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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wasylenko et al. (CA 2989208) in view of Santamaria et al. (US 2020/0017657).
Regarding claims 1 and 11, Wasylenko et al. disclose a process for stabilizing a thermoplastic polyolefin product during melt processing wherein said thermoplastic polyolefin product is prepared with at least two catalyst systems and contains catalyst residues comprising:
a) titanium,
b) aluminum from at least one alumoxane, and
c) magnesium from magnesium chloride;
said process comprising the step of incorporating into said thermoplastic polyolefin a stabilizer package comprising:
(i) a first phosphite defined by the formula (I):
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wherein R1, R2, R4 and R5 each independently denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms, and R3 denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms; X denotes a single bond, a sulfur atom or a --CHR6 group (R6 denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms or a cycloalkyl group having 5 to 8 carbon atoms); A denotes an alkylene group having 1 to 8 carbon atoms or a *--COR7 group (R7 denotes a single bond or an alkylene group having 1 to 8 carbon atoms, and * denotes a bonding hand on the side of oxygen); and one of Y and Z denotes a hydroxyl group, an alkoxy group having 1 to 8 carbon atoms or an aralkyloxy group having 7 to 12 carbon atoms, and the other one of Y and Z denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms);
(ii) a second phosphite that is different from said first phosphite; and
(iii) a hindered phenolic antioxidant; and
subjecting said thermoplastic polyolefin product to sufficient temperature to melt said polyolefin (see page 1, line 15-page 2, line 15). The polyolefin includes polyethylene (see Abstract and page 2, line 17). The stabilizer package can include additives (see page 27, line 10-12).
Wasylenko et al. do not disclose an optical brightener as claimed.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener as an additive in the stabilizer package of Wasylenko et al. in order to produce polyethylene with reduced yellowing.
Regarding claim 2, Wasylenko et al. disclose that the stabilizer package further comprises a acid neutralizer (see page 23, line 13).
Regarding claim 3, Wasylenko et al. disclose the catalyst residues include 1-15 ppm titanium, 10-200 ppm aluminum, and 10-250 ppm magnesium (see page 31, lines 18-20).
Regarding claim 4, Wasylenko et al. disclose the first phosphite includes 6-[3-(3-tert-butyl-4- hydroxy-5-methylphenyl)propoxy]-2,4,8,10-tetra-tert-butyldibenzo[d,f][1,3,2] dioxaphospepin (CAS Reg. No. 203255-81-6) (see page 10, lines 22-25).
Regarding claim 5, Wasylenko et al. disclose the second phosphite includes 2,4 di-tertiary butyl phenyl phosphite (see page 11, lines 4-8).
Regarding claim 6, Wasylenko et al. disclose the first phosphite, second phosphite, and hindered phenol are each used in amounts of 100-2000 ppm based on the weight of the polyethylene (see page 11, lines 13-14 and page 12, lines 1-2).
Regarding claim 7, Wasylenko et al. disclose the polyethylene is a copolymer of ethylene and at least one olefin including butene, pentene, hexene, and octene (see claim 7).
Regarding claim 8, Wasylenko et al. disclose the polyethylene has a density of from 0.880 to 0.960 g/cc and a melt index, l2, as determined by ASTM D1238 at 190°C under a load of 2.16 kg, of from 0.3 to 150 g/10 minutes (see claim 8).
Regarding claim 9, Wasylenko et al. disclose the melt processing conditions comprise a film extrusion at a temperature of from 200°C to 320°C (see claim 9).
Regarding claim 10, Wasylenko et al. disclose the stabilizer package includes hindered amine (see page 12, lines 5-9).
Claims 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wasylenko et al. (CA 2989208) in view of Santamaria et al. (US 2020/0017657).
Regarding claims 12 and 20, Wasylenko et al. disclose a process for preparing a thermoplastic polyethylene product comprising:
1) polymerizing polyethylene, optionally with one or more C3-C10 alpha olefins, under solution polymerization conditions in the presence of a first single site catalyst system comprising an organotitanium catalyst and an aluminoxane cocatalyst to form a first polyethylene solution;
2) polymerizing polyethylene, optionally with one or more C3-C10 alpha olefins, under solution polymerization conditions in the presence of a second catalyst system comprising a titanium catalyst; an organoaluminum cocatalyst and magnesium chloride to form a second polyethylene solution;
3) combining said first polyethylene solution and said second polyethylene solution to form a combined polyethylene solution;
4) recovering said thermoplastic polyethylene product from said combined polyethylene solution; and
5) adding to said thermoplastic polyethylene product a stabilizer system a stabilizer package comprising:
(i) a first phosphite defined by the formula (I):
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wherein R1, R2, R4 and R5 each independently denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms, and R3 denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms; X denotes a single bond, a sulfur atom or a --CHR6 group (R6 denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms or a cycloalkyl group having 5 to 8 carbon atoms); A denotes an alkylene group having 1 to 8 carbon atoms or a *--COR7 group (R7 denotes a single bond or an alkylene group having 1 to 8 carbon atoms, and * denotes a bonding hand on the side of oxygen); and one of Y and Z denotes a hydroxyl group, an alkoxy group having 1 to 8 carbon atoms or an aralkyloxy group having 7 to 12 carbon atoms, and the other one of Y and Z denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms);
(ii) a second phosphite that is different from said first phosphite; and
(iii) a hindered phenolic antioxidant (see page 2, line 16-page 4, line 7).
Wasylenko et al. do not disclose an optical brightener as claimed.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener as an additive in the stabilizer package of Wasylenko et al. in order to produce polyethylene product with reduced yellowing.
Regarding claim 13, Wasylenko et al. disclose that the stabilizer package further comprises a acid neutralizer (see page 23, line 13).
Regarding claim 14, Wasylenko et al. disclose the catalyst residues include 1-15 ppm titanium, 10-200 ppm aluminum, and 10-250 ppm magnesium (see page 31, lines 18-20).
Regarding claim 15, Wasylenko et al. disclose the first phosphite includes 6-[3-(3-tert-butyl-4- hydroxy-5-methylphenyl)propoxy]-2,4,8,10-tetra-tert-butyldibenzo[d,f][1,3,2] dioxaphospepin (CAS Reg. No. 203255-81-6) (see page 10, lines 22-25).
Regarding claim 16, Wasylenko et al. disclose the second phosphite includes 2,4 di-tertiary butyl phenyl phosphite (see page 11, lines 4-8).
Regarding claim 17 Wasylenko et al. disclose the first phosphite, second phosphite, and hindered phenol are each used in amounts of 100-2000 ppm based on the weight of the polyethylene (see page 11, lines 13-14 and page 12, lines 1-2).
Regarding claim 18, Wasylenko et al. disclose the polyethylene is a copolymer of ethylene and at least one olefin including butene, pentene, hexene, and octene (see claim 17).
Regarding claim 19, Wasylenko et al. disclose the polyethylene has a density of from 0.880 to 0.960 g/cc and a melt index, l2, as determined by ASTM D1238 at 190°C under a load of 2.16 kg, of from 0.3 to 150 g/10 minutes (see claim 18).
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wasylenko et al. ‘425 (US 2019/0194425) in view of Santamaria et al. (US 2020/0017657).
Regarding claims 1 and 11, Wasylenko et al.’425 disclose a process for stabilizing a thermoplastic polyolefin product during melt processing wherein said thermoplastic polyolefin product is prepared with at least two catalyst systems and contains catalyst residues comprising:
a) titanium,
b) aluminum from at least one alumoxane, and
c) magnesium from magnesium chloride; said process comprising the step of incorporating into said thermoplastic polyolefin a stabilizer package comprising:
(i) a first phosphite defined by the formula (I):
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wherein R1, R2, R4 and R5 each independently denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms, and R3 denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms; X denotes a single bond, a sulfur atom or a --CHR6 group (R6 denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms or a cycloalkyl group having 5 to 8 carbon atoms); A denotes an alkylene group having 1 to 8 carbon atoms or a *--COR7 group (R7 denotes a single bond or an alkylene group having 1 to 8 carbon atoms, and * denotes a bonding hand on the side of oxygen); and one of Y and Z denotes a hydroxyl group, an alkoxy group having 1 to 8 carbon atoms or an aralkyloxy group having 7 to 12 carbon atoms, and the other one of Y and Z denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms);
(ii) a second phosphite that is different from said first phosphite; and
(iii) a hindered phenolic antioxidant; subjecting said thermoplastic polyolefin product to sufficient temperature to melt said polyolefin (see paragraphs 0003-0010). The polyolefin includes polyethylene (see Abstract and paragraph 0011). The stabilizer package can include additives (see paragraph 0086).
Wasylenko et al.’425 do not disclose an optical brightener as claimed.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazoles such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener as an additive in the stabilizer package of Wasylenko et al.’425 in order to produce polyethylene product with reduced yellowing.
Regarding claim 2, Wasylenko et al.’425 disclose that the stabilizer package further comprises a acid neutralizer (see paragraph 0078).
Regarding claim 3 Wasylenko et al.’425 disclose the catalyst residues include 1-15 ppm titanium, 10-200 ppm aluminum, and 10-250 ppm magnesium (see paragraph 0098).
Regarding claim 4, Wasylenko et al.’425 disclose the first phosphite includes 6-[3-(3-tert-butyl-4- hydroxy-5-methylphenyl)propoxy]-2,4,8,10-tetra-tert-butyldibenzo[d,f][1,3,2] dioxaphospepin (CAS Reg. No. 203255-81-6) (see paragraph 0044).
Regarding claim 5 Wasylenko et al.’425 disclose the second phosphite includes 2,4 di-tertiary butyl phenyl phosphite (see paragraphs 0045-0046).
Regarding claim 6, Wasylenko et al.’425 disclose the first phosphite, second phosphite, and hindered phenol are each used in amounts of 100-2000 ppm based on the weight of the polyethylene (see paragraphs 0047 and 0050).
Regarding claim 7, Wasylenko et al.’425 disclose the polyethylene is a copolymer of ethylene and at least one olefin including butene, pentene, hexene, and octene (see claim 7).
Regarding claim 8, Wasylenko et al.’425 disclose the polyethylene has a density of from 0.880 to 0.960 g/cc and a melt index, l2, as determined by ASTM D1238 at 190°C under a load of 2.16 kg, of from 0.3 to 150 g/10 minutes (see claim 8).
Regarding claim 9, Wasylenko et al.’425 disclose the melt processing conditions comprise a film extrusion at a temperature of from 200°C to 320°C (see claim 9).
Regarding claim 10, Wasylenko et al.’425 disclose the stabilizer package includes hindered amine (see paragraphs 0051-0052).
Claims 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wasylenko et al. ‘425 (US 2019/0194425) in view of Santamaria et al. (US 2020/0017657).
Regarding claims 12 and 20, Wasylenko et al.’425 disclose a process for preparing a thermoplastic polyethylene product comprising:
1) polymerizing polyethylene, optionally with one or more C3-C10 alpha olefins, under solution polymerization conditions in the presence of a first single site catalyst system comprising an organotitanium catalyst and an aluminoxane cocatalyst to form a first polyethylene solution;
2) polymerizing polyethylene, optionally with one or more C3-C10 alpha olefins, under solution polymerization conditions in the presence of a second catalyst system comprising a titanium catalyst; an organoaluminum cocatalyst and magnesium chloride to form a second polyethylene solution;
3) combining said first polyethylene solution and said second polyethylene solution to form a combined polyethylene solution;
4) recovering said thermoplastic polyethylene product from said combined polyethylene solution; and
5) adding to said thermoplastic polyethylene product a stabilizer system a stabilizer package comprising:
(i) a first phosphite defined by the formula (I):
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wherein R1, R2, R4 and R5 each independently denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms, and R3 denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms; X denotes a single bond, a sulfur atom or a --CHR6 group (R6 denotes a hydrogen atom, an alkyl group having 1 to 8 carbon atoms or a cycloalkyl group having 5 to 8 carbon atoms); A denotes an alkylene group having 1 to 8 carbon atoms or a *--COR7 group (R7 denotes a single bond or an alkylene group having 1 to 8 carbon atoms, and * denotes a bonding hand on the side of oxygen); and one of Y and Z denotes a hydroxyl group, an alkoxy group having 1 to 8 carbon atoms or an aralkyloxy group having 7 to 12 carbon atoms, and the other one of Y and Z denotes a hydrogen atom or an alkyl group having 1 to 8 carbon atoms);
(ii) a second phosphite that is different from said first phosphite; and
(iii) a hindered phenolic antioxidant (see paragraphs 0011-0020).
Wasylenko et al.’425 do not disclose an optical brightener as claimed.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazoles such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener as an additive in the stabilizer package of Wasylenko et al.’425 in order to produce polyethylene product with reduced yellowing.
Regarding claim 13, Wasylenko et al.’425 disclose that the stabilizer package further comprises a acid neutralizer (see paragraph 0078).
Regarding claim 14, Wasylenko et al.’425 disclose the catalyst residues include 1-15 ppm titanium, 10-200 ppm aluminum, and 10-250 ppm magnesium (see paragraph 0098).
Regarding claim 15, Wasylenko et al.’425 disclose the first phosphite includes 6-[3-(3-tert-butyl-4- hydroxy-5-methylphenyl)propoxy]-2,4,8,10-tetra-tert-butyldibenzo[d,f][1,3,2] dioxaphospepin (CAS Reg. No. 203255-81-6) (see paragraph 0044).
Regarding claim 16, Wasylenko et al.’425 disclose the second phosphite includes 2,4 di-tertiary butyl phenyl phosphite (see paragraphs 0045-0046).
Regarding claim 17, Wasylenko et al.’425 disclose the first phosphite, second phosphite, and hindered phenol are each used in amounts of 100-2000 ppm based on the weight of the polyethylene (see paragraphs 0047 and 0050).
Regarding claim 18, Wasylenko et al.’425 disclose the polyethylene is a copolymer of ethylene and at least one olefin including butene, pentene, hexene, and octene (see claim 17).
Regarding claim 19, Wasylenko et al.’425 disclose the polyethylene has a density of from 0.880 to 0.960 g/cc and a melt index, l2, as determined by ASTM D1238 at 190°C under a load of 2.16 kg, of from 0.3 to 150 g/10 minutes (see claim 18).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,563,045 in view of Santamaria et al. (US 2020/0017657).
US ‘045 discloses process for stabilizing a polyethylene product identical to that presently claimed with the exception that there is no disclosure that the stabilizer package includes an optical brightener that is a bis-benzoxazole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazoles such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener in the stabilizer package of US ‘045 in order to produce polyethylene product with reduced yellowing.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-19 of U.S. Patent No. 10,563,045 in view of Santamaria et al. (US 2020/0017657).
US ‘045 discloses process for preparing a thermoplastic polyethylene product identical to that presently claimed with the exception that there is no disclosure that the stabilizer package includes an optical brightener that is a bis-benzoxazole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene.
Santamaria et al. disclose polyethylene (see paragraph 0038) comprising optical brightener (see paragraph 0015). The optical brightener includes bis-benzoxazoles such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene (see paragraph 0047). The optical brightener reduces the appearance of yellowing (see paragraphs 0045 and 0051).
In light of the motivation for using 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener disclosed by Santamaria et al. as described above, it would have been obvious to one of ordinary skill in the art to include the 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene optical brightener in the stabilizer package of US ‘045 in order to produce polyethylene product with reduced yellowing.
Response to Arguments
Applicant’s amendment overcomes the 35 USC 112(b), 35 USC 102, and statutory-type double patenting rejections. In light of applicant’s amendments, new grounds of rejection are set forth above.
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant argues that with respect to Wasylenko ‘208 in view of Santamaria that Santamaria is not combinable with Wasylenko ‘208. Specifically, applicant argues that the additive composition of Santamaria comprises 2 sorbitol optical brighteners neither of which is bis-benzoxazole, that the additive composition also requires nucleating and clarifying agents in addition to the sorbitols, that Santamaria only notes that “any suitable optical brightener may be used”, and Santamaria merely mentions polyethylene as a member of the polyolefin family and fails to suggest a thermoplastic polyethylene prepared with at least two catalysts as presently claimed.
However, while the additive composition of Santamaria et al., which is added to a polyolefin, includes two sorbitols, the sorbitols are not themselves optical brighteners but rather are nucleating and clarifying agents (see paragraph 0014) used in addition to one or more optical brighteners (see paragraphs 0034, 0045, and 0047). Santamaria et al. is only used for its teaching of optical brightener. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). The motivation for using the optical brightener disclosed by Santamaria et al. is separate from the use of the sorbitols. Specifically, paragraph 0012 of Santamaria et al. disclose that the synergy imparted by the sorbitols is not impacted by the presence of one or more optical brighteners, which can further enhance desirable optical properties in the resulting nucleated and clarified polyolefin material, which is surprisingly obtainable at low processing temperature. Therefore, there is motivation to include (only) the optical brightener from Santamaria et al. into Wasylenko et al. ‘208. Further, even if it was necessary to teach the two sorbitols and optical brightener from Santamaria et al. into Wasylenko et al. ‘208, nothing in the present claims would exclude such combination in light of the open language of the present claims, i.e. stabilizer package “comprising”.
While Santamaria et al. notes that “any suitable optical brightener may be used”, this optical brightener is separate from, and in addition to, the two sorbitols or nucleating and clarifying agents. Attention is drawn to Example 14 of Santamaria et al. which discloses adding a bis-benzoxazole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene to the combination of sorbitols with the composition not containing the optical brightener having the least appealing appearance, i.e. most yellowing (see Table 14).
Additionally, while Santamaria et al. disclose that additional clarifying and nucleating agents may be present in the polyolefin resin composition (see paragraph 0022), they are not required, i.e. “may be”.
Although Santamaria et al. disclose other types of thermoplastic polyolefins in addition to thermoplastic polyethylene, the fact remains that Santamaria et al. explicitly disclose the use of thermoplastic polyethylene as presently claimed. Further, while Santamaria et al. do not disclose thermoplastic polyethylene prepared with at least two catalysts as presently claimed, note that while Santamaria et al. do not disclose all the features of the present claimed invention, Santamaria et al. is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues the optical brightener of Santamaria is only used for a composition with combined sorbitol materials.
However, Santamaria et al. is only used for its teaching of optical brightener. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). The motivation for using the optical brightener disclosed by Santamaria et al. is separate from the use of the sorbitols. Specifically, paragraph 0012 of Santamaria et al. disclose that the synergy imparted by the sorbitols is not impacted by the presence of one or more optical brighteners, which can further enhance desirable optical properties in the resulting nucleated and clarified polyolefin material, which is surprisingly obtainable at low processing temperature. Attention is drawn to Example 14 of Santamaria et al. which discloses adding a bis-benzoxaole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene to the combination of sorbitols with the composition not containing the optical brightener having the least appealing appearance (see Table 14). Therefore, there is motivation to include (only) the optical brightener from Santamaria et al. into Wasylenko et al. ‘208. Further, even if it was necessary to teach the two sorbitols and optical brightener from Santamaria et al. into Wasylenko et al. ‘208, nothing in the present claims would exclude such combination in light of the open language of the present claims, i.e. stabilizer package “comprising”.
Applicant argues that Wasylenko ‘208 does not teach or suggest an optical brightener is required much less the claimed optical brightener and that a combination of Wasylenko ‘208 with Santamaria would result in a combination of the two sorbitols and the optical brightener which is neither taught or suggested by Wasylenko ‘208.
It is agreed that Wasylenko et al. ‘208 does not include an optical brightener which is why it is used in combination with Santamaria et al. Wasylenko et al. ‘208 do disclose that additional additives can be included (see page 27, lines 10-12). As stated above, Santamaria et al. is only used for its teaching of the optical brightener. Given that both Wasylenko et al. ‘208 and Santamaria et al. are drawn to packaging films (Wasylenko et al. ‘208, see page 26, lines 1-18; Santamaria et al., see paragraph 0001) made from polyethylene, given that Wasylenko et al. ‘208 disclose the use of additional additives, and given that Santamaria et al disclose the use of optical brightener to reduce yellowing, the combination is proper.
Applicant argues that the suggestion of cherry picking a single optical brightener, without the full combination of materials that provide the surprising or unexpected result in Santamaria can only be based on impermissible hindsight which is improper.
The motivation for using the optical brightener disclosed by Santamaria et al. is separate from the use of the sorbitols. Specifically, paragraph 0012 of Santamaria et al. disclose that the synergy imparted by the sorbitols is not impacted by the presence of one or more optical brighteners, which can further enhance desirable optical properties in the resulting nucleated and clarified polyolefin material, which is surprisingly obtainable at low processing temperature. Attention is drawn to Example 14 of Santamaria et al. which discloses adding a bis-benzoxaole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene to the combination of sorbitols with the composition not containing the optical brightener having the least appealing appearance (see Table 14). Therefore, there is motivation to include (only) the optical brightener from Santamaria et al. into Wasylenko et al. ‘208 and the combination is not based on improper hindsight but rather motivation to combine found in of Santamaria et al. itself. Further, even if it was necessary to teach the two sorbitols and optical brightener from Santamaria et al. into Wasylenko et al. ‘208, nothing in the present claims would exclude such combination in light of the open language of the present claims, i.e. stabilizer package “comprising”.
Applicant argues that with respect to Wasylenko ‘245 in view of Santamaria, that the disclosure of Wasylenko ‘245 is similar to that of Wasylenko ‘208 and that applicant has established that Santamaria fails to provide any teaching or suggestion to be combined with Wasylenko ‘208. Applicants argue that Santamaria is limited to the use of an optical brightener in combination with a binary blend of clarifying and nucleating agents in polyolefins and does not teach the use of an optical brightener in a stabilizing package as claimed. For the same reasons as a prima facie case of obviousness has not been established with respect to Wasylenko ‘208 in view of Santamaria, the same holds true for Wasylenko ‘245 in view of Santamaria.
However, for the same reasons as set forth above for maintaining Wasylenko et al. ‘208 in view of Santamaria et al., the rejection of Wasylenko et al. ‘245 in view of Santamaria et al. is also maintained. Specifically, Santamaria is only used for its teaching of optical brightener. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). The motivation for using the optical brightener disclosed by Santamaria et al. is separate from the use of the sorbitols. Specifically, paragraph 0012 of Santamaria et al. disclose that the synergy imparted by the sorbitols is not impacted by the presence of one or more optical brighteners, which can further enhance desirable optical properties in the resulting nucleated and clarified polyolefin material, which is surprisingly obtainable at low processing temperature. Attention is drawn to Example 14 of Santamaria et al. which discloses adding a bis-benzoxaole such as 2,5-bis(5-tert-butyl-benzoxazol-2-yl)thiophene to the combination of sorbitols with the composition not containing the optical brightener having the least appealing appearance (see Table 14). Therefore, there is motivation to include (only) the optical brightener from Santamaria et al. into Wasylenko et al. ‘245. Further, even if it was necessary to teach the two sorbitols and optical brightener from Santamaria et al. into Wasylenko et al. ‘245, nothing in the present claims would exclude such combination in light of the open language of the present claims, i.e. stabilizer package “comprising”.
Wasylenko et al. ‘245 do disclose that additional additives can be included (see paragraph 0086). Given that both Wasylenko et al. ‘245 and Santamaria et al. are drawn to packaging films (Wasylenko et al. ‘245, paragraph 0084; Santamaria et al., paragraph 0001) made from polyethylene, given that Wasylenko et al. ‘245 disclose the use of additional additives, and given that Santamaria et al disclose the use of optical brightener to reduce yellowing, the combination is proper.
Applicant argues that regarding the double patenting rejection of record, US 10,563,405 issued from the same application as Wasylenko ‘425 and that for the same reasons discussed above with respect to Wasylenko ‘425 in view of Santamaria, the rejection of the claims is not obvious in view of US ‘405 in view of Santamaria.
The double patenting rejections are maintained for the same reasons as Wasylenko et al. ‘425 in view of Santamaria et al.
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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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787