotalcite having following formula (col. 7, line 43-44)
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With respect to the amounts, normalizing the amount of the additives per 100 parts of phosphate compound, both fatty acid salt and hydrotalcite meet the claimed range. With phosphate being 0.01-0.5 and fatty acid salt being 0.01-5, and hydrotalcite being 0.01-0.5, the lower range alone meets 1:1:1 ratio or 100% to 100% to 100%.
With respect to claims 8 and 9, propylene polymer used in the example is isotactic polypropylene, with no comonomer therefore all repeat units are propylene units.
With respect to claim 11, the composition comprises melt blending all the components extruding into pellets or granulates (see examples, and col. 7). Obtained pellets were injection molded into specimen, wherein a test specimen is an article.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (JP 6513278).
The discussion of Fukuda rejection of claims 7-9 and 11 from paragraph 1 and of this office action is incorporated here by reference. Fukuda as disclosed above teaches all the components of claim 7 which includes all the additives in the polypropylene composition including the amounts.
The difference between the prior art and the instant invention is that the prior art seems to add all the components together while instant invention makes an additive pre-mix, before it is incorporated into polyolefin.
MPEP 2144.04(IV)C is directed to chances in sequence of adding ingredients. In re Burgans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) dictates that the selection of any order of performing process steps is prima facie obvious in absence of new and unexpected results; In re Gibson, 39 F.2d 975, 5 USPW 230 (CCPA 1930) states that selection of any order of mixing ingredients is prima facie obvious.
With respect to claim 1, In examples Fukuda teaches premixing components A-D but does not teach adding hydrotalcite along with the additives, wherein “for improving Charpy impact strength” is viewed as recitation of intended use.
Hydrotalcite of Fukuda are fillers which would not chemically, affect the composition of the premix, as such it would have been obvious to one having ordinary skill in the art to make a pre-mix that include hydrotalcite and thereby obtain claimed invention.
Pre-mixing additive along with the filler such as hydrotalcite would still result in polypropylene based composition having uniformly distributed components thereby improving properties of the composite. Furthermore, MPEP 2144.04(IV)C states In re Burghans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
With respect to instant claim 5, lithium salt of 12-hydroxystearic acid is explicitly named [0036-0037].
With respect to claim 6, hydrotalcites of Fukuda have following structures:
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Rejection of Claims 1-9 and 11 was addressed in paragraph 1.
With respect to claim 10, Fukuda adds pre-mix to the polymer to make the molded product.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time of the instant invention to utilize hydrotalcite of Fukuda as part of the pre-mix and thereby obtain the claimed invention. Such modification would still provide polymeric moldings that have excellent transparency and physical properties.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ichiyanagi (US 5,717,013).
The discussion of Ichiyanagi and rejection of claims 7-9 and 11 from paragraph 2 of this office action is incorporated here by reference.
In the examples Ichiyanagi, propylene homopolymer was mixed with equal amounts of each component. The components were blended together in a Henschel mixer before they are melt-kneaded.
The difference between instant invention and the teachings of Ichiyanagi is premixing additives and then add them to the polyolefin.
MPEP 2144.04(IV)C is directed to chances in sequence of adding ingredients. In re Burgans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) dictates that the selection of any order of performing process steps is prima facie obvious in absence of new and unexpected results; In re Gibson, 39 F.2d 975, 5 USPW 230 (CCPA 1930) states that selection of any order of mixing ingredients is prima facie obvious.
With respect to claim 1, all component were blended dry without raising any temperature and therefore no chemical reactions have occurred, wherein “for improving Charpy impact strength” is viewed as recitation of intended use. As such it would have been obvious to one of ordinary skill in the art to first pre-mix the additives and then add them to the polymeric component. Such modification would not adversely affect the distribution of the additive within the polymeric matrix since the mixing stage of Ichiyanaga is non-productive stage.
Ichiyanaga teaches following compound:
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With respect to claim 6, Ichiyanagi discloses hydrotalcite having following formula (col. 7)
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Rejection of claims 7-9 and 11 from paragraph 2 is incorporated here by reference.
With respect to claim 10, Ichiyanagi discloses adding the additives to the polymer (see the discussion in claim 1). The blend is mixed, extruded into pellets and injection molded into an article.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 May 13, 2026
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