DETAILED ACTION
This Office Action is in response to the Amendment filed on 7/23/2026. Claim 11 was cancelled. Claims 1 – 10 and 12-20 are now pending in the application.
Claim Rejections - 35 USC § 112
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 1-10 and 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 1 as amended now recites (in part):
“A fiber reinforced composite having a melt flow rate MFR2 (230 0C, 2.16 kg) measured according to ISO 1133 in the range of 10 to 100g/10 min and consisting of:
(a) 59 to 90 wt. -%, of a polypropylene, based on the fiber reinforced composite,
(b) 9.0 to 40 wt.-%, of glass fibers, based on the fiber reinforced composite,
(c) 0.05 to 5.0 wt.-%, of a compatibilizer, based on the fiber reinforced composite,
(d) 0.1 to 5.0 wt% of additives based on the fiber reinforced composite,
wherein the total amount of the polypropylene, the glass fibers and the compatibilizer in the fiber reinforced composite is at least 98 wt%”
The claim 1 is now considered indefinite. The amendment to claim 1 requiring (d) 0.1 to 5 wt% additives contains amounts of additives that contradict the proviso that that the total amount of the polypropylene, the glass fibers and the compatibilizer in the fiber reinforced composite is at least 98 wt%. For example, if the amount of additive was 3 wt%, then the total amount of (a), (b) and (c) could only reach 97 wt%, and thereby not meet the “at least 98 wt%.” For purposes of examination, the amount of additive is considered to be from 0.1 to 2 wt%, so that the total amount of (a), (b) and (c) is at least 98 wt%.
Claims 2-10 and 12-20 are rejected because they depend from a rejected base claim.
Further, claims 12 and 17 contain the language “MISSING OBJECT (I)” in the claims. The claims are thereby indefinite. For purposes of examination, the claims 12 and 17 will be interpreted as containing the metallocene catalyst having the formula (I) as set forth in the previous claims set dated 1/5/2026.
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 -10 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bernreitner (US PG Pub 2012/0225993 A1).
Regarding claim 1, Bernreitner teaches a fiber reinforced composition (claims 1 and 5) comprising:
10 to 60 wt% propylene homopolymer (H-PP1);
10 to 45 wt% of fibers, wherein the fibers are glass (claim 9); thereby reading on the claimed 9 to 40 wt% of glass fibers;
0.5 to 4 wt% of a compatibilizer thereby reading on the claimed 0.05 to 5 wt% of compatibilizer;
wherein the HECO can be present at a lower limit of 5 wt% (claim 5) thereby reading on the claimed additive;
wherein Bernreitner teaches the inventive and comparative examples wherein only the polypropylene, the compatibilizer and the glass fibers are present (Table 4) thereby reading on the “consisting of” language;
wherein the total amount of the propylene homopolymer, fibers and compatibilizer can be at least 95 wt% of the fiber reinforced composition because the HECO can be present at a lower limit of 5 wt% (claim 5);
wherein the MFR2 of the fiber reinforced composition is at least 10 g/10 min (claim 1) thereby reading on the claimed range of 10 to 100 g/10 min;
wherein the propylene homopolymer has a melting temperature of at least 145 C (claim 7) thereby reading on (i) the range of 152 to 160 C;
wherein the propylene homopolymer reads on the (ii) comonomer content of not more than 0.5 wt% of comonomer being ethylene;
wherein the propylene homopolymer has a melt flow rate MFR2 (230 C) measured according to ISO 1133 of at least 500 g/10 min thereby corresponding to the (iii) the range of 20 to 500 g/10 min;
wherein the propylene homopolymer has a molecular weight distribution in the range of 2 to 6 (claim 7) thereby reading on the (iv) claimed range of 1 to below 3;
and wherein the polypropylene has been produced by polymerizing propylene in the presence of a metallocene catalyst [0215].
Bernreitner and the claims differ in that Bernreitner does not teach the exact same proportions for the propylene homopolymer as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by Bernreitner (10 to 60wt%) overlap the instantly claimed proportions (59 to 90 wt%) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Bernreitner and the claims differ in that Bernreitner does not teach the exact same total amount of polypropylene, glass fibers and compatibilizer in the composite as recited in the instant claims.
However, Bernreitner teaches all of the claimed components within the claimed ranges as set forth above. The only ingredient taught in the composition of Bernreitner that falls outside of the scope of the claimed composition is the HECO, wherein Bernreitner teaches the HECO is present at a lower limit of 5 wt% (claim 5). When the HECO is at 5 wt%, the propylene homopolymer, fibers and compatibilizer will be 95 wt% of the fiber reinforced composition. The total amount of 95 wt% of the polypropylene, glass fibers and compatibilizer is substantially close to the at least 98 wt% as required in the claim. Case law has held that one of ordinary skill would have expected compositions that are in such close proportions to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp., 227 USPQ 773 (CA FC 1985). See MPEP 2144.05. Therefore it would have been obvious to one of ordinary skill in the art to arrive at the claimed range of at least 98% because it is close enough to the 95% taught by Bernreitner that one of ordinary skill in the art would expect these compositions to have the same properties.
Bernreitner and the claims differ in that Bernreitner does not teach the same melt flow rate MFR2 of the propylene homopolymer as required by the instant claim.
However, Bernreitner teaches the propylene homopolymer has a melt flow rate MFR2 (230 C) measured according to ISO 1133 of at least 500 g/10 min which is substantially close to the claimed range of (iii) 20 to 500 g/10 min. Case law has held that a prima facie case of obviousness exists where the claimed ranges and prior art do not overlap but are close enough that one in ordinary skill in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 f.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 2, Bernreitner does not explicitly teach the polypropylene having 2,1 regio-defects in the range of 0.10 to 0.90 wt%.
Regarding claim 3, Bernreitner does not teach the polypropylene complying with the inequation (II).
Bernreitner teaches the same polypropylene homopolymer as required by the instant claim as set forth in the rejection above, wherein the polypropylene homopolymer of Bernreitner has the same melting temperature Tm as required by the instant claim, an overlapping comonomer content as required by the instant claim, and wherein the polypropylene homopolymer of Bernreitner has a substantially close MFR2 as required by the instant claim. Therefore, it would be expected that the range of 2,1 regio defects and the compliance with inequation (II) for the polypropylene of Bernreitner would be the same as required by the instant claim. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 4, Bernreitner teach the polypropylene homopolymer has a xylene cold soluble fraction of not more than 3.5% [0085] thereby reading on the range of from 0.5 to 1 wt% as required by the instant claim.
Regarding claim 5, Bernreitner teaches the polypropylene is obtained by visbreaking [0096].
Regarding claim 6, Bernreitner teaches the polypropylene is the continuous phase being a matrix for the fibers [0039].
Regarding claim 7, Bernreitner teaches the MFR2 of the fiber reinforced composition is at least 10 g/10 min (claim 1) and preferably 13 to 60 g/10 min [0052] thereby reading on the claimed range of 15 to 50 g/10 min;
Regarding claim 8, Bernreitner teaches the polypropylene is monophasic [0097].
Regarding claim 9, Bernreitner teaches the monophasic polypropylene is a homopolymer [0097].
Regarding claim 10, Bernreitner teaches the polypropylene homopolymer having the claimed properties (i) - (v) as set forth above for claims 1 – 4.
Regarding claims 12, 17 and 19-20, Bernreitner teaches the metallocene catalyst wherein suitable metallocene catalysts and ways of preparing them are known [0192]. Bernreitner further teach a process for the manufacture of the fiber reinforced composite comprising adding the polypropylene, glass fibers, compatibilizer to an extruder [0191] wherein the polypropylene has been produced by polymerizing polypropylene in the presence of a metallocene catalyst [0215], wherein the polypropylene has undergone visbreaking [0096].
Regarding claims 13 and 14, Bernreitner teaches the glass fibers are short fibers having an average length of 1 to 10 mm [0113] thereby reading on the claimed range of from 2 to 10 mm.
Regarding claims 15 and 16, Bernreitner teaches the adhesion promoter is maleic anhydride grafted polypropylene [0118] having a maleic anhydride content of 1.2% [0221] thereby reading on the claimed range of from 0.1 to 5 wt%, and an MFR2 of from 1 to 500 g/10 min [0122] thereby reading on the claimed MFR2 of 80 to 250 g/10 min as required by the instant claim.
Regarding claim 18, Bernreitner teaches an article comprising the fiber reinforced composition (claim 14).
Bernreitner does not particularly teach the amount of the fiber reinforced composition in the article.
However, Bernreitner teaches the reinforced compositions are selected for applications requiring high stiffness, heat deflection resistance and resistance to both impact and dynamic fracture loading [0002]. The ratio of the thiazole to the rose will affect the resulting smell of the final product. Therefore, the amounts the fiber reinforced composition in the article can be optimized to reach the desired mechanical properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Response to Arguments
Applicant’s arguments, see p. 1-4, filed 7/23/2026, with respect to the 103 rejections over Bernreitner have been fully considered but are not persuasive.
Applicant states “There would be no motivation to arrive at the claimed total amount of polypropylene, the glass fibers and the compatibilizer being at least 98 wt% based on the teachings of Bernreitner.” In response, attention is directed to the case law as cited in the rejection above, wherein it has been held that one of ordinary skill would have expected compositions that are in such close proportions to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp., 227 USPQ 773 (CA FC 1985). See MPEP 2144.05. Therefore it would have been obvious to one of ordinary skill in the art to arrive at the claimed range of at least 98% because it is close enough to the 95% taught by Bernreitner that one of ordinary skill in the art would expect these compositions to have the same properties. It is for these reasons that Applicant’s arguments are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 2013/149915 as set forth on the IDS dated 11/16/2022.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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