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 .
Claims 1-5, 7-12, 21-25 are pending and are under examination on the merits.
Claim 1 is amended.
Claim 6 is newly canceled.
Claims 21-25 are newly added.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7-12, 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 now states “above 0 wt. % and up to 5 wt.% of a second polypropylene with respect to a total weight of the first polypropylene and the second polypropylene”. This is unsupported in the specification- throughout the specification the amount of second polypropylene is referred to “with respect to the composition”. Changing the amount to be with respect to “a total weight of the first polypropylene and the second polypropylene” changes the concept of the range and ties it to a different portion of the composition than is disclosed in the specification. This amounts to new matter.
Claims 2-5, 7-12, 21-25 depend on claim 1 and are rejected for the same reason.
Specification
Applicant’s amendment to the specification of 1/29/26 corrects the error set forth in the previous action; the objection to the specification set forth therein is withdrawn.
Claim Rejections - 35 USC § 102
The rejection in the previous action of claims 1-3, 5, 12 under 35 U.S.C. 102(a)(1) as being anticipated by US 20120028006 by Yamaguchi et al is withdrawn in view of applicant’s amendment requiring the presence of a second polypropylene in claim 1.
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.
The rejection in the previous action of claims 1-3, 5, 9-12 under 35 U.S.C. 103 as being unpatentable over US 20200079944 by Lin et al is withdrawn in view of applicant’s amendment narrowing claim 1 to include the second polypropylene in a specific amount. Rejections of dependent claims based on Lin in view of secondary art are also withdrawn.
The rejection in the previous action of claims 1-3, 5, 9-12 under 35 U.S.C. 103 as being unpatentable over CN 106589580 by Zheng et al is withdrawn in view of applicant’s amendment narrowing claim 1 to include the second polypropylene in a specific amount. Rejections of dependent claims based on Zheng in view of secondary art are also withdrawn.
Claims 1-3, 5, 22, 23, 25 are rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by US 20050089682 by Su et al.
Kuo is described above.
Regarding claim 1, Kuo describes a composition comprising, in an embodiment:
a first polypropylene- Kuo’s “second polypropylene”- which may be a propylene homopolymer (paragraph 15) in an amount of less than 96 wt% (paragraph 5)
a second polypropylene- Kuo’s “first polypropylene”- which is high crystallinity (paragraph 7) in an amount of 2-50 wt% (paragraph 3). Kuo exemplifies Fina PP 3270 (paragraph 7), which is equivalent to instant’s TotalEnergies 3270 which is exemplified in the instant specification as having a high crystallinity (instant p.28 paragraph 3-6, Table 9), i.e. meeting the instant crystallinity requirement. Fina PP 3270 is described as a homopolymer (Su paragraph 36) i.e. is reasonably expected to meet the instant “at least 99 wt% propylene”.
Kuo describes the optional presence of calcium stearate (paragraph 32), which reads on the instant alpha nucleation inhibitor, as explained below
Regarding the overlapping ranges of first polypropylene and second polypropylene, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Kuo describes values overlapping with the claimed range.
Regarding Kuo’s calcium stearate reading on the instant alpha nucleation inhibitor, the instant specification describes only potassium stearate as an example of an alpha nucleation inhibitor (submitted specification p.7 middle of page), without further elaboration. Instant Fig.7, a differential scanning calorimetry measurement of Example 3, shows the effect of having potassium stearate and a beta nucleator present. Fig.7 (Example 3) shows almost identical peaks to Fig.4 (Example 1), yet Fig.4 has calcium stearate and a beta nucleator (Example 1) instead of potassium stearate and a beta nucleator. There are no other instant examples which compare the effect of potassium stearate with beta nucleator vs. calcium stearate with beta nucleator. Examples 4 and 6 come close, BUT there is calcium stearate present in both examples. The difference in traces in Fig.17, which examine examples 4 and 6, may be entirely attributable to twice as much "alpha inhibitor" present in Example 6. There is 2000ppm calcium stearate + 2000 ppm potassium stearate in Example 6, as opposed to merely 2000ppm calcium stearate in Example 4. Given that calcium stearate appears to act very similarly to potassium stearate in polypropylene crystallinity (instant DSC traces), and the chemical structures of the two are the same except for the cation, one of ordinary skill would reasonably expect calcium stearate to read on the instantly claimed "alpha nucleation inhibitor".
Kuo is silent as to the presence of specifically a beta nucleating additive, although he does state that nucleating agents may be added (paragraph 32).
Nakajima describes a crystalline polypropylene composition.
Nakajima describes adding beta nucleating agent to improve toughness of a crystalline polypropylene composition (translation paragraph 5, 7). Thus it would be obvious to one of ordinary skill to add the beta nucleant described in Nakajima to Kuo’s crystalline polypropylene composition in order to improve toughness.
Regarding claim 2, the phrase "wherein after annealing at an annealing temperature Ta..." and the rest of the claim is a future intended use. The composition of Kuo in view of Jacoby must merely be capable of achieving the claimed melting peaks. Since the addition of calcium stearate achieves two melting peaks when present with the beta nucleation additive in the instant specification (instant Fig.4), one of ordinary skill would reasonably expect Kuo in view of Jacoby's composition of polypropylene, beta nucleant, and calcium stearate to also be capable of achieving the claimed peaks.
Regarding claim 3, the phrase "wherein after annealing at an annealing temperature Ta..." and the rest of the claim is a future intended use. The instant composition of polypropylene, beta nucleant, and calcium stearate achieves a third peak (see instant Fig.4 160C anneal trace). Therefore one of ordinary skill would reasonably expect Kuo in view of Jacoby's composition of polypropylene, beta nucleant, and calcium stearate to also be capable of achieving the claimed peaks.
Regarding claim 5, Nakajima describes gamma quinacridone and N,N'-dicyclohexyl-2,6-naphthalenedicarboxyamide (paragraph 45).
Regarding claim 22, Kuo describes his first (instant second) polypropylene as having a melt flow of less than 20 (paragraph 11). The instant describes the polypropylene 3270, exemplified by Kuo, as having a melt flow of 2 g/10 min (instant publication paragraph 82).
Regarding claim 23, Kuo describes his first (instant second) polypropylene as having a polydispersity of greater than 4, preferably 5-11 (paragraph 9). Kuo’s second (instant first) polypropylene has a polydispersity of less than 5 (paragraph 15).
Regarding claim 25, Kuo describes the polypropylene PP 3270 (paragraph 7), reading on the instant second polypropylene, which is equivalent to instant’s TotalEnergies 3270. TotalEnergies 3270 is exemplified in the instant specification as the instant second polypropylene (instant Table 9) and described therein as a propylene homopolymer (instant publication paragraph 82).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al in further view of US 6562886 by Minami et al.
Kuo is described above.
Regarding claim 4, Kuo describes optional additives including neutralizers and exemplifies calcium stearate (paragraph 32) but is silent as to specifically potassium stearate.
Minami also describes polypropylene film.
Minami describes the additives calcium stearate and potassium stearate both as neutralizing agents (col 26 ln 43-45, col 35 ln 54-55, col 40 ln 34). In view of Minami' s recognition that calcium stearate and potassium stearate are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute potassium stearate for calcium stearate and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by US 20050186414 by Su et al.
Regarding claim 7, Kuo describes ExxonMobil’s PP4772 as the polypropylene which reads on the instant first polymer (paragraph 15). Su describes the isotacticity of ExxonMobil’s PP4772 as above 90% (paragraph 23).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al in further view of US 20040010107 by Dotson et al.
Kuo is described above.
Regarding claim 8, Kuo describes the polypropylene which reads on the instant first polypropylene as “any conventional polypropylene homo- or co-polymer” with a preferred polydispersity less than 5.0 and most preferably a melting point less than about 145C (paragraph 15), but Kuo is silent as to a preferred tacticity of this polypropylene, although some exemplified polypropylenes are isotactic (e.g. ExxonMobil’s PP4772 is isotactic, see rejection of claim 7 above).
Dotson describes syndiotactic polypropylene.
Dotson describes a syndiotactic polypropylene which meets Kuo’s preferred melting point and polydispersity (MP 95-165, polydispersity 2-5; paragraph 21). Dotson states that syndiotactic polypropylene is an improvement over isotactic polypropylene in clarity, toughness (impact resistance), and feel (softness), as well as surface smoothness and uniformity (paragraph 6). It typically has a lower melting point (about 128C) compared to isotactic polypropylene (153-170C) (paragraph 5). Thus it would be obvious to one of ordinary skill to use a syndiotactic polypropylene where Kuo does not describe a preference because it is an improvement over isotactic polypropylene in clarity, toughness (impact resistance), and feel (softness), as well as surface smoothness and uniformity (paragraph 6), and it typically has a lower melting point.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by US 20070292682 by Lee et al.
Kuo is described above.
Regarding claim 9, Kuo exemplifies ExxonMobil’s PP4772 as his first (instant second) polypropylene (paragraph 15), which according to Lee has an ethylene content of 0.55 wt% (Lee paragraph 32).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by “Crystallization of Polypropylene” by Pawlak et al and “Polypropylene Nucleation” by Horvath et al.
Regarding claim 10, Kuo is silent as to the crystallinity of the composition. However, Pawlak states that the typical crystallinity of polypropylene is 30-60% (p.187 paragraph 3). Also, Kuo in view of Nakajima describes the addition of crystallization nucleating agents, which usually also increases crystallinity according to Horvath (p.137 paragraph 1). Kuo’s second polypropylene (instant first polypropylene) can form a large majority of the composition, up to 96 wt% (paragraph 5). The crystallinity in Kuo is expected to be at least 30/96= 31% and more if Kuo’s second polypropylene (instant first) is present in smaller amounts. Thus the preponderance of evidence suggests that the composition of Kuo in view of Nakajima would have the claimed crystallinity, based on the total weight of the instant first polypropylene.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al in view of EP 0570221 by Hessen et al.
Kuo is described above.
Regarding claim 11, Kuo describes a polypropylene film (paragraph 28) that is used for packaging (paragraph 36) and optional additives for the film (paragraph 32) but is silent as to a blowing agent amongst these additives.
Hessen describes polypropylene foam.
Hessen describes adding blowing agents such as blends of pentane or isobutane and carbon dioxide or carbon dioxide into a polypropylene sheet formulation (p.3 ln 12-15). Hessen states that foaming polypropylene sheets is desirable because polypropylene has a higher heat distortion temperature compared to the conventionally used polystyrene, allowing polypropylene foam sheets to be used in higher heat applications (p.2 ln 23-27). Hessen describes the polypropylene foam sheets in packaging (p.3 ln 6-7), like Kuo.
Thus it would be obvious to one of ordinary skill to add a blowing agent to Kuo’s formulation because foamed polypropylene sheets have unique applications where higher heat distortion temperature is demanded.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al in further view of US 6562886 by Minami et al.
Kuo is described above.
Regarding claim 12, Kuo describes additives and specifically neutralizers and specifically calcium stearate, as well as nucleating agents (paragraph 32) but is silent as to the amount of each, although the total additives may be 0.05-40 wt% (paragraph 6).
Nakajima is described above.
Nakajima describes adding 0.0001-1 part by weight beta nucleating agent (translation paragraph 7 item (1)). This accomplishes Nakajima’s motivating concept of improving toughness of a crystalline polypropylene composition (paragraph 5, 7), thus it would be obvious to one of ordinary skill to add 0.0001-1 part by weight beta nucleating agent in order to improve toughness of Kuo’s composition.
Minami is described above.
Minami describes adding 1 to 10000 ppm neutralizing agent (i.e. calcium stearate) (col 26 ln 42-50). Minami describes the resultant polypropylene film as achieving excellent low-temperature heat sealability and toughness, films which are not sticky and have significantly improved anti-blocking properties and slip characteristics (col 55 ln 49-60). It would be obvious to one of ordinary skill to add Minami’s amount of neutralizer to Kuo’s film-forming composition where Kuo is silent in order to help achieve films with Minami’s characteristics.
The amount of beta nucleant and nucleation inhibitor (calcium stearate) is thus 2ppm-2 wt%, adding the options together. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Kuo in view of Nakajima and Minami describes values overlapping with the claimed range.
Regarding the instant phrase “in the form of a masterbatch”, this is a future intended use. While there is no disclosure that Kuo’s composition is a masterbatch as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention' s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner' s position that the preamble does not state any distinct definition of any of the claimed invention' s limitations and further that the purpose or intended use, i.e. a masterbatch, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art composition and further that the prior art structure which is a composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by “Polypropylene” by Gahleitner et al and “Propene” by Zimmerman.
Kuo is described above.
Regarding claim 21, Kuo is silent as to the amount of ethylene or other comonomer in Fina PP 3270 (paragraph 7), which reads on the instant second polypropylene. Fina PP 3270 is an instantly preferred polypropylene, used in examples. According to “Polypropylene” by Gahleitner in Ullman’s Encyclopedia of Industrial Chemistry, polymer grade monomers are used as feedstock for polypropylene (Gahleitner col 1 paragraph 1). In homopolymer polypropylene polymerization the concentration of isobutene, 1-butene and ethylene can be up to 50 vol ppm (Gehleitner p.7 Table 2). A large portion of propene (monomer) is manufactured concurrently with ethylene, either through production as a byproduct of ethylene or otherwise- Zimmerman sections 3.1-3.3 all mention ethylene as byproduct or coproduct of propene production, indicating likelihood of some small amount of ethylene even when “propene” is used as the sole feedstock. Thus the preponderance of evidence and applicant’s own use of the polymer as an exemplary second polypropylene indicate a small amount of ethylene, meeting the claimed amount, is present in Fina PP 3270.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over US 20040170854 by Kuo et al in view of JP H09194650 by Nakajima et al as evidenced by US 6512019 by Agarwal et al and US 5504048 by Shamshoum et al.
Kuo is described above.
Regarding claim 24, Kuo describes for example ExxonMobil’s PP4792E1 as his second (instant first) polypropylene (paragraph 15), which according to Agarwal is a “conventional Ziegler-Natta catalyst” (Agarwal col 10 ln 43-48). Shamshoum, who describes “conventional…Ziegler-Natta catalyst” for polypropylene (abstract) measures the number average molecular weight of inventive and comparative examples of polymerized polypropylene, and all of these fall within the claimed range (Shamshoum col 5 Table 1 Mn). Thus the preponderance of evidence shows that PP4792E1 would have a molecular weight in the claimed range because all of Shamshoum’s inventive and comparative example fall within the claimed range.
Furthermore, Kuo describes the polypropylene PP 3270 (paragraph 7), reading on the instant second polypropylene, which is equivalent to instant’s TotalEnergies 3270. TotalEnergies 3270 is exemplified in the instant specification as the instant second polypropylene (instant Table 9). Thus it is expected that Kuo’s PP 3270 also falls within the claimed range.
Response to Arguments
Applicant’s argument p.8-9 of Remarks submitted 1/29/26 has been considered and is persuasive; rejections based on Wang are withdrawn above. However new rejections are set forth based on art found searching for the newly claimed material.
Conclusion
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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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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