DETAILED ACTION
This Office Action is responsive to the amendment filed on 8/4/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 112
Claims 10 and 16 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 depends from claim 8 and recites a limitation that fraction (A) has a melt flow rate from 7.5 to 75 g/10 min. As written, it is unclear whether the phrase “a melt flow rate” is intended to further limit the MFR2 recited in the parent claim, or if it can be a melt flow rate measured under different conditions (and if so, what those conditions are).
Claim 16 recites the limitation "the comonomer" in line 2. There is insufficient antecedent basis for this limitation in the claim. Neither claim 3 nor independent claim 1 recites a comonomer. As written, independent claim 1 states that fraction (A) may be an ethylene copolymer-this limitation implicitly reads on a comonomer which is copolymerized with ethylene. Alternatively, fraction (B) an ethylene/hexene copolymer wherein ethylene is the majority monomer-hexene would therefore be considered a comonomer. It is therefore unclear whether the phrase “the comonomer” in claim 16 is intended to refer to only one of either the comonomer of fraction (A) when it is a copolymer, the hexene of fraction (B), or the combination of all comonomer(s) in fractions (A) and (B).
Claim Rejections - 35 USC § 103
Claim(s) 1-17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Piel et al, EP2583998 (of record).
Piel discloses a polyethylene composition (for claim 1) used in the production of pipes and/or fittings (for claims 12, 13), corresponding to the claimed article (for claims 11,14) (abstract), wherein said composition comprises a base resin comprising a low molecular weight (LMW) fraction (A) and high molecular weight (HMW) fraction (B). Said composition is characterized by a MFR5 of 0.6 g/10 min or less (¶0010, 0022), overlapping the claimed range (for claim 1); an olefin comonomer content in the range of 0.1 to 3.0 mol% (¶0024), overlapping the claimed range (for claims 3, 16); and a critical temperature of -10 °C or lower (¶0014), overlapping the claimed range (for claim 13). Said base resin has a density of 930 to 970 kg/m3 (¶0023), overlapping the claimed range (for claim 2); a number average molecular weight (Mn) in the range of 8000 to 15000 (¶0032), overlapping the claimed range (for claims 6, 17); and a Mw/Mn in the range of 3 to 40 (¶0032), overlapping the claimed range (for claim 1).Said base resin is made via multistage polymerization (¶0033) using a Ziegler Natta catalyst (for claim 5) (¶0050).
Said comonomer is especially preferred to be 1-butene or 1-hexene (for claims 1, 18) (¶0021).
Regarding claimed component (A): The prior art LMW fraction (A) is characterized by a MFR2 not more than 100 g/10 min, overlapping the claimed range (for claims 1, 4, 8, 10, 18), and is preferably an ethylene homopolymer (for claims 1, 4) (¶0010, 0020). Piel further discloses that LMW fraction (A) has a lower molecular weight than fraction (B) (¶0010); the prior art LMW fraction (A) therefore corresponds to claimed component (A) (for claims 1, 8).
Regarding claimed component (B): The prior art HMW fraction (B) is preferably a copolymer of ethylene and an olefin comonomer; Piel further teaches that 1-hexene is an especially preferred embodiment of said olefin comonomer(for claim 3) (¶0021).
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Piel teaches that 1) the overall prior art composition comprises 0.1 to 3.0 mol% olefin comonomer (¶0024) and 2) that the composition preferably comprises a homopolymer LMW fraction and copolymer HMW fraction, specifically teaching that the HMW fraction is the only fraction to contain olefin comonomer (¶0030). As 1-hexene is especially preferred embodiment of the olefin comonomer present in the HMW fraction (B) (¶0021); Piel renders obvious a composition wherein LMW fraction (A) comprises 100% ethylene and HMW fraction (B) is an ethylene/1-hexene copolymer.
The prior art composition comprises 0.1 to 3.0 mol% of the olefin comonomer (¶0024). As discussed in paragraphs 11-12 of the office Action mailed on 1/23/2026, incorporated herein by reference, it is estimated that the prior art HMW fraction (B) may contain about 0.5 to 18.9 wt% hexene (i.e., about 0.2 to 7.2 mol%), overlapping the claimed range (for claims 1, 8) based on the molecular weights of ethylene (58.05 g/mol) and 1-hexene (84.1608 g/mol). The prior art HMW fraction (B) therefore corresponds to claimed component (B) (for claims 1, 8).
Regarding the ratio of component (A) to component (B): The ratio of LMW fraction (A) to HMW fraction (B) ranges from 35:65 to 55:45 (¶0031); i.e.-the prior art base resin comprises 45 to 65 wt% of the HMW fraction (B), overlapping the claimed range (for claims 1, 8).
Regarding the claimed process steps: As noted above, the prior art composition is prepared via a multistage process using a Ziegler-Natta catalyst (for claims 8, 10). Piel exemplifies a process comprising the steps of 1) a prepolymerization step (for claim 9), 2) polymerizing the LMW fraction (A) in a loop reactor (for claim 8), 3) transferring the LMW fraction (A) to a gas phase reactor wherein the HMW fraction (B) is then polymerized (for claim 8), and extruding the product (for claim 8) (¶0102-0103; Table 1). The LMW fraction was prepared using an alkyl aluminum co-catalyst and hydrogen as a chain transfer agent (for claim 8) (¶0065, 0102, Table 1).
Piel does not specifically disclose the production of a composition wherein the HMW fraction has a comonomer content in the range of 0.3 to 1.0 mol% and the overall composition has a strain hardening modulus from 50 to 150 MPa.
Regarding the comonomer content: 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 range for the comonomer content of HMW fraction (B) overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition having the required comonomer content in view of the teachings of Piel (for claim 1).
Regarding the claimed properties of strain hardening modulus (for claims 1, 7, 8, 20), pressure resistance (for claim 15), and Charpy impact strength (for claim 19): As discussed in the previous paragraphs, Piel renders obvious a composition comprising the same polymers made from the same monomers combined in the same amounts as used to prepare the claimed invention. Furthermore, the prior art composition is prepared via a similar method of multistage polymerization using a Ziegler Natta catalyst as used to prepare the claimed invention. “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As the prior art composition appears to be the same as the claimed composition, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art composition (for claims 1, 7, 8, 15, 19, 20).
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
Regarding the rejections of claims 10 and 16 under 35 U.S.C. 112(b): Applicant did not amend claims 10 and 16, nor did they present arguments pointing out the supposed errors in the rejection of claims 10 and 16 under 35 U.S.C. 112(b). The rejection is therefore maintained.
Regarding the rejection over Piel: Applicant argues that the claimed invention results in a desirable balance between stress at yield and NPT which is not taught by Piel, citing Table 3 of the instant specification. In response, it is noted that applicant has not addressed the arguments outlined in paragraphs 29 to 32 of the Office Action mailed on 5/4/2026, incorporated herein by reference. As discussed in the 5/4/2026 Action, the data presented in the instant applicant does not compare the claimed invention to the closest prior art as required; see MPEP 716.02(e) and the cases cited therein. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive per the reasons of record.
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]).
Comonomer: Applicant argues that Piel exemplifies a butene comonomer, whereas the claimed invention recites a 1-hexene comonomer. As noted earlier in this Action, however, Piel teaches that the comonomer may be 1-hexene. Further note that the prior art teaches that 1-hexene is one of only two “especially preferred” embodiments of said comonomer (¶0021). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07). Contrary to applicant’s arguments, the mere fact that Piel does not disclose an example wherein 1-hexene is used as the comonomer does not constitute a teaching away from the reference’s broader disclosure that 1-hexene is an especially preferred comonomer. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition using 1-hexene as the comonomer, with the reasonable expectation of obtaining a final composition having the improved pressure resistance and impact properties taught by Piel (abstract).
Comonomer Content: Applicant argues that the prior art value of about 2 mol% comonomer differs significantly from the claimed range of 0.45 to 0.70 mol%. This argument is not persuasive because it does not address the broad range for comonomer content allowed by Piel. As discussed in paragraphs 14 to 15 of this Action, Piel broadly reads on a 1-hexene content in the range of about 0.2 to 7.2 mol%, overlapping the claimed range.
To the extent that applicant alleges that the prior art is directed towards 1-butene containing compositions, it has been held that “[W]hen the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability”; see In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) (MPEP § 2121(I)). Piel specifically teaches the use of 1-hexene as the comonomer. Furthermore, one of ordinary skill in the art would recognize that the amount of 1-hexene in the prior art composition overlaps the claimed range. It is therefore presumed that Piel is operable with regards to the use of 1-hexene as a comonomer over the entire range of 0.2 to 7.2 mol%. It therefore is not persuasive to merely argue that the prior art does not exemplify a composition comprising 1-hexene in the recited amount; see Merck & Co. v. Biocraft Laboratories and In re Susi cited above. Barring a showing of evidence demonstrating unexpected results commensurate in scope with the claimed invention, it therefore would have been obvious to prepare a composition comprising 1-hexene in the recited amount in view of the teachings of Piel; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Amount of fraction B: Applicant argues that Piel’s Example teaches a composition comprising 44% of the HMW fraction B, whereas the claimed invention requires at least 49 wt% of fraction (B). Applicant ‘s argument is not persuasive because it is directed towards the example of the prior art, whereas the rejection of record is based on the broad disclosure of Piel. As noted earlier in this Action, Piel teaches that the amount of HMW fraction (B) may be 45 to 65 wt% (¶0031), overlapping the claimed range. It therefore is not persuasive to merely argue that the prior art Example does not meet the claimed limitation; see Merck & Co. v. Biocraft Laboratories and In re Susi cited above. The prior art range overlaps the claimed range; it therefore would have been obvious to prepare a composition having the required amount of HMW fraction (B) in view of the teachings of Piel; see In re Wertheim, In re Woodruff, and In re Peterson cited above.
Mw/Mn: Applicant argues that the composition of the prior art Example has a Mw/Mn of 26.4, which is above the claimed upper limit of 25. As discussed earlier in this Action and acknowledged by applicant in the submitted remarks (see page 8: lines 12-13), however, Piel broadly teaches that the prior art Mw/Mn is in the range of 3 to 40, overlapping the claimed range. Similar to the discussions above regarding the comonomer content and the amount of fraction (B), applicant’s argument is not persuasive because it is directed only towards the prior art example and does not address the broad disclosure of Piel; see Merck & Co. v. Biocraft Laboratories, In re Susi, In re Wertheim, In re Woodruff, and In re Peterson cited above.
In summary, applicant’s arguments are not persuasive because they are all directed towards the example of Piel, whereas the rejection of record is based on the prior art’s broad disclosure. Contrary to applicant’s arguments, the prior art’s disclosure of an Example having values for comonomer content, amount of fraction B, and Mw/Mn outside the claimed ranges does not teach away from Piel’s broader disclosure. As discussed above, the prior art ranges for comonomer content, amount of HMW fraction (B), and Mw/Mn all overlap the claimed ranges. It is well settled that “even a slight overlap in range establishes a prima facie case of obviousness”; see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Barring a showing of evidence demonstrating unexpected results, it therefore would have been prima facie obvious to prepare a composition as defined in the claims in view of the teachings of Piel as discussed earlier in this Action. The rejection is therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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
