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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/2/2026 has been entered. Claims 1-13 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Credali et al (US 2005/0222314 A1) in view of Pellegatti et al (US 2010/0137543 A1).
Regarding claim 1, Credali et al disclose polyolefin compositions filled with high amounts of inorganic filler comprising (I) 20 to 60% by weight of heterophasic polyolefin composition comprising polypropylene homopolymer and elastomeric fraction comprising at least a copolymer of propylene or ethylene with at least one α-olefin (i.e., reads on the additional polyolefin different from A in present claim 1) and 40 to 80% by weight of an inorganic filler (abstract) which reads on the inorganic filler B in present claim 1.
Credali et al fail to disclose in a single embodiment as in present claims a polyolefin composition comprising a copolymer “A” of 1-butene with ethylene; ratio of B/A; total amount of A and B; amount of additional polyolefin; and flexural modulus.
However, Credali et al in the general disclosure teach that depending on the properties needed for the different applications, composition of the invention may be used in combination with other elastomeric polymers such as copolymers of ethylene with C4-C12 α-olefins. Such elastomeric polymers may be present in amounts of 5 to 80% by weight of the total composition (paragraph 0096). Additionally, Pellegatti et al teach 1-butene ethylene copolymer having an ethylene derived units content ranging from 15.10 mol% to 18.0 mol% having no melting point detectable at the DSC (abstract) at the second scan (see claim 1) which reads on the copolymer “A” of butene-1 with ethylene in present claim 1. The sample was heated for a second time with a scanning speed corresponding to 10 0C/min (paragraph 0044). The 1-butene/ethylene copolymer presents a good balance between hardness and elastic behavior and shows good values of clarity (abstract 0010). Due to these well-balanced features 1-butene/ethylene copolymers can be used as modifiers of compositions where there is a need to improve elasticity (paragraph 0013). Therefore, in light of the teachings in Pellegatti et al and given that Credali et al contemplate including copolymers of ethylene with C4-C12 α-olefins in amounts of 5 to 80% by weight, it would have been obvious to one skilled in art prior to the filing of present application to include 1-butene/ethylene copolymer, of Pellegatti et al, in the polyolefin composition, of Credali et al, in any amounts including 5 to 80% by weight for obtaining a polyolefin composition comprising total amount of butene-1/ethylene copolymer and inorganic filler of 85% to 98% by weight, ratio of B/A of 0.3 to 4 and additional polyolefin in amounts of 2 to 15% by weight, for above mentioned advantages, including optimizing the elastic behavior (such as to obtain a flexural modulus of from 80 to 600 MPa) to a desired value.
Regarding claim 2, Credali et al teach that inorganic filler is present in amounts of 40 to 80% by weight (abstract) which overlaps with the amount of inorganic filler in present claim 2. The composition may be used in combination with other elastomeric polymers such as copolymers of ethylene with C4-C12 α-olefins. Such elastomeric polymers may be present in amounts of 5 to 80% by weight of the total composition (paragraph 0096) which overlaps with the amount of copolymer A in present claim 2.
Regarding claim 3, see example 1, of Credali et al, wherein the polyolefin composition has a melt flow rate of 21.8 measured at 2300C with a load of 2.16 kg (paragraph 0100 and Table 1). It is the Office’s position that one skilled in art prior to the filing of present application would have a reasonable basis to expect the polyolefin composition, of Credali et al in view of Pellegatti et al to have a melt flow index equal to or greater than 0.05 g/min when measured at 1900C under a load of 2.16 kg, absent evidence to the contrary.
Regarding claim 4, see example 1, of Credali et al, wherein the polyolefin composition has an elongation at break of 479% (Table 1) and Shore D hardness from 20 to 35 (paragraph 0010).
Regarding claim 5, see example 4, of Pellegatti et al wherein the butene-1 copolymer has a Shore A hardness of 56.6 (Table 2).
Regarding claim 6, Pellegatti et al teach that 1-butene ethylene copolymer has a molecular weight distribution of lower than 3 (see claim 1).
Regarding claim 7 and 8, see example 1, of Credali et al, wherein the polyolefin composition includes inorganic filler Mg(OH)2.
Regarding claim 9, Credali et al teach that heterophasic polyolefin composition comprises propylene homopolymer, copolymer or mixtures thereof and an elastomeric fraction comprising a copolymer of ethylene or propylene with at least one α-olefin (abstract) of formula H2C=CHR wherein R is C2-C10 linear or branched alkyl (paragraph 0032-0034).
Regarding claim 10, Credali et al teach that in order to enhance compatibility between inorganic filler and heterophasic polymer, coupling agents may be included (paragraph 0092) in amounts of 0.01 to 10% by weight (paragraph 0096).
Regarding claim 11, Credali et al teach that coupling agents may be mono- or dicarboxylic acids containing at least one ethylenic unsaturation or derivatives thereof such as acrylic acid, maleic acid. The coupling agents can be used as such or pre-grafted onto a polyolefin (paragraphs 0092-0094) which reads on the copolymer of α-olefins containing polar groups in present claim 11.
Regarding claims 12 and 13, Credali et al teach that the composition can be used as cable sheathing (paragraph 0088). Flexible polymer materials are widely used in electric wires and cable covering (paragraph 0003).
Claims 1 and 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Biondini et al (US 2016/0257809 A1).
Regarding claim 1, Biondini et al disclose highly filled polyolefin compositions (i.e., reads on filled composition in present claim 1) comprising a flexible heterophasic polyolefin composition consisting of copolymer of propylene with ethylene, an elastomeric fraction. The filled composition further comprises inorganic filler (i.e., reads on inorganic filler in present claim 1) and a butene-1 copolymer (abstract). The butene-1 copolymer may comprise a 1-butene/ethylene copolymer having a content of copolymerized ethylene of from 5% by mol to 18.0 % by mol (paragraph 0021) which reads on copolymer of butene-1 with ethylene in present claim 1. There is no melting point detectable via DSC measured by cancelling the thermal history of the copolymer (paragraph 0025). The butene-1 polymer was heated for the second time with a scanning speed corresponding to 100C/min (paragraph 0050) which reads on no melting peak detectable at the DSC at the second heating scan at a heating rate of 100C / min in present clam 1. Highly filled polyolefin compositions are endowed with flexural modulus of 300 to 800 MPa (paragraph 0035) which overlaps with the flexural modulus in present claim 1. The filled polyolefin composition comprises 30 to 80% by weight of inorganic filler and 2 to 25% by weight of butene-1 copolymer (paragraph 0012) which overlaps with the ratio of B/A in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Biondini et al fail to disclose in a single embodiment as in present claims a composition comprising additional polyolefin different from copolymer of butene-1 with ethylene.
However, Biondini et al in the general disclosure teach that butene-1 copolymer can further comprise 80 wt% or more of butene-1 copolymer and up to 20 wt% of crystalline propylene copolymer (paragraphs 0028-0030) which overlaps with amount of additional polyolefin different from A in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Biondini et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to prepare a highly filled polyolefin composition comprising inorganic filler, copolymer of butene-1 with ethylene and additional crystalline propylene copolymer in overlapping amounts, absent evidence to the contrary. It is the Office’s position that transitional phrase “comprising” allows for the inclusion of heterophasic polyolefin, of Biondini et al, in the composition of present claims.
Regarding claim 3, Biondini et al teach that compositions have a MFR (2300C/2.16 kg) of from 3 to 8 g/10 min (paragraph 0016). It is the Office’s position that at 1900C, one skilled in art prior to the filing of present application would have a reasonable basis to expect the melt flow index to overlap with the presently claimed value of greater than 0.05 g/10 min, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 4, Biondini et al teach that highly filled polyolefin compositions exhibit an elongation at break higher than 250% (paragraph 0013) which overlaps with the tensile elongation at break in present claim 4.
Regardng claim 5, Biondini et al teach that butene-1 copolymer has a shore A hardness of lower than 65 (paragraphs 0021 and 0023).
Regarding claim 6, Biondini et al teach that butene-1 copolymer has a molecular weight distribution of lower than 3 (paragraphs 0021-0022) which overlaps with the molecular weight distribution in present claim 6.
Regarding claims 7 and 8, examples of inorganic filler, in Biondini et al, include Mg(OH)2 (paragraph 0033) which reads on hydroxides in present claim 7 and Mg(OH) in present claim 8.
Regarding claim 9, Biondini et al teach that butene-1 copolymer can further comprise crystalline propylene polymer (paragraph 0030).
Regarding claim 10, Biondini et al teach that coupling agent may be included in amounts of 0.01 to 10% by weight with respect to the total weight of the highly filled polyolefin composition (paragraph 0042).
Regarding claim 11, examples of coupling agents include mono- or dicarboxylic acids containing at least one ethylenic unsaturation site (paragraph 0039). The coupling agents of carboxylic acid type can be added to a mixture in combination with a radical initiator so as to graft the compatibilizing agent directly onto the polymeric material (paragraph 0041).
Regarding claims 12 and 13, Biondini et al teach an article comprising the polyolefin composition (see claim 7 of Biondini et al and reads on article in present claim 12 ) and are useful for cables (paragraph 0001) which reads on the cable in present claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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