DETAILED ACTION
This Office Action is responsive to the amendment filed on 5/13/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/17/2026 has been entered.
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 4/17/2026 have been fully considered but they are not persuasive.
Applicant argues that the evidence in the record demonstrates that the composition of Mack would not be reasonably expected to have the required swell ratio, citing the disclosure of Doetsch et al, 2018/095702 (of record), as evidence that a polymer having the same melt characteristics and density as the claimed invention may not have the required swell ratio.
In response, it is first noted that, contrary to applicant’s arguments, the cited Table from Doetsch does not demonstrate that a polymer having the same melt characteristics and density as the claimed invention may not have the required swell ratio. As written, claimed condition (1) states that the polyethylene composition is required to have a MIF/MIE in the range of 60 to 120, with MIF being the melt flow rate (190 °C, 21.60 kg) and MIE being the melt flow rate (190 °C, 2.16 kg). Doetsch does not explicitly disclose the MIF/MIE of the composition of WO2018/095702, nor does it provide any information that could be used to calculate this property. The cited table therefore does not demonstrate that a composition having the required MIF/MIE-which is met by the disclosure of Mack- would not have the recited swell ratio.
Additionally, it is noted that the composition of Doetsch was not subjected to a treatment with a radical initiator as required by Mack. Mack specifically teaches that treatment with initiator changes the branching properties of the composition (Mack Column 3: line 66 to Column 4: line 6). It is therefore unclear that the composition of Doetsch, which was not subjected to a treatment with an initiator, would have the same properties as the composition of Mack, which was subjected to such a treatment.
Finally, note that Mack discloses the die swell percent (DSP) of larger scale batches, wherein the DSP is calculated by the same formula as used to calculate the claimed swell ratio (specification ¶0155). Note that 1) Mack states that the DSP is reported as the percentage increase in die swell (Column 10: lines 8-22) and 2) the percentage change reported for the analyzed samples is in the range of 60-67% (Table 10)-i.e., the samples had a swell ratio in the range of 160 to 167%. Mack therefore renders obvious a composition having the same properties of MIF/MIE, MIF, and density as the claimed invention, wherein said composition is prepared via the same process of contacting a precursor composition with a radical initiator. Given these similarities and the fact that the samples analyzed by Mack for their DSP had a swell ratio within the required range, it is reasonably expected that the claimed swell ratio would be met by the composition rendered obvious by Mack.
Applicant argues that Mack differs from the claimed invention with regards to the process employed in the prior art, alleging that prior art does not teach the claimed process of contacting the radical initiator and the precursor polyethylene composition in an extruder device.
In response, it is first noted that neither independent claim 1 nor independent claim 8 requires that precursor composition and the radical initiator are contacted with one another in an extruder. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is therefore unpersuasive to merely argue that the prior art does not teach that the contacting is done in an extruder, as this is not required by the claimed invention. Mack discloses a process wherein a precursor polyethylene composition is contacted with a radical initiator. Mack further teaches that the conditions should be such that the peroxide is evenly dispersed (Column 4, lines 39-51), and that the hold time in the compounding step is sufficiently long to completely decompose the initiator (Column 5: lines 3-10). Note that the compounding step can be done in an extruder (Column 5: lines 55-57). Applicant therefore has not established that the process taught by Mack would be expected to result in a composition that is different from the claimed invention.
Furthermore, applicant’s specification contradicts the allegation that the claimed invention requires an extruder. As disclosed in the specification filed 9/15/2022, the contact with the radical initiator “can be carried out by any means and under any conditions known in the art to be effective for radical initiated reactions in olefin polymers” (specification ¶0122). The evidence in the record therefore does not demonstrate that the prior art process would not be sufficient to perform the required reaction, particularly given Mack’s disclosure that the peroxide is evenly dispersed and the reaction performed to yield a homogeneous sample (Column 7: lines 6-30).
Finally, note that claim 1 is written in product-by-process format. "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113 (I)). It is therefore insufficient to merely allege that the prior art requires a different process than that disclosed by applicant. Applicant is required to provide evidence that the recited process steps result in an unobvious difference between the claimed invention and the prior art. Given that the submitted arguments are directed towards process limitations that are not required by the claimed invention, the evidence in the record does not demonstrate that the invention as defined in the claims would have an unobvious difference from the composition of Mack. The rejection is therefore maintained.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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