DETAILED ACTION
This Office Action is responsive to the amendment filed on 10/27/2025.
The objections and rejections not addressed below are deemed withdrawn.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.
Claim Rejections - 35 USC § 103
Claim(s) 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mack et al, US4603173 (of record).
Sample 1-2 of Mack discloses a polyethylene composition (for claims 1, 8) which is prepared by reacting a polyethylene precursor composition (for claims 1, 8) with 42 ppm (for claim 12) dicumyl peroxide, corresponding to the claimed radical initiator (for claims 1, 8) which is an organic peroxide (for claim 11) at a temperature of 190 °C (for claim 10) for 3 minutes (Column 11, lines 15-35, Table 1). Mack teaches that the prior art process can be performed in an extruder (for claim 10) (Column 5, lines 62-68). The prior art composition is used in the production of blow molded articles (for claims 14, 15) such as bottles, corresponding to the claimed handleware (for claim 16) (abstract; Column 6: lines 32-34).
Regarding the claimed MIF/MIE: The composition of Mack’s Sample 1-2 is characterized by a ratio of melt index at 21.6 kg (MI20) to melt index at 2.16 kg (MI2), corresponding to claimed MIF/MIE, of 82 (for claims 1, 8) (Table 2)
Regarding the claimed MIF: As noted above, the prior art Sample 1-2 teaches a composition having MI20/MI2 of 82. Mack further teaches that the MI2 of the sample is 0.45 (Table 2). Based on these numbers, it is calculated that the composition of Sample 1-2 has a MI20 of 36.9, corresponding to the claimed MIF (for claims 1, 8).
Regarding the claimed density: Mack teaches that the polyethylene composition used as the precursor may have a density in the range of about 0.935 to 0.985 g/cm3 (Column 2, lines 59-64), overlapping the claimed range (for claims 2, 9). Further note that Mack teaches that the prior art modification process does not substantially change the physical characteristics of the polyethylene (Column 2, lines 54-58). "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; see In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Given Mack’s disclosure that the prior art process does not substantially change the polyethylene’s physical characteristics, an ordinary artisan would reasonably infer that the final modified polyethylene would have the same density as the precursor used to make it; i.e., in the range of 0.935 to 0.985 g/cm3, overlapping the claimed range (for claims 1, 8).
Regarding the claimed ratio of MIF/MIE of the precursor composition: Note that Sample 1-1 of Mack was not treated with peroxide and therefore corresponds to the polyethylene composition that was used to make the prior art Sample 1-2 (Column 11, lines 15-35; Table 1). As taught by Mack, the polyethylene precursor was characterized by a MI20/MI2 of 73, corresponding to claimed MIF/MIE 1I which is lower than the MIF/MIE of the final composition (for claims 1 ,8). Further note that the ratio of MI20/MI2 of the final composition to the MI20/MI2 of the precursor in the prior art example is calculated by 82/73 = 1.12 (for claims 1, 8).
Regarding the claimed precursor: Precursor sample 1-1 comprises 74% of a low molecular weight (LMW) component having MI2 of 12.5, corresponding to component (A) (for claim 4), and 26% of a high molecular weight (HMW) component having a MI2 of 0.01, corresponding to claimed component (B) (for claim 4) (Column 11, lines 20-25). Mack teaches that the prior art components may be ethylene copolymers (for claim 3) (Column 2, lines 59-61). Said precursor is characterized by a MI20/MI2 of 73 and a MI2 of 0.60 (Table 2); it is therefore calculated that the prior art precursor has a MI20 of about 43.8, corresponding to the claimed MIF (for claims 2, 9).
Mack further exemplifies the use of a precursor comprising 55-74% of the LMW component and 26 to 45% of the HMW component (Examples 1, 3, 4, 7), overlapping the claimed ranges (for claim 4).
Regarding claim 5: Mack teaches that the prior art precursor is prepared using a Ziegler Natta catalyst (Column 2, lines 54-55).
Regarding claim 13: Mack teaches the use of 2,5-dimethyl-2,5-di(t-butylperoxy)hexane as the radical initiator (Column 13, lines 17-18).
Case law holds that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07). The prior art teaches that 2,5-dimethyl-2,5-di(t-butylperoxy)hexane may be used as the radical initiator in the prior art process. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the process of Sample 1-2 by using 2,5-dimethyl-2,5-di(t-butylperoxy)hexane as the radical initiator.
Mack does not particularly point to the production of a composition having density in the range of 0.948 to 0.955 g/cm3, swell ratio, ER value, and ratio (η0.02/1000)/LCBI using a catalyst obtained from the specified components.
Regarding the density: 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) (MPEP § 2144.05).
As discussed in the previous paragraphs, Mack teaches that the prior art polyethylene may have a density in the range of 0.935 to 0.985 g/cm3, overlapping the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the composition of Mack’s Sample 1-2 to have a density in the claimed range (for claims 1, 8).
Regarding the claimed swell ratio (for claims 1, 7, 8), (η0.02/1000)/LCBI (for claims 1, 7, 8) and ER values (for claims 1, 2, 8, 9): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed in the previous paragraphs, the prior art Sample 1-2 renders obvious a polyethylene composition characterized by the same density and melt index properties as the claimed invention. Furthermore, the prior art polyethylene composition is prepared via the same process of treating a precursor composition with a radical initiator, and the ratio MI20/MI2 of the prior art final product to the MI20/MI2 of the prior art precursor has a value that corresponds to the ratio MIF/MIE of final product to precursor as used to define the claimed composition. The prior art therefore teaches a composition appears to be the same as the claimed invention and is made by the same process as the claimed invention. As such, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art (for claims 1, 2, 7, 8, 9).
Regarding the claimed catalyst components: "[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). As discussed in the previous paragraphs, the prior art renders obvious a modified polyethylene that appears to be identical to the claimed invention. The burden is therefore shifted to applicant to provide evidence that the use of the specified catalyst results in an unobvious difference between the claimed invention and the prior art (for claim 6).
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive with regards to the rejection over Mack et al, US4603173.
Applicant argues that the Mack does not teach a composition having the required swell ratio.
As discussed earlier in this Action, Mack renders obvious a polyethylene composition characterized by the same density and melt index properties as the claimed invention. Furthermore, the prior art polyethylene composition is prepared via the same process of treating a precursor composition with a radical initiator, and the ratio MI20/MI2 of the prior art final product to the MI20/MI2 of the prior art precursor has a value that corresponds to the ratio MIF/MIE of final product to precursor as used to define the claimed composition. The prior art therefore teaches a composition appears to be the same as the claimed invention and is made by the same process as the claimed invention. As such, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art.
Applicant further alleges that the evidence of record does not support the argument that the composition of Mack would be reasonably expected to have the required properties. Note, however, that applicant does not provide either any evidence to support this allegation or any supporting arguments to point out the supposed errors in the position outlined in paragraphs 20 to 21 and 25 of this Action. Absent any evidence or supporting arguments/rationale, applicant’s statement merely alleging that the prior art composition would not be expected to have the claimed properties is not sufficient to demonstrate that the composition rendered obvious by the prior art would not have the same properties as the claimed invention; see In re Fitzgerald cited earlier in this Action. The rejection over Mack is therefore maintained.
Applicant’s arguments, see pages 7-9, with respect to the rejection over Dötsch et al, WO2018/095701, have been fully considered and are persuasive. Dötsch’701 neither discloses the ER value and MIF/MIE of the prior art composition nor does it provide any information regarding the MIE, storage modulus (G’) and/or loss modulus (G”) that would allow an ordinary artisan to calculate the properties of MIF/MIE or ER value for the prior art composition. Furthermore, the prior art composition has a swell ratio greater than 170% (¶0032)-i.e., outside the claimed range. The prior art therefore does not reasonably suggest the production of a composition characterized by the claimed combination of MIF/MIE, ER value, and swell ratio. The rejection has been withdrawn.
Applicant’s arguments, see pages 9-12, with respect to the rejection over Dötsch et al, WO2018/095702, have been fully considered and are persuasive. Dötsch’702 neither discloses the ER value and MIF/MIE of the prior art composition nor does it provide any information regarding the MIE, storage modulus (G’) and/or loss modulus (G”) that would allow an ordinary artisan to calculate the properties of MIF/MIE or ER value for the prior art composition. Furthermore, the prior art composition has a swell ratio greater than 170% (¶0031)-i.e., outside the claimed range. The prior art therefore does not reasonably suggest the production of a composition characterized by the claimed combination of MIF/MIE, ER value, and swell ratio. The rejection has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765