DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/20/2025.
The objections and rejections not addressed below are deemed withdrawn.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, 2, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al, WO2019/030139 (of record), in view of Schininger et al, EP1357144 (of record).
Huang discloses a composition used in the production of molded articles such as automotive parts (page 12: lines 11-27), corresponding to the claimed molded body (for claim 9), wherein said composition comprises a propylene-based polymer, a first ethylene/olefin elastomer, a second ethylene/olefin elastomer, and an inorganic filler (abstract). The prior art composition may further comprise additives such as a lubricant (for claim 2) and a nucleating agent (for claim 7) (page 9: line 34 to page 10: line 2).
Regarding the claimed heterophasic propylene polymer material (A): The prior art propylene-based polymer may be a heterophasic propylene copolymer, and has a melt flow rate (230 °C, 2.16) in the range of 30 to 150 dg/min (i.e., 30 to 150 g/10 min) (page 2: lines 5-10), overlapping the claimed range (for claim 1). The prior art propylene-based polymer therefore corresponds to claimed heterophasic propylene polymer material (A) (for claim 1).
Huang teaches that
the combination of the first and second ethylene/olefin elastomers may be present in amount in the range of 2 to 30 wt%;
the amount of filler may be 0.1 to 30 wt%; and
the sum of the amounts of propylene polymer, ethylene/olefin elastomers, and fillers may be as low as 90 wt% relative to the overall composition (page 1: lines 19-32; page 10: lines 15-17).
Based on these numbers, it is calculated that the amount of propylene-based polymer in the prior art composition may be in the range of to 30 to 97.9 wt%, overlapping the claimed range (for claim 1).
Regarding the claimed ethylene/olefin copolymer (B-1): The prior art first ethylene olefin elastomer is a copolymer of ethylene and an olefin, and is characterized by a melt flow rate (190 °C, 2.16) of 5 to 50 dg/min (i.e., 5 to 50 g/10 min) (page 6: lines 29-31; page 7: lines 32-33); note that this range is fully encompassed by the claimed range of 2 to 100 g/10 min. The prior art first ethylene/olefin elastomer therefore corresponds to claimed copolymer (B-1) (for claim 1).
Huang teaches that the combination of first and second elastomers comprises 10 to 90 wt% of the second ethylene/olefin elastomer; it is therefore deduced that said combination comprises 10 to 90 wt% of the first ethylene/olefin elastomer. Furthermore, the prior art composition comprises 2 to 30 wt% of the combination of the first and second ethylene/olefin elastomers (page 9: lines 11-18). Based on these ranges, it is calculated that the overall composition of Huang may comprise 0.2 to 27 wt% of the first ethylene/olefin elastomer, overlapping the claimed range (for claim 1).
Regarding the claimed ethylene/olefin copolymer (B-2): The prior art second ethylene olefin elastomer is a copolymer of ethylene and an olefin, and is characterized by a melt flow rate (190 °C, 2.16) of 0.55 to 4 dg/min (i.e., 0.55 to 4 g/10 min) (page 6: lines 29-31; page 8: lines 1-2), overlapping the claimed range (for claim 1). The prior art second ethylene/olefin elastomer therefore corresponds to claimed copolymer (B-2) (for claim 1).
As noted earlier in this Action, Huang teaches that the prior art composition comprises 2 to 30 wt% of the combination of the first and second ethylene/olefin elastomers, which in turn comprises 10 to 90 wt% of the second ethylene/olefin elastomer. Based on these ranges, it is calculated that the overall composition of Huang may comprise 0.2 to 27 wt% of the second ethylene/olefin elastomer, overlapping the claimed range (for claim 1).
Regarding the claimed glass fiber (C): Huang teaches the use of glass fibers as the prior art inorganic filler, corresponding to claimed glass fiber (C) (for claim 1) (page 9: lines 20-22). Said inorganic filler is present in an amount in the range of 0.1 to 30 wt% (page 9: lines 29-30), overlapping the claimed range (for claim 1).
Regarding the amount of nucleating agent: As noted above, the prior art composition may comprise additives such as a nucleating agent. Huang teaches that the amount of such additives is in the range of 0 to 10 wt% (page 10: lines 5-6), overlapping the claimed range (for claim 8).
Huang is silent regarding the addition of 0.1 to 5 wt% of an acid-modified polyolefin.
Schininger discloses a glass fiber-reinforced polypropylene composition which is used in the production of automotive parts (abstract). As taught by Schininger, it was known in the art to add 0.5 to 5 wt% (for claim 1) of maleic anhydride graft propylene (co)polymer, corresponding to the claimed acid modified polyolefin (D) (for claim 1), to such compositions to act as a compatibilizer to enhance the miscibility and dispersibility of the glass fibers within the nonpolar polymer matrix (¶0018). Schininger exemplifies the use of an acid-modified polymer having a melt flow rate of 35 g/10 min (for claim 10) as said compatibilizer (¶0034).
Huang and Schininger both disclose glass fiber-reinforce propylene compositions which can be used in the production of automotive parts. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Huang by adding 0.5 to 5 wt% of a maleic anhydride-grafted propylene polymer to act as a compatibilizer, with the reasonable expectation that it would enhance the miscibility and dispersibility of the glass fibers within the polymer composition (for claim 1).
Regarding the sum of the amounts of claimed components: 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising the claimed amounts of each component in view of the combined teachings of Huang and Schininger (for claim 1).
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Huang et al, WO2019/030139, in view of Schininger et al, EP1357144, as applied to claims 1, 2, and 7-9 above, and further in view of Takechi et al, JP2018172467.
A machine translation of Takechi was used to prepare this rejection
As discussed earlier in this Action, the combination of Huang and Schininger renders obvious a composition used in the production of molded articles such as automotive parts, wherein said composition comprises a heterophasic propylene-based polymer, corresponding to claimed component (A); a first ethylene/olefin elastomer, corresponding to claimed component (B-1); a second ethylene/olefin elastomer, corresponding to claimed component (B-2); glass fibers, corresponding to claimed component (C); and a maleic anhydride-grafted propylene (co)polymer, corresponding to claimed component (D).
Huang further teaches that the prior art composition may further comprise 0 to 10 wt%, overlapping the claimed range (for claim 4) of an additive such as a lubricant (page 9: line 34 to page 10: line 2; page 10: lines 5-6).
Huang and Schininger are silent regarding the use of a fatty acid amide as a lubricant.
Takechi discloses a composition comprising a propylene resin, an ethylene/olefin copolymer, glass fibers, acid modified polypropylene, and lubricant which is used in the production of automobile parts (abstract, ¶0035, 0043-0044). As taught by Takechi, fatty acid amides (for claim 3) were known in the art as suitable lubricants for such compositions (¶0042).
It has been held 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).
Huang and Takechi both disclose propylene-based compositions used in the production of automotive parts. As taught by Takechi, fatty acid amides were known in the art to be suitable for use as a lubricant in such compositions. Given that Huang generally teaches that the composition of WO2019/030139 may comprise a lubricant, 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 Huang by using a fatty acid amide as the lubricant, with the reasonable expectation of obtaining a final composition having reduced friction and suitable for use in the production of automotive parts.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Huang et al, WO2019/030139, in view of Schininger et al, EP1357144, as applied to claims 1, 2, and 7-9 above, and further in view of Kida, EP3395882.
As discussed earlier in this Action, the combination of Huang and Schininger renders obvious a composition used in the production of molded articles such as automotive parts, wherein said composition comprises a heterophasic propylene-based polymer, corresponding to claimed component (A); a first ethylene/olefin elastomer, corresponding to claimed component (B-1); a second ethylene/olefin elastomer, corresponding to claimed component (B-2); glass fibers, corresponding to claimed component (C); and a maleic anhydride-grafted propylene (co)polymer, corresponding to claimed component (D).
Huang further teaches that the prior art composition may further comprise 0 to 10 wt%, overlapping the claimed range (for claim 6) of an additive such as a lubricant (page 9: line 34 to page 10: line 2; page 10: lines 5-6).
Huang and Schininger are silent regarding the use of a silicone lubricant.
Kida discloses a composition used in the production of automobile parts (¶0110), wherein said composition comprises a heterophasic propylene copolymer and ethylene/olefin copolymers (¶0007, 0047-0049). Kida teaches that silicone oil (for claim 5) was known in the art as a lubricant for use in such compositions (¶0099).
Huang and Kida both disclose heterophasic propylene-based compositions used in the production of automotive parts. As taught by Kida, silicone oil was known in the art to be suitable for use as a lubricant in such compositions. Given that Huang generally teaches that the composition of WO2019/030139 may comprise a lubricant, 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 Huang by using a silicone oil as the lubricant, with the reasonable expectation of obtaining a final composition having reduced friction and suitable for use in the production of automotive parts; see Sinclair & Carroll Co. v. Interchemical Corp. cited earlier in this Action.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not render obvious a composition comprising the claimed amounts of each component, as the composition of Huang comprises 2 to 30 wt% of the combination of first and second elastomers whereas the claimed invention comprises a minimum of 32 wt% of the combination of copolymers (B-1) and (B-2). Applicant further argues that Huang’s examples provide for, at most, 15 wt% of the combination of first and second elastomer and that it therefore would not have been obvious to one of ordinary skill in the art to increase the amount of elastomers.
It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). Contrary to applicant’s arguments, Huang’s disclosure of examples wherein the total content of the first and second elastomer is 15 wt% does not teach away from the prior art’s broader disclosure that the combination of first and second elastomers may be 30 wt%. Applicant’s argument that there would be no motivation to increase the amount of elastomer to twice its original amount therefore is not persuasive as it is based solely on the examples and does not address the broad range explicitly taught by the prior art.
Furthermore, modification of the composition of Huang by adding 0.5 to 5 wt% acid-modified polyolefin would not necessarily reduce the relative amount of elastomers in the overall composition as alleged by applicant. As discussed earlier in this Action, the composition of Huang can comprise 30 to 97.9 wt% propylene-based polymer, 2 to 30 wt% total of first and second elastomers, and 0.1 to 30 wt% glass fiber. One of ordinary skill in the art will recognize that simply reducing the amount of propylene-based polymer and/or glass fiber used in the composition by an amount equal to the amount of acid modified polyolefin will result in a final composition wherein all components are within the required ranges and the amount of elastomers relative to the overall composition is unchanged.
As discussed earlier in this Action, the prior art renders obvious a composition comprising the same components having the same properties of melt flow rate as used to define the claimed composition. Furthermore, the prior art composition is used for the same purpose- i.er., automotive components (see specification 0117)- as the claimed invention. The sole difference between the claimed invention and the prior art composition is the requirement that the amount of copolymers (B-1) and (B-2) is at least 32 parts.
It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Note that the difference between the amount of elastomers in the prior art composition and the amount of copolymers (B-1) and (B-2) in the claimed composition is small-only 2%. Given that
this difference is so small,
the prior art composition comprises the same components having the same properties as used to define the claimed composition, and
the prior art composition is used for the same purpose as the claimed composition,
one of ordinary skill in the art would reasonably expect that the properties of the composition rendered obvious by the prior art would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765