DETAILED ACTION
Applicant’s response filed on 12/17/2025 has been fully considered. Claims 1-14, 16, and 17 are pending. Claims 1 and 5 are amended. Claim 15 is canceled. Claims 16 and 17 are new.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sundholm et al. (EP 3409739 A1, cited in IDS, made of record on 06/05/2023) in view of Galgali (WO 2017/216096 A1).
Regarding claims 1 and 2, Sundholm teaches an adhesive polymer composition comprising a non-elastomeric copolymer of ethylene and one or more comonomers having 3 to 10 carbon atoms, which non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], wherein the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-pentene, 1-hexene, 4-methyl-1-pentene, 1-octene, 1-decene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], wherein the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], wherein the parts by weight based on the adhesive polymer composition is parts by weight based on 100 parts by weight of the adhesive polymer composition [0110], which reads on adhesive polyethylene composition comprising (A) from 60 to 95 wt% of a non-elastomeric polyethylene being copolymer, or optionally terpolymer, of ethylene with one or more alpha-olefin comonomer units optionally selected from alpha-olefins having 4 to 6, 8, or 9 carbon atoms, wherein the amount of alpha-olefin comonomer units is in the range of from 1 to 30 wt%, based on the total weight of component (A), (B) from greater than 0 to less than 40 wt% of an elastomer, wherein onto component (A) or components (A) and (B) an acid grafting agent (C) has been grafted in an amount of from 0.01 to 3.0 wt%, all based on the total weight of the adhesive polyethylene composition, wherein the non-elastomeric polyethylene is optionally a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units.
Sundholm does not teach a specific embodiment wherein the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having from 4 to 12 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is in the range of from 0.1 to 10.0 wt% and the amount of the second alpha-olefin comonomer units is in the range of from 0.4 to 20.0 wt%, all based on the total weight of component (A), wherein the non-elastomeric polyethylene is a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units. However, Galgali teaches a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers (p. 21, l. 7-8), wherein the comonomer content of 1-butene is 0.5 mol%, and the comonomer content of 1-hexene is 3.2 mol% (p. 22, l. 8-9), wherein the bimodal polyethylene terpolymer is used in film applications (p. 2, l. 32-33). Sundholm and Galgali are analogous art because both references are in the same field of endeavor of a composition comprising a non-elastomeric polyethylene optionally being terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select 1-butene and 1-hexene as Sundholm’s one or more comonomers having 3 to 10 carbon atoms in Sundholm’s non-elastomeric copolymer, to select the content of 1-butene in Sundholm’s non-elastomeric copolymer to be 0.5 mol%, and to select the content of 1-hexene in Sundholm’s non-elastomeric copolymer to be 3.2 mol%, as suggested by Galgali. The proposed modification would read on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.93 wt% and the amount of the second olefin comonomer units is 9.0 wt%, all based on the total weight of component (A) as claimed, wherein the non-elastomeric polyethylene is a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units as claimed. The amount of the first alpha-olefin comonomer units is based on the calculation 0.5 mol * 56.108 g/mol / (0.5 mol * 56.108 g/mol + 3.2 mol * 84.162 g/mol + (100 mol – 0.5 mol – 3.2 mol) * 28.054 g/mol) * 100% = 0.93%. The amount of the second alpha-olefin comonomer units is based on the calculation 3.2 mol * 84.162 g/mol / (0.5 mol * 56.108 g/mol + 3.2 mol * 84.162 g/mol + (100 mol – 0.5 mol – 3.2 mol) * 28.054 g/mol) * 100% = 9.0%. One of ordinary skill in the art would have been motivated to do so because Galgali teaches that a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers (p. 21, l. 7-8), wherein the comonomer content of 1-butene is 0.5 mol%, and the comonomer content of 1-hexene is 3.2 mol% (p. 22, l. 8-9), is beneficial for being useful in film applications (p. 2, l. 32-33), and because Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-hexene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], that the adhesive polymer composition is used in an adhesive layer that is used in an article [0047], and that such articles comprise films [0047], which means that the proposed modification would have been beneficial for making Sundholm’s adhesive polymer composition suitable for use in an adhesive layer in a film.
Sundholm does not teach with sufficient specificity that the wt% of (A) is from 60 to 90 wt%, based on the total weight of the adhesive polyethylene composition. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the % by weight of Sundholm’s non-elastomeric copolymer in Sundholm’s adhesive polymer composition to be from 60 to 90 % by weight, based on Sundholm’s adhesive polymer composition. The proposed modification would read on the wt% of (A) is from 60 to 90 wt%, based on the total weight of the adhesive polyethylene composition as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of Sundholm’s adhesive polymer composition because Sundholm teaches that the non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition [0011, 0018], that in a further preferred embodiment, the non-elastomeric copolymer is present in an amount of 70 to 90 % by weight based on the adhesive polymer composition [0018], that the adhesive polymer composition shows improved adhesion properties [0014], that the adhesive polymer composition further comprises an elastomer [0011], that the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], and that the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], which means that the % by weight of Sundholm’s non-elastomeric copolymer in Sundholm’s adhesive polymer composition, based on Sundholm’s adhesive polymer composition, would have affected adhesion properties of Sundholm’s adhesive polymer composition.
Sundholm does not teach with sufficient specificity that the wt% of (B) is from 9.0 to 38 wt%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the % by weight of Sundholm’s elastomer in Sundholm’s adhesive polymer composition to be from 9.0 to 38 % by weight, based on Sundholm’s adhesive polymer composition. The proposed modification would read on the wt% of (B) is from 9.0 to 38 wt% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of Sundholm’s adhesive polymer composition because Sundholm teaches that the adhesive polymer composition comprises an elastomer [0011], that the adhesive polymer composition shows improved adhesion properties [0014], that in examples, the wt% of the elastomer in the adhesive polymer composition was 22.0 or 26.0 wt%, based on Sundholm’s adhesive polymer composition [0110], that the adhesive polymer composition further comprises a non-elastomeric copolymer [0011], that the non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition [0011], that the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], and that the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], which means that the % by weight of Sundholm’s elastomer in Sundholm’s adhesive polymer composition, based on Sundholm’s adhesive polymer composition, would have affected adhesion properties of Sundholm’s adhesive polymer composition.
Regarding claim 3, Sundholm teaches that the elastomer [0011] is an elastomeric ethylene copolymer that is ethylenebutylacrylate [0031], wherein the butyl acrylate content is 27 wt% [0108], which reads on wherein the elastomer (B) is a copolymer of ethylene with polar comonomer units having an amount of polar comonomer units of 27 wt% as claimed.
Regarding claim 4, Sundholm teaches that the acid grafting agent is an unsaturated carboxylic acid or a derivative thereof [0034], which reads on wherein the acid grafting agent (C) is selected from unsaturated carboxylic acids or derivatives thereof as claimed.
Regarding claim 5, Sundholm teaches that the adhesive polymer composition has an MFR2 value of from 01 to 10 g/min [0042] and a density of from 0.925 to 0.945 g/cm3 [0043], and that the melt flow rate (MFR) is determined under a load of 2.16 kg at 190°C [0053], which reads on the adhesive polyethylene composition according to claim 1, having a melt flow rate MFR2, determined at a temperature of 190°C and a load of 2.16 kg, of from 0.1 to 10.0 g/10 min and/or a density of from 925 kg/m3 to 945 kg/m3 as claimed.
Regarding claim 6, Sundholm teaches that the non-elastomeric copolymer has a molecular weight distribution Mw/Mn of 2.0 to 5.5, and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which reads on the adhesive polyethylene composition according to claim 1, having a rheological polydispersity index PI of greater than 0.
Sundholm does not teach that the adhesive polyethylene composition according to claim 1 has a rheological polydispersity index PI of less than 1.50. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer and the molecular weight distribution Mw/Mn of Sundholm’s elastomer to be such that the molecular weight distribution Mw/Mn of Sundholm’s adhesive polymer composition is less than 1.50, and the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer is 2.0 to 5.5. The proposed modification would read on the adhesive polyethylene composition according to claim 1, having a rheological polydispersity index PI of less than 1.50 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure because Sundholm teaches that the non-elastomeric copolymer has a molecular weight distribution Mw/Mn of 2.0 to 5.5, that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], that the adhesive polymer composition is used for an adhesive layer in an article, in particular a multilayer pipe [0012], that another prior art reference discloses an adhesive polymer composition comprising an acid grafted polyethylene, which has a Mw/Mn from 6 to 30 [0009], and that in spite of the prior art there still remains a need for adhesive polymer composition for use in the production of adhesive layers for multilayer structures with improved adhesion properties [0010], which means that the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure.
Regarding claim 7, Sundholm teaches that the non-elastomeric copolymer has a weight average molecular weight Mw of from 50 000 to 80 000 g/mol, and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which reads on the adhesive polyethylene composition according to claim 1, having a weight average molecular weight Mw (LS) of greater than 0 g/mol, determined by GPC-VISC-LS analysis.
Sundholm does not teach that the adhesive polyethylene composition according to claim 1, has a weight average molecular weight Mw (LS) of from 90,000 g/mol to 175,000 g/mol, determined by GPC-VISC-LS analysis. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer and the weight average molecular weight Mw of Sundholm’s elastomer to be such that the weight average molecular weight Mw of Sundholm’s adhesive polymer composition is from 90 000 to 175 000 g/mol, and the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer is from 50 000 to 80 000 g/mol. The proposed modification would read on the adhesive polyethylene composition according to claim 1, having a weight average molecular weight Mw (LS) of greater than 0 g/mol, determined by GPC-VISC-LS analysis as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure because Sundholm teaches that the non-elastomeric copolymer has a weight average molecular weight Mw of from 50 000 to 80 000 g/mol, that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], that the adhesive polymer composition is used for an adhesive layer in an article, in particular a multilayer pipe [0012], that another prior art reference discloses an adhesive polymer composition comprising an acid grafted polyethylene, which has a Mw from 20 000 to 500 000 g/mol [0009], and that in spite of the prior art there still remains a need for adhesive polymer composition for use in the production of adhesive layers for multilayer structures with improved adhesion properties [0010], which means that the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure.
Regarding claim 8, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the adhesive polyethylene composition according to claim 1 has a z-value of from -5.0 to 5.0 and/or a slope of from -1.00 to 0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1 as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 9, the limitation “the adhesive polyethylene composition according to claim 1, obtained from a process comprising the steps of feeding components (A), (B) and (C) into an extruder into the feeding section of an extruder comprising a feeding section, a barrel section and a die plate, wherein the barrel section of the extruder downstream of the feeding section and upstream of the die plate is divided into a plurality of control zones, and the first control zone represents the first control zone within the barrel section downstream of the feeding zone in which the fed component(s) (A) and/or (B) start(s) to melt; compounding the components (A) and (B) in the extruder in order to form the adhesive polyethylene composition; and grafting component (A) or components (A) and (B) with component (C) during the compounding step” is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 1, and the process is the process comprising the recited steps. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claim 1, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 9. "[E]ven 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 (MPEP 2113(I))."
Regarding claim 10, Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011].
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol. One of ordinary skill in the art would have been motivated to do so because it would have bene beneficial for optimizing the peel strength of Sundholm’s adhesive polymer composition because Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which means that the Mz of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected the peel strength of Sundholm’s adhesive polymer composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely wherein the adhesive polyethylene composition has a z average molecular weight Mz(Ls) of more than 525,000 g/mol/ determined by GPC-VISC-LS analysis, and/or a z-value of from -5.0 to 0 and /or as slope of from -1.00 to -0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients and amounts of the adhesive polyethylene composition according to claim 9 as explained above, and Sundholm renders it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
The limitation “wherein the temperature of the second to the last control zone in the barrel section is maintained constant over all of these control zones with a total deviation of not more than 20°C” is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 9, and the process is the process comprising the recited steps in claims 9 and 10. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claim 1, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 10.
Regarding claim 11, Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011].
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol. One of ordinary skill in the art would have been motivated to do so because it would have bene beneficial for optimizing the peel strength of Sundholm’s adhesive polymer composition because Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which means that the Mz of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected the peel strength of Sundholm’s adhesive polymer composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely wherein the adhesive polyethylene composition has a z average molecular weight Mz(LS) of equal to or less than 525,000 g/mol, determined by GPC-VISC-LS analysis, and/or a z-value of from more than 0 to 5.0 and/or a slope of form more than -0.30 to 0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients and amounts of the adhesive polyethylene composition according to claim 9 as explained above, and Sundholm in view of Galgali renders obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 9. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
The limitation “the adhesive polyethylene composition according to claim 9, wherein the process further comprises the steps of: independently controlling the temperature of each control zone of the plurality of control zones of the barrel section of the extruder as such that a) the temperature in the first control zone of the barrel section downstream of the feeding section is in the range of from higher than 85*C to 180*C,b) the temperature of the control zones of the barrel section from the first control zone of the barrel section downstream the feeding section to the control zone in the middle of the barrel section is increased over the length of the barrel section in two or more steps so that the temperature of the control zone in the middle of the barrel section is from 105 % to 145 % of the temperature in the first control zone of the barrel section downstream of the feeding section; and c) the temperature of the control zones of the barrel section from control zone in the middle of the barrel section to the control zone of the barrel section directly upstream of the die plate in maintained at the same temperature or increased to a temperature of not more than 120% of the temperature of the control zone in the middle of the barrel section“ is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 9, and the process is the process comprising the recited steps in claims 9 and 11. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claims 1 and 9 and the properties of the adhesive polyethylene composition that are recited in claim 11, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 11.
Regarding claim 12, Sundholm teaches a multilayer pipe comprising an adhesive layer which comprises the adhesive polymer composition [0012], which reads on a multi-layer structure comprising one layer comprising the adhesive polyethylene composition according to claim 1 as claimed.
Regarding claim 13, Sundholm teaches that the adhesive polymer composition is coextruded as an adhesive layer in a three-layer structure for coating of metal pipes [0014], and that a multilayer pipe is a pipe comprising a multilayer coating with three layers, which comprises a polyolefin layer and an adhesive layer adjacent to the polyolefin layer which comprises the adhesive polymer composition [0048], which reads on the multi-layer structure according to claim 12, being a three-layer coating of a metal pipe as claimed.
Regarding claim 14, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the multi-layer structure according to claim 12, having a peel strength at 23°C of at least 200 N/cm and/or a peel strength at 80°C of at least 110 N/cm. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the multi-layer structure according to claim 12 as explained above. Furthermore, the specification of the instant application recites that it has surprisingly been found that adhesive compositions comprising a blend of a non-elastomeric polyethylene terpolymer ,with terpolymer defined as a copolymer of ethylene with two different alpha-olefin comonomer units selected from alpha- olefins having from 4 to 12 carbon atoms, and an ethylene-based plastomer show improved adhesion properties, like improved peel strength also when used in coatings that are subjected to shorter water cooling times (p. 2, l. 21-26). Therefore, the claimed physical properties would naturally arise from the multi-layer structure that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 16, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the adhesive polyethylene composition of claim 1 has a shear thinning index SHI1/100 of not more than 20.0. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1 as explained above. Furthermore, the specification of the instant application does not recite that the claimed shear thinning index SHI1/100 is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1, Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Claims 1-14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sundholm et al. (EP 3409739 A1, cited in IDS, made of record on 06/05/2023) in view of Galgali (EP 3257879 A1).
Regarding claims 1 and 2, Sundholm teaches an adhesive polymer composition comprising a non-elastomeric copolymer of ethylene and one or more comonomers having 3 to 10 carbon atoms, which non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], wherein the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-pentene, 1-hexene, 4-methyl-1-pentene, 1-octene, 1-decene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], wherein the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], wherein the parts by weight based on the adhesive polymer composition is parts by weight based on 100 parts by weight of the adhesive polymer composition [0110], which reads on adhesive polyethylene composition comprising (A) from 60 to 95 wt% of a non-elastomeric polyethylene being copolymer, or optionally terpolymer, of ethylene with one or more alpha-olefin comonomer units optionally selected from alpha-olefins having 4 to 6, 8, or 9 carbon atoms, wherein the amount of alpha-olefin comonomer units is in the range of from 1 to 30 wt%, based on the total weight of component (A), (B) from greater than 0 to less than 40 wt% of an elastomer, wherein onto component (A) or components (A) and (B) an acid grafting agent (C) has been grafted in an amount of from 0.01 to 3.0 wt%, all based on the total weight of the adhesive polyethylene composition, wherein the non-elastomeric polyethylene is optionally a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units.
Sundholm does not teach a specific embodiment wherein the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having from 4 to 12 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is in the range of from 0.1 to 10.0 wt% and the amount of the second alpha-olefin comonomer units is in the range of from 0.4 to 20.0 wt%, all based on the total weight of component (A), wherein the non-elastomeric polyethylene is a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units. However, Galgali teaches a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers [0082], wherein the comonomer content of 1-butene is 0.3 mol%, and the comonomer content of 1-hexene is 2.6 or 1.5 mol% [0084], wherein the bimodal polyethylene terpolymer is used in blow film applications [0008]. Sundholm and Galgali are analogous art because both references are in the same field of endeavor of a composition comprising a non-elastomeric polyethylene optionally being terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select 1-butene and 1-hexene as Sundholm’s one or more comonomers having 3 to 10 carbon atoms in Sundholm’s non-elastomeric copolymer, to select the content of 1-butene in Sundholm’s non-elastomeric copolymer to be 0.3 mol%, and to select the content of 1-hexene in Sundholm’s non-elastomeric copolymer to be 2.6 or 1.5 mol%, as suggested by Galgali. The proposed modification would read on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.6 wt% and the amount of the second olefin comonomer units is 7.4 or 4.4 wt%, all based on the total weight of component (A) as claimed, wherein the non-elastomeric polyethylene is a terpolymer of ethylene with 1-butene comonomer units and 1-hexene comonomer units, wherein 1-butene comonomer units are the first alpha-olefin comonomer units and 1-hexene comonomer units are the second alpha-olefin commoner units as claimed. The amount of the first alpha-olefin comonomer units is based on the calculations 0.3 mol * 56.108 g/mol / (0.3 mol * 56.108 g/mol + 2.6 mol * 84.162 g/mol + (100 mol – 0.3 mol – 2.6 mol) * 28.054 g/mol) * 100% = 0.6% and 0.3 mol * 56.108 g/mol / (0.3 mol * 56.108 g/mol + 1.5 mol * 84.162 g/mol + (100 mol – 0.3 mol – 1.5 mol) * 28.054 g/mol) * 100% = 0.6%. The amount of the second alpha-olefin comonomer units is based on the calculations 2.6 mol * 84.162 g/mol / (0.3 mol * 56.108 g/mol + 2.6 mol * 84.162 g/mol + (100 mol – 0.3 mol – 2.6 mol) * 28.054 g/mol) * 100% = 7.4% and 1.5 mol * 84.162 g/mol / (0.3 mol * 56.108 g/mol + 1.5 mol * 84.162 g/mol + (100 mol – 0.3 mol – 1.5 mol) * 28.054 g/mol) * 100% = 4.4%. One of ordinary skill in the art would have been motivated to do so because Galgali teaches that a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers [0082], wherein the comonomer content of 1-butene is 0.3 mol%, and the comonomer content of 1-hexene is 2.6 or 1.5 mol% [0084], is beneficial for being useful in blow film applications [0008], and because Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-hexene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], that the adhesive polymer composition is used in an adhesive layer that is used in an article [0047], and that such articles comprise films [0047], which means that the proposed modification would have been beneficial for making Sundholm’s adhesive polymer composition suitable for use in an adhesive layer in a film.
Sundholm does not teach with sufficient specificity that the wt% of (A) is from 60 to 90 wt%, based on the total weight of the adhesive polyethylene composition. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the % by weight of Sundholm’s non-elastomeric copolymer in Sundholm’s adhesive polymer composition to be from 60 to 90 % by weight, based on Sundholm’s adhesive polymer composition. The proposed modification would read on the wt% of (A) is from 60 to 90 wt%, based on the total weight of the adhesive polyethylene composition as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of Sundholm’s adhesive polymer composition because Sundholm teaches that the non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition [0011, 0018], that in a further preferred embodiment, the non-elastomeric copolymer is present in an amount of 70 to 90 % by weight based on the adhesive polymer composition [0018], that the adhesive polymer composition shows improved adhesion properties [0014], that the adhesive polymer composition further comprises an elastomer [0011], that the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], and that the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], which means that the % by weight of Sundholm’s non-elastomeric copolymer in Sundholm’s adhesive polymer composition, based on Sundholm’s adhesive polymer composition, would have affected adhesion properties of Sundholm’s adhesive polymer composition.
Sundholm does not teach with sufficient specificity that the wt% of (B) is from 9.0 to 38 wt%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the % by weight of Sundholm’s elastomer in Sundholm’s adhesive polymer composition to be from 9.0 to 38 % by weight, based on Sundholm’s adhesive polymer composition. The proposed modification would read on the wt% of (B) is from 9.0 to 38 wt% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of Sundholm’s adhesive polymer composition because Sundholm teaches that the adhesive polymer composition comprises an elastomer [0011], that the adhesive polymer composition shows improved adhesion properties [0014], that in examples, the wt% of the elastomer in the adhesive polymer composition was 22.0 or 26.0 wt%, based on Sundholm’s adhesive polymer composition [0110], that the adhesive polymer composition further comprises a non-elastomeric copolymer [0011], that the non-elastomeric copolymer is present in an amount of 60 to 95 % by weight, based on the adhesive polymer composition [0011], that the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], and that the amount of said acid grafting agent added to the adhesive polymer composition being grafted is from 0.01 to 3.0 parts by weight based on the adhesive polymer composition [0037], which means that the % by weight of Sundholm’s elastomer in Sundholm’s adhesive polymer composition, based on Sundholm’s adhesive polymer composition, would have affected adhesion properties of Sundholm’s adhesive polymer composition.
Regarding claim 3, Sundholm teaches that the elastomer [0011] is an elastomeric ethylene copolymer that is ethylenebutylacrylate [0031], wherein the butyl acrylate content is 27 wt% [0108], which reads on wherein the elastomer (B) is a copolymer of ethylene with polar comonomer units having an amount of polar comonomer units of 27 wt% as claimed.
Regarding claim 4, Sundholm teaches that the acid grafting agent is an unsaturated carboxylic acid or a derivative thereof [0034], which reads on wherein the acid grafting agent (C) is selected from unsaturated carboxylic acids or derivatives thereof as claimed.
Regarding claim 5, Sundholm teaches that the adhesive polymer composition has an MFR2 value of from 01 to 10 g/min [0042] and a density of from 0.925 to 0.945 g/cm3 [0043], and that the melt flow rate (MFR) is determined under a load of 2.16 kg at 190°C [0053], which reads on the adhesive polyethylene composition according to claim 1, having a melt flow rate MFR2, determined at a temperature of 190°C and a load of 2.16 kg, of from 0.1 to 10.0 g/10 min and/or a density of from 925 kg/m3 to 945 kg/m3 as claimed.
Regarding claim 6, Sundholm teaches that the non-elastomeric copolymer has a molecular weight distribution Mw/Mn of 2.0 to 5.5, and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which reads on the adhesive polyethylene composition according to claim 1, having a rheological polydispersity index PI of greater than 0.
Sundholm does not teach that the adhesive polyethylene composition according to claim 1 has a rheological polydispersity index PI of less than 1.50. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer and the molecular weight distribution Mw/Mn of Sundholm’s elastomer to be such that the molecular weight distribution Mw/Mn of Sundholm’s adhesive polymer composition is less than 1.50, and the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer is 2.0 to 5.5. The proposed modification would read on the adhesive polyethylene composition according to claim 1, having a rheological polydispersity index PI of less than 1.50 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure because Sundholm teaches that the non-elastomeric copolymer has a molecular weight distribution Mw/Mn of 2.0 to 5.5, that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], that the adhesive polymer composition is used for an adhesive layer in an article, in particular a multilayer pipe [0012], that another prior art reference discloses an adhesive polymer composition comprising an acid grafted polyethylene, which has a Mw/Mn from 6 to 30 [0009], and that in spite of the prior art there still remains a need for adhesive polymer composition for use in the production of adhesive layers for multilayer structures with improved adhesion properties [0010], which means that the molecular weight distribution Mw/Mn of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure.
Regarding claim 7, Sundholm teaches that the non-elastomeric copolymer has a weight average molecular weight Mw of from 50 000 to 80 000 g/mol, and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which reads on the adhesive polyethylene composition according to claim 1, having a weight average molecular weight Mw (LS) of greater than 0 g/mol, determined by GPC-VISC-LS analysis.
Sundholm does not teach that the adhesive polyethylene composition according to claim 1, has a weight average molecular weight Mw (LS) of from 90,000 g/mol to 175,000 g/mol, determined by GPC-VISC-LS analysis. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer and the weight average molecular weight Mw of Sundholm’s elastomer to be such that the weight average molecular weight Mw of Sundholm’s adhesive polymer composition is from 90 000 to 175 000 g/mol, and the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer is from 50 000 to 80 000 g/mol. The proposed modification would read on the adhesive polyethylene composition according to claim 1, having a weight average molecular weight Mw (LS) of greater than 0 g/mol, determined by GPC-VISC-LS analysis as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure because Sundholm teaches that the non-elastomeric copolymer has a weight average molecular weight Mw of from 50 000 to 80 000 g/mol, that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], that the adhesive polymer composition is used for an adhesive layer in an article, in particular a multilayer pipe [0012], that another prior art reference discloses an adhesive polymer composition comprising an acid grafted polyethylene, which has a Mw from 20 000 to 500 000 g/mol [0009], and that in spite of the prior art there still remains a need for adhesive polymer composition for use in the production of adhesive layers for multilayer structures with improved adhesion properties [0010], which means that the weight average molecular weight Mw of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected adhesion properties of adhesive layers comprising Sundholm’s adhesive polymer composition in a multilayer structure.
Regarding claim 8, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the adhesive polyethylene composition according to claim 1 has a z-value of from -5.0 to 5.0 and/or a slope of from -1.00 to 0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1 as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 9, the limitation “the adhesive polyethylene composition according to claim 1, obtained from a process comprising the steps of feeding components (A), (B) and (C) into an extruder into the feeding section of an extruder comprising a feeding section, a barrel section and a die plate, wherein the barrel section of the extruder downstream of the feeding section and upstream of the die plate is divided into a plurality of control zones, and the first control zone represents the first control zone within the barrel section downstream of the feeding zone in which the fed component(s) (A) and/or (B) start(s) to melt; compounding the components (A) and (B) in the extruder in order to form the adhesive polyethylene composition; and grafting component (A) or components (A) and (B) with component (C) during the compounding step” is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 1, and the process is the process comprising the recited steps. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claim 1, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 9. "[E]ven 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 (MPEP 2113(I))."
Regarding claim 10, Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011].
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol. One of ordinary skill in the art would have been motivated to do so because it would have bene beneficial for optimizing the peel strength of Sundholm’s adhesive polymer composition because Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which means that the Mz of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected the peel strength of Sundholm’s adhesive polymer composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely wherein the adhesive polyethylene composition has a z average molecular weight Mz(Ls) of more than 525,000 g/mol/ determined by GPC-VISC-LS analysis, and/or a z-value of from -5.0 to 0 and /or as slope of from -1.00 to -0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients and amounts of the adhesive polyethylene composition according to claim 9 as explained above, and Sundholm renders it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
The limitation “wherein the temperature of the second to the last control zone in the barrel section is maintained constant over all of these control zones with a total deviation of not more than 20°C” is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 9, and the process is the process comprising the recited steps in claims 9 and 10. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claim 1, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 10.
Regarding claim 11, Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011].
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol. One of ordinary skill in the art would have been motivated to do so because it would have bene beneficial for optimizing the peel strength of Sundholm’s adhesive polymer composition because Sundholm teaches that in an example, the non-elastomeric copolymer of ethylene had a Mz of 134 000 g/mol [0105], that in a comparative example, a polyethylene had a Mz of 280 975 g/mol [0106], that an adhesive polymer composition comprising the non-elastomeric copolymer of ethylene [0107] had a higher peel strength than a comparative composition [0114] comprising the polyethylene [0110], that the peel strength of the grafted blend compositions 1 and 2 are better compared to the compositions of the comparative examples [0115], and that the adhesive polymer composition comprises the non-elastomeric copolymer, and an elastomer, wherein the non-elastomeric copolymer or the non-elastomeric copolymer and the elastomer have been grafted with an acid grafting agent [0011], which means that the Mz of Sundholm’s non-elastomeric copolymer, Sundholm’s elastomer, and Sundholm’s adhesive polymer composition would have affected the peel strength of Sundholm’s adhesive polymer composition.
The Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely wherein the adhesive polyethylene composition has a z average molecular weight Mz(LS) of equal to or less than 525,000 g/mol, determined by GPC-VISC-LS analysis, and/or a z-value of from more than 0 to 5.0 and/or a slope of form more than -0.30 to 0.30 in a GPC measurement, wherein the GPC curve is defined as the concentration normalized LS 15 signal along the molecular weight of conventional GPC, obtained from the GPC-VISC-LS analysis. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients and amounts of the adhesive polyethylene composition according to claim 9 as explained above, and Sundholm in view of Galgali renders obvious to optimize the Mz of Sundholm’s non-elastomeric copolymer and the Mz of Sundholm’s elastomer to be such that the Mz of Sundholm’s adhesive polymer composition is more than 525 000 g/mol as explained above. Furthermore, the specification of the instant application does not recite that the claimed z-value and slope is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 9. Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
The limitation “the adhesive polyethylene composition according to claim 9, wherein the process further comprises the steps of: independently controlling the temperature of each control zone of the plurality of control zones of the barrel section of the extruder as such that a) the temperature in the first control zone of the barrel section downstream of the feeding section is in the range of from higher than 85*C to 180*C,b) the temperature of the control zones of the barrel section from the first control zone of the barrel section downstream the feeding section to the control zone in the middle of the barrel section is increased over the length of the barrel section in two or more steps so that the temperature of the control zone in the middle of the barrel section is from 105 % to 145 % of the temperature in the first control zone of the barrel section downstream of the feeding section; and c) the temperature of the control zones of the barrel section from control zone in the middle of the barrel section to the control zone of the barrel section directly upstream of the die plate in maintained at the same temperature or increased to a temperature of not more than 120% of the temperature of the control zone in the middle of the barrel section“ is a product-by-process claim. The product is the adhesive polyethylene composition according to claim 9, and the process is the process comprising the recited steps in claims 9 and 11. Since Sundholm in view of Galgali renders obvious the adhesive polyethylene composition according to claims 1 and 9 and the properties of the adhesive polyethylene composition that are recited in claim 11, the product in the product-by-process claim is obvious over Sundholm in view of Galgali. Therefore, Sundholm in view of Galgali renders obvious claim 11.
Regarding claim 12, Sundholm teaches a multilayer pipe comprising an adhesive layer which comprises the adhesive polymer composition [0012], which reads on a multi-layer structure comprising one layer comprising the adhesive polyethylene composition according to claim 1 as claimed.
Regarding claim 13, Sundholm teaches that the adhesive polymer composition is coextruded as an adhesive layer in a three-layer structure for coating of metal pipes [0014], and that a multilayer pipe is a pipe comprising a multilayer coating with three layers, which comprises a polyolefin layer and an adhesive layer adjacent to the polyolefin layer which comprises the adhesive polymer composition [0048], which reads on the multi-layer structure according to claim 12, being a three-layer coating of a metal pipe as claimed.
Regarding claim 14, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the multi-layer structure according to claim 12, having a peel strength at 23°C of at least 200 N/cm and/or a peel strength at 80°C of at least 110 N/cm. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the multi-layer structure according to claim 12 as explained above. Furthermore, the specification of the instant application recites that it has surprisingly been found that adhesive compositions comprising a blend of a non-elastomeric polyethylene terpolymer ,with terpolymer defined as a copolymer of ethylene with two different alpha-olefin comonomer units selected from alpha- olefins having from 4 to 12 carbon atoms, and an ethylene-based plastomer show improved adhesion properties, like improved peel strength also when used in coatings that are subjected to shorter water cooling times (p. 2, l. 21-26). Therefore, the claimed physical properties would naturally arise from the multi-layer structure that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 16, the Office recognizes that all of the claimed physical properties are not positively taught by Sundholm, namely that the adhesive polyethylene composition of claim 1 has a shear thinning index SHI1/100 of not more than 20.0. However, Sundholm in view of Galgali renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1 as explained above. Furthermore, the specification of the instant application does not recite that the claimed shear thinning index SHI1/100 is due to anything other than the claimed ingredients, amounts, process steps, and process conditions of the adhesive polyethylene composition according to claim 1, Therefore, the claimed physical properties would naturally arise from the adhesive polymer composition that is rendered obvious by Sundholm in view of Galgali. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 17, Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-pentene, 1-hexene, 4-methyl-1-pentene, 1-octene, 1-decene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], which reads on wherein in the non-elastomeric polyethylene, the amount of the first alpha-olefin comonomer units is in the range of from 0 to 30 wt% and the amount of the second alpha-olefin comonomer units in in the range of from 0 to 30 wt%, all based on the total weight of component (A).
Sundholm does not teach a specific embodiment wherein in the non-elastomeric polyethylene, the amount of the first alpha-olefin comonomer units is in the range of from 0.1 to 4.0 wt% and the amount of the second alpha-olefin comonomer units in in the range of from 0.4 to 6.0 wt%, all based on the total weight of component (A). However, Galgali teaches a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers [0082], wherein the comonomer content of 1-butene is 0.3 mol%, and the comonomer content of 1-hexene is 1.5 mol% [0084], wherein the bimodal polyethylene terpolymer is used in blow film applications [0008]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select 1-butene and 1-hexene as Sundholm’s one or more comonomers having 3 to 10 carbon atoms in Sundholm’s non-elastomeric copolymer, to select the content of 1-butene in Sundholm’s non-elastomeric copolymer to be 0.3 mol%, and to select the content of 1-hexene in Sundholm’s non-elastomeric copolymer to be 1.5 mol%, as suggested by Galgali. The proposed modification would read on wherein in the non-elastomeric polyethylene, the amount of the first alpha-olefin comonomer units is in the range of from 0.6 wt% and the amount of the second alpha-olefin comonomer units in in the range of from 4.4 wt%, all based on the total weight of component (A) as claimed. The amount of the first alpha-olefin comonomer units is based on the calculation 0.3 mol * 56.108 g/mol / (0.3 mol * 56.108 g/mol + 1.5 mol * 84.162 g/mol + (100 mol – 0.3 mol – 1.5 mol) * 28.054 g/mol) * 100% = 0.6%. The amount of the second alpha-olefin comonomer units is based on the calculation 1.5 mol * 84.162 g/mol / (0.3 mol * 56.108 g/mol + 1.5 mol * 84.162 g/mol + (100 mol – 0.3 mol – 1.5 mol) * 28.054 g/mol) * 100% = 4.4%. One of ordinary skill in the art would have been motivated to do so because Galgali teaches that a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers [0082], wherein the comonomer content of 1-butene is 0.3 mol%, and the comonomer content of 1-hexene is 1.5 mol% [0084], is beneficial for being useful in blow film applications [0008], and because Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-hexene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], that the adhesive polymer composition is used in an adhesive layer that is used in an article [0047], and that such articles comprise films [0047], which means that the proposed modification would have been beneficial for making Sundholm’s adhesive polymer composition suitable for use in an adhesive layer in a film.
Terminal Disclaimer
The terminal disclaimer filed on 12/17/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/005,020 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments, see p. 8, filed 12/17/2025, with respect to the rejection of claim 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claim 5 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive. In response to the applicant’s argument that as noted by the Office action, Sundholm et al. do not teach the amounts of the first alpha-olefin comonomer units or the second olefin comonomer unites (p. 10), although Sundholm does not teach a specific embodiment wherein the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having from 4 to 12 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is in the range of from 0.1 to 10.0 wt% and the amount of the second alpha-olefin comonomer units is in the range of from 0.4 to 20.0 wt%, all based on the total weight of component (A), the rejection is based on the combination of Sundholm in view of Galgali rendering obvious on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.93 wt% and the amount of the second olefin comonomer units is 9.0 wt%, all based on the total weight of component (A) as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that the example in Sundholm et al. uses a non-elastomeric polyethylene having only 1.5 wt.% of 1-butene as comonomer, Table 2, and provide no indication that a second alpha-olefin comonomer should be used, let alone in the range of 0.4 to 20.0 wt% in the adhesive polymer composition therein (p. 10), the rejection of the claims that is set forth in this Office action is not based on Sundholm’s examples, but is based on Sundholm’s broader disclosure, which is where Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-pentene, 1-hexene, 4-methyl-1-pentene, 1-octene, 1-decene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123(II)). Furthermore, the rejection of the claims that is set forth in this Office action is not based on Sundholm individually, but is based on the combination of Sundholm in view of Galgali rendering obvious on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.93 wt% and the amount of the second olefin comonomer units is 9.0 wt%, all based on the total weight of component (A) as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to the applicant’s argument that Galgali does not correct the deficiencies of Sundholm et al. and teaches bi- or multimodal polyethylene terpolymer for use in blow or cast film applications (p. 11), the rejection of the claims that is set forth in this Office is not based on using Galgali’s terpolymer. The rejection is based on the combination of Sundholm in view of Galgali rendering it obvious to select 1-butene and 1-hexene as Sundholm’s one or more comonomers having 3 to 10 carbon atoms in Sundholm’s non-elastomeric copolymer, to select the content of 1-butene in Sundholm’s non-elastomeric copolymer to be 0.5 mol%, and to select the content of 1-hexene in Sundholm’s non-elastomeric copolymer to be 3.2 mol%, as suggested by Galgali. The proposed modification would read on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.93 wt% and the amount of the second olefin comonomer units is 9.0 wt%, all based on the total weight of component (A) as claimed. One of ordinary skill in the art would have been motivated to do so because Galgali teaches that a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers (p. 21, l. 7-8), wherein the comonomer content of 1-butene is 0.5 mol%, and the comonomer content of 1-hexene is 3.2 mol% (p. 22, l. 8-9), is beneficial for being useful in film applications (p. 2, l. 32-33), and because Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-hexene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], that the adhesive polymer composition is used in an adhesive layer that is used in an article [0047], and that such articles comprise films [0047], which means that the proposed modification would have been beneficial for making Sundholm’s adhesive polymer composition suitable for use in an adhesive layer in a film.
In response to the applicant’s argument that Galgali’s terpolymer has a different use and has different ingredients from that of Sundholm’s adhesive polymer compositions, that Galgali does not teach an elastomer or a grafting agent, and that there is not indication in Galgali that the terpolymer could be used in the adhesive composition and/or as an adhesive layer as in Sundholm et al. (p. 11), the rejection of the claims that is set forth in this Office action is not based on using Galgali’s terpolymer. The rejection is based on the combination of Sundholm in view of Galgali rendering it obvious to select 1-butene and 1-hexene as Sundholm’s one or more comonomers having 3 to 10 carbon atoms in Sundholm’s non-elastomeric copolymer, to select the content of 1-butene in Sundholm’s non-elastomeric copolymer to be 0.5 mol%, and to select the content of 1-hexene in Sundholm’s non-elastomeric copolymer to be 3.2 mol%, as suggested by Galgali. The proposed modification would read on the non-elastomeric polyethylene is terpolymer of ethylene with two different alpha-olefin comonomer units selected from alpha-olefins having 4 or 6 carbon atoms, wherein the amount of the first alpha-olefin comonomer units is 0.93 wt% and the amount of the second olefin comonomer units is 9.0 wt%, all based on the total weight of component (A) as claimed. One of ordinary skill in the art would have been motivated to do so because Galgali teaches that a bimodal terpolymer of ethylene with 1-butene and 1-hexene comonomers (p. 21, l. 7-8), wherein the comonomer content of 1-butene is 0.5 mol%, and the comonomer content of 1-hexene is 3.2 mol% (p. 22, l. 8-9), is beneficial for being useful in film applications (p. 2, l. 32-33), and because Sundholm teaches that the non-elastomeric copolymer is a non-elastomeric copolymer of ethylene and one or more α-unsaturated olefinic comonomer(s) [0015], wherein examples of the α-olefin comonomers include 1-butene, 1-hexene, and mixtures thereof [0015], wherein the amount of comonomer within the non-elastomeric copolymer is from 1 to 30 % by weight [0017], that the adhesive polymer composition is used in an adhesive layer that is used in an article [0047], and that such articles comprise films [0047], which means that the proposed modification would have been beneficial for making Sundholm’s adhesive polymer composition suitable for use in an adhesive layer in a film.
In response to the applicant’s argument that the adhesive polyethylene composition of claim 1 comprising a non-elastomeric polyethylene terpolymer with two different alpha-olefin comonomer unites exhibits unexpected results based on IE1 in Tables 3-4 compared to CE1 and Compositions 1-3 of Sundholm et al. (p. 11-13), the applicant’s arguments of unexpected results are not persuasive because the applicant’s results are not commensurate in scope with the claimed invention. Specifically, claim 1 recites a range of amounts and a range of number of carbon atoms of the first and second alpha-olefin comonomer units, and the applicant only referred to one inventive example, IE1, which comprised only one species and one amount of each of the first and second alpha-olefin comonomer units. The applicant did not show that the results of IE1 would occur for all claimed amounts of the first and second alpha-olefin comonomer units and for all claimed numbers of carbon atoms of the first and second alpha-olefin comonomer units. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support (MPEP 716.02(d))." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (MPEP 716.02(d)). The applicant did not show a sufficient number of examples that would allow one of ordinary skill in the art to determine a trend in the exemplified data that would allow the artisan to extend the probative value thereof to all claimed amounts of the first and second alpha-olefin comonomer units and to all claimed numbers of carbon atoms of the first and second alpha-olefin comonomer units. The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof (MPEP 716.02(d)(I)). The applicant did not compare a sufficient number of examples within the scope of claim 1 with a sufficient number of examples outside the scope of claim 1. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (MPEP 716.02(d)(II)). The applicant’s arguments of unexpected results are not persuasive also because the applicant did not show that the results are in fact unexpected and significant because the applicant showed results for a terpolymer of ethylene, 1-butene, and 1-hexene compared results for a copolymer of ethylene and 1-octene, and results for a copolymer of ethylene and 1-butene (arguments p. 12). The copolymer of ethylene and 1-octene comprised 1-octene, which was not present in the terpolymer of ethylene, 1-butene, and 1-hexene, which means that the difference in results for the terpolymer of ethylene, 1-butene, and 1-hexene compared to the results for the copolymer of ethylene and 1-octene could be due to the presence of 1-octene and not only due to it being a copolymer. The applicant can therefore not conclude that the results are in fact unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MPEP 716.02(b)(I))."
In response to the applicant’s argument that claims 2-14 depend from 1 and are therefore allowable for at least the same reasons as claim 1 and for the specific limitations recited therein (p. 14), claims 2-14 are not allowable and are rejected under the prior art as explained in the rejection of the claims that is set forth in this Office action.
Applicant’s arguments, see p. 14, filed 12/17/2025, with respect to the provisional rejection of claims 1, 2, 4, and 9-14 on the ground of nonstatutory double patenting as being unpatentable over claims 4, 9, and 13-15 of copending Application No. 18/005,020 (reference application) have been fully considered and are persuasive. The provisional rejection of claims 1, 2, 4, and 9-14 on the ground of nonstatutory double patenting as being unpatentable over claims 4, 9, and 13-15 of copending Application No. 18/005,020 (reference application) has been withdrawn.
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.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767