DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/24/2026 and 3/30/2026 has been entered.
Double Patenting
The double patenting rejection is withdrawn in view of the Terminal Disclaimer filed on 4/24/2026.
Claim Rejections - 35 USC § 103
Claim(s) 1-4, 6, 10, 12, 24, 26-27, 40-44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris (US 2010/0168343) in view of Cagnani (US 2010/0121000).
Harris teaches functionalized propylene polymers (abstract) where the polymer is a propylene/ethylene interpolymer (¶ 93) having at least about 60 wt% propylene (¶ 174) which would give 0-40 wt% comonomer and would overlap the claimed range of 0.5-40 mol%. Harris teaches an example of a propylene/ethylene copolymer grafted with 0.53 wt% maleic anhydride and 3.0 mmol methylstyrene (Table 13). Given 45 g copolymer, the amount of maleic anhydride is 0.2385 g (0.53 wt%). Maleic anhydride has a molar mass of 98.06 g/mol. Thus, 0.2385 g corresponds to 0.0024 mol, or 2.43mmol. A ratio of 2.43 mmol maleic anhydride to 3 mmol methyl styrene is a ratio of 1:1.2, which falls in the range of claim 1. 3 mmol methylstyrene is about 0.35 g methylstyrene, which is 0.79 wt% of the polymer. 0.53 wt% maleic anhydride and 0.79 wt% methylstyrene is 1.32 wt% of anhydride monomer and alkenyl containing monomer, which falls in the claimed range of 0.1-5 wt%.
Harris teaches a MFR of 0.1-100 g/10min (¶178) which overlaps the range of claims 2 and Harris teaches examples having a MFR of 5-35 which overlaps the range of claim 7. Harris teaches a solid state reaction for the functionalization (¶ 211) which meets claim 4. Methylstyrene and styrene meet the limitations of claims 10-12. Harris teaches the copolymer is used an insulating a cable (¶ 1, 2, 108).
Harris does not explicitly present an example using styrene. However, Harris teaches that other coagents include styrene (¶ 59). It would have been obvious to one of ordinary skill in the art to use styrene as taught by Harris which meets the instant claims because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Additionally, in view of Harris's recognition that styrene and methylstyrene are equivalent and interchangeable as coagents (¶ 59), it would have been obvious to one of ordinary skill in the art to substitute styrene and methylstyrene 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).
Harris teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Harris suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Harris. See MPEP 2123.
Harris does not explicitly recite the claimed working temperature. However, Harris teaches a copolymer having the same structural features as claimed, notably, polypropylene with an ethylene comonomer and having grafted maleic anhydride and an alkylene comonomer. The amounts of the comonomers fall in the scope of the claimed ranges. As the claimed property is a result of the structural features of the claimed polymer, and the polymers of Harris possess the same claimed structural features, the polymers of Harris posess the same claimed properties, including working temperature. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Harris teaches an example of a propylene/ethylene copolymer grafted with 0.53 wt% maleic anhydride and 3.0 mmol methylstyrene (Table 13). This is reacted with 45 g copolymer (¶ 278) and corresponds to about 0.79 wt%. As 3 wt% MAH and 0.79 wt% methylstyrene react with the copolymer to give a graft of 0.53 MAH, the amount of grafted methylstyrene is somewhere between greater than 0 and 0.79 wt%.
This meets the range of 0.1-14 wt% of claim 1, 0.2-7.5 wt% of claim 40.
Harris teaches the amount of ethylene in a propylene/ethylene copolymer is preferably not in excess of about 20 wt% and preferably at least about 5 wt% (¶174). When converted to a mol%, a range of 5-20 wt% ethylene corresponds to about 1.5-27 mol% ethylene which meets the range of claim 40 and overlaps the range in claim 41-42 and ethylene meets claim 43.
Methylstyrene and styrene meet the structural limitations of claimed formula 1 and claimed formula 8.
Harris teaches the amount of ethylene in a propylene/ethylene copolymer is preferably not in excess of about 20 wt% and preferably at least about 5 wt% (¶174). When converted to a mol%, a range of 5-20 wt% ethylene corresponds to about 1.5-27 mol% ethylene which meets the range of claim 41 and overlaps the range of claim 42.
Harris teaches a MFR of 0.1-100 g/10min (¶178) which overlaps the range of claim 44 and Harris teaches examples having a MFR of 5-35 which overlaps the range of claim 44. Harris teaches a melt temperature of the propylene based polymer of above 90˚C (¶232) which overlaps the range of claim 43.
Styrene meets the structural limitations of claims 49-51.
Harris does not explicitly recite the polypropylene copolymer has a Tm of 120-180˚C or a xylene solubles content of 2-80 wt%.
However, Cagnani teaches polypropylene copolymers having a xylene soluble content of higher than 20% (abstract) and gives examples having a melting temperature of 138-141˚C (Table 3). It would have been obvious to use the polypropylene copolymers of Cagnani because they provide films and articles having good flexibility and excellent impact properties at low temperatures (¶ 33).
Alternatively, the prior art contains a composition which differs from the claims by the substitution of some component with other components. Specifically, the claims contain a propylene copolymer having properties not recited in Harris. The substituted components and their functions were known in the art. Notably, Cagnani teaches the propylene copolymer having the claimed properties including Tm and xylene solubles content. One of ordinary skill could have substituted one known element for another, and the results would have been predictable. Notably, the procedure of Harris is performed on propylene/ethylene copolymers (¶ 92) and gives a grafted copolymer (abstract). Thus, using the copolymers of Cagnani are expected to give grafted copolymers.
Claim(s) 1, 3-4, 6, 10, 12, 40-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujino (US 6,426,388) in view of Cagnani (US 2010/0121000).
Fujino teaches a modified ethylene propylene copolymer formed by grafting maleic anhydride and styrene to the copolymer (abstract). Fujino teaches an example where a propylene ethylene copolymer having a propylene content of 95% (and thus an ethylene content of 5%) is grafted with maleic anhydride and styrene to give a reaction product with a grafting rate of 0.8% (col. 4, ln. 66-col. 5, ln. 13). Fujino teaches the grafting rate of styrene is 0.1-7.5 wt% (col. 3, ln. 36-62) which overlaps the range of claims 1 and 45.
Fujino teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Fujino suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Fujino. See MPEP 2123.
Fujino does not explicitly recite the polypropylene copolymer has a Tm of 120-180˚C or a xylene solubles content of 2-80 wt%.
However, Cagnani teaches polypropylene copolymers having a xylene soluble content of higher than 20% (abstract) and gives examples having a melting temperature of 138-141˚C (Table 3). It would have been obvious to use the polypropylene copolymers of Cagnani because they provide films and articles having good flexibility and excellent impact properties at low temperatures (¶ 33).
Alternatively, the prior art contains a composition which differs from the claims by the substitution of some component with other components. Specifically, the claims contain a propylene copolymer having properties not recited in Fujino. The substituted components and their functions were known in the art. Notably, Cagnani teaches the propylene copolymer having the claimed properties including Tm and xylene solubles content. One of ordinary skill could have substituted one known element for another, and the results would have been predictable. Notably, the procedure of Fujino is performed on propylene/ethylene copolymers (¶ 92) and gives a grafted copolymer (abstract). Thus, using the copolymers of Cagnani are expected to give grafted copolymers.
Claim 4 is recited in the product-by-process format by use of the language, “A stabilized fluoropolymer obtained via polymerization…” Case law holds that:
Even 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).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Fujino does not explicitly recite the claimed working temperature. However, Fujino teaches a copolymer having the same structural features as claimed, notably, polypropylene with an ethylene comonomer and having grafted styrene. The amounts of the comonomers fall in the scope of the claimed ranges. As the claimed property is a result of the structural features of the claimed polymer, and the polymers of Fujino possess the same claimed structural features, the polymers of Fujino possess the same claimed properties, including working temperature. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 1-4, 6, 10, 12, 26-27, 40-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki (US 6,051,617) in view of Cagnani (US 2010/0121000).
Sasaki teaches a polypropylene resin to which a vinyl comonomer is grafted where the ratio of polypropylene resin to the grafted polymer of the vinyl comonomer is 97:3 to 65:35 (abstract) which corresponds to a range of 3-35 wt%. Sasaki teaches an example where an ethylene propylene copolymer having an ethylene content of 4.5% is grafted with styrene to give an amount of polystyrene of 9.8 wt% (col. 7-9; Table 1). Sasaki teaches examples where the copolymer has a melting point of 140˚C and MFR of 9 g/10 min (col. 6, ln. 30-35) and 134˚C and 138˚C (col. 7, ln. 60-68) which fall in the claimed range. Sasaki teaches the The amount of ethylene meets the comonomer amount limitation in claim 1. The amount of styrene grafted to the copolymer (3-35wt%) overlaps the range in claim 1 and claim 45.
Sasaki teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Sasaki suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Sasaki. See MPEP 2123.
Claim 4 is recited in the product-by-process format by use of the language, “A stabilized fluoropolymer obtained via polymerization…” Case law holds that:
Even 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).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Sasaki does not explicitly recite the polypropylene copolymer has a Tm of 120-180˚C or a xylene solubles content of 2-80 wt%.
However, Cagnani teaches polypropylene copolymers having a xylene soluble content of higher than 20% (abstract) and gives examples having a melting temperature of 138-141˚C (Table 3). It would have been obvious to use the polypropylene copolymers of Cagnani because they provide films and articles having good flexibility and excellent impact properties at low temperatures (¶ 33).
Alternatively, the prior art contains a composition which differs from the claims by the substitution of some component with other components. Specifically, the claims contain a propylene copolymer having properties not recited in Sasaki. The substituted components and their functions were known in the art. Notably, Cagnani teaches the propylene copolymer having the claimed properties including Tm and xylene solubles content. One of ordinary skill could have substituted one known element for another, and the results would have been predictable. Notably, the procedure of Sasaki is performed on propylene/ethylene copolymers (¶ 92) and gives a grafted copolymer (abstract). Thus, using the copolymers of Cagnani are expected to give grafted copolymers.
Sasaki does not explicitly recite the claimed working temperature. However, Sasaki teaches a copolymer having the same structural features as claimed, notably, polypropylene with an ethylene comonomer and having grafted styrene. The amounts of the comonomers fall in the scope of the claimed ranges. As the claimed property is a result of the structural features of the claimed polymer, and the polymers of Sasaki possess the same claimed structural features, the polymers of Sasaki possess the same claimed properties, including working temperature. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Sasaki does not recite the material is for an insulating material for a cable. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not persuasive.
Applicant argues that Harris does not teach the claimed Tm or xylene solubles content and that the examples of Harris have a Tm outside the claimed range.
This is not persuasive.
Harris is not limited to the exemplified propylene copolymers. A preferred embodiment is not controlling, rather, all disclosures “including unpreferred embodiments” must be considered. See MPEP 2123 and In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123 and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
The properties recited in the claim regarding the propylene copolymer are known in the art. Specifically, Cagnani, discussed above, teaches these features.
Applicant argues that the instant specification states that a polypropylene with high Tm has the advantage of being able to withstand higher working temperatures and that since Harris does not teach Tm or working temperature, the Office has failed to provide motivation. This is not persuasive because the position with respect to the claimed properties presented by the Office is one of inherency, no one of obviousness. Harris teaches a copolymer having the same structural features as claimed, notably, polypropylene with an ethylene comonomer and having grafted maleic anhydride and an alkylene comonomer. The amounts of the comonomers fall in the scope of the claimed ranges. As the claimed property is a result of the structural features of the claimed polymer, and the polymers of Harris possess the same claimed structural features, the polymers of Harris posseses the same claimed properties, including working temperature. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
No data has been provided that shows how the Tm of a base propylene copolymer is related to the working temperature and whether the grafting results in a change to the working temperature.
Applicant argues that the lower melting temperatures of the Versify and Engage polymers of Harris teach away from the claimed Tm. This is not persuasive because these amount to a preferred embodiment. A preferred embodiment is not controlling, rather, all disclosures “including unpreferred embodiments” must be considered. See MPEP 2123 and In re Lamberti 192 USPQ 278, 280 (CCPA 1976) citing In re Mills 176 USPQ 196 (CCPA 1972). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123 and In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, to provide a teaching away, the prior art has to criticize, discredit, or otherwise discourage the solution claimed. See MPEP 2145(X)(D) and In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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