DETAILED ACTION
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 .
Response to Amendment
In light of the amendments, the prior 112 rejections and claim objections are hereby withdrawn. The merits of the claims remain rejected, as outlined below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 7, 10, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Yu, US 6,207,754 (hereafter Yu) in view of Kahlen et al., US 2020/0385555.
Regarding claim 1, Yu teaches a thermoplastic composition of low modulus, suitable for automotive applications, such as skins and liners (Title; Abstract; col. 1, lines 12-18) that according to the Abstract of Yu may include:
a) a thermoplastic polymer component (TP) in the form of a thermoplastic olefin composition (TPO) comprising an intimately blended impact modified polypropylene resin and a plastomer resin, and
b) at least one elastomer (E) described in the Abstract as an olefin copolymer elastomer; the elastomer (E) of Wu may, for example, be ethylene-propylene-diene rubber (EPDM) or a butyl rubber (col. 10, line 65 to col. 11, line 30).
Regarding the claim 1 requirement that the thermoplastic polymer component (TP) comprises at least one propylene-ethylene random copolymer (TP1) having a propylene content of at least 60 wt.-%, and an ethylene content of 5 - 20 wt.-%, based on the weight of the propylene-ethylene random copolymer and at least one ethylene- octene random copolymer (TP2) having an ethylene content of at least 50 wt.-%, and an octene content of 5 - 45 wt. -%, based on the weight of the based on the weight of the ethylene-octene copolymer, the composition of Yu is described as including at least three components: a propylene polymer, (i.e., "TP1"), a plastomer, (i.e., "TP2") and a discrete olefin copolymer elastomer (OCE) resin (i.e., "E") described at col. 6, lines 5- 31.
The propylene polymer (i.e., TP1) of Yu is further described as an impact modified polypropylene thermoplastic component that is a blend of propylene polymer and an elastomer that may be a random copolymer of propylene having a propylene content of at least 95 wt.% (col. 7, lines 15-30). When the polymer is a random copolymer of propylene and ethylene, the comonomer content (i.e., ethylene content) does not exceed about 7 wt.% (col. 7, lines 15-30). Thus, Yu discloses respective values for propylene content and ethylene content which are within the recited ranges of at least 60 wt. % and 5-20 wt.%.
The plastomer (i.e., TP2) of Yu is described as an "ethylene based copolymer," that is understood to teach that the copolymer must have an ethylene content of 50 wt.% or more (col. 8, lines 12-29). Yu discloses that its plastomer is a copolymer of ethylene and an alpha-olefin comonomer wherein ethylene comprises from about 87 mole% to about 97.5 mol% of the plastomer copolymer (col. 9, lines 28-40). Yu further discloses that preferred ethylene-based copolymers according to Yu are those sold under the trademark EXACT™ available from Exxon Chemical Company (col. 9, lines 54-57), also identified in the specification of the current application as particularly suitable for the component TP2 of the invention (specification as filed page 10, line 28 to page 11, line 8) and understood to be a random ethylene/octene copolymer produced by a metallocene catalyst technology that results in a random distribution of alpha-olefin comonomers (col. 9, line 54 to col. 10, line 25).
Thus, Yu teaches values for ethylene content which are understood to be within the range of at least 50 wt. % recited in claim 1, but is silent as to octene content.
Yu is also silent as to a thermoplastic polyolefin elastomer (TP3), that is different from the copolymer (TP1) and the copolymer (TP2) that further comprises a heterophasic propylene copolymer.
As to the final recitation that the at least one elastomer (E) comprises at least one butyl rubber (E1) and/or at least one ethylene propylene diene monomer rubber
(E2), Yu teaches that an elastomer of Yu may be ethylene propylene diene rubber (col. 10, line 65 to col. 11, line 10). Yu also teaches the partial replacement of plastomer with a temperature resistant rubber for the advantage of producing a low modulus compound, one suitable rubber being brominated isobutylene-paramethylstyrene rubber (col. 11, line 60 to col. 12, line 13), i.e., a butyl rubber.
Kahlen teaches a thermoplastic composition (Abstract) that includes a thermoplastic polymer component (A), described as a blend of at least two different polyolefins (paras [0043]-[0052]), further described as comprising polypropylene and polyethylene, thus understood as a thermoplastic polymer component. The thermoplastic polymer component of Kahlen includes at least one propylene copolymer at para [0055] described as a random copolymer of propylene with ethylene wherein the comonomer content (i.e., ethylene) ranges from 0.05 to 20 wt.-% (and therefore propylene content of over 60 wt.-%), and an ethylene copolymer described at paras [0059]-[0060] described as a polyethylene of the blend being preferably HDPE, LLDPE or LDPE with comonomer content being below 50 wt.-%, thus teaching ethylene content of at least 50 wt.-%.
Kahlen teaches a component (C) described at paras [0130]-[0141] that is a copolymer of ethylene and one or more C4 to C19 alpha olefin; a commercially available component C) being Queo® 2M138 described as an ethylene/octene plastomer (paras [0214]-[0216]). Kahlen further teaches that an ethylene-1-octene- polymer is most preferred (para [0133]) and that the ethylene content is preferably 75 to 95 wt.% (para [0137]), thus teaching octene content of 5-25 wt.%, falling within the range recited in claim 1.
Kahlen further teaches a component (B), thermoplastic polyolefin elastomer of its composition is a heterophasic propylene copolymer (paras [0074]-[0129]) that is a heterophasic polypropylene, preferably comprising 14-35 wt.-% based on the total weight of the composition (paras [0074]-[0077]), such range overlapping and thus rendering obvious the range recited in claim 1 of 0.5 - 25 wt.-%, of the total weight of the thermoplastic composition. Kahlen teaches the polypropylene of its blend (A) preferably does not comprise a heterophasic copolymer (para [0058]), thus teaching the component (B) of Kahlen is preferably different than the thermoplastic polymers of component (A) of Kahlen.
Like Yu, Kahlen is directed to compositions for use in automotive applications, specifically automotive articles (Abstract), and further to the use of recycled PP/PE blends that normally lack compatibility between the main polymer phases, resulting in limited stiffness, impact strength and heat deflection resistance (paras [0003]-[0006]). Kahlen states that its polyolefin composition that includes its special combination of a heterophasic polypropylene, a copolymer of ethylene and one or more C4 to C19 alpha olefin, plus a mineral filler, results in a good balance of stiffness as well as impact strength and heat deflection temperature at reasonable melt flow rate for a blend of at least two different polyolefins, especially recycled PP/Pe-blends (para [0008]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the composition of Yu to include the specific ethylene-octene copolymer and heterophasic propylene copolymers according to Kahlen in the composition of Yu for the advantages taught in Kahlen, including a balance of stiffness and impact strength and further for the advantage of using recycled PP/PE blends in the composition.
As to the amount of ethylene alpha copolymer (column 8, line 45), Yu discloses as low as “about” 40% (column 10, line 53), whereby said “about” causes the range to even further approach the upper bound of the claimed 35%. Given the foregoing disclosure in the prior art and the fact that the courts have established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close (MPEP 2144.05), the claimed range is deemed to not be patentably distinguishing. Even further evidencing the non-obviousness of the claimed range is the disclosure in column 10 of Yu which describes a particular secant modulus. In essence, it would have been within the level of ordinary skill to tailor the plastomer additive to arrive at the desired plasticity and secant modulus based on design choice. Note that the MPEP states that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical (MPEP 2144.05(II)(A)).
Regarding claim 3, the propylene copolymer (TP1) of Yu comprises from about 60 to about 40 wt.% of the composition of Yu (col. 10, lines 48-62), a range that falls within the recited range of 25 - 75 wt.-%. Each example described in Table 1, (columns 11-12) includes "Escorene PD 8191" (i.e., TP1, further described at Table 7 (bottom of columns 19-20)) in the amount of 40 wt.%, a value that anticipates the recited range. See MPEP 2131.03.
Regarding claim 7, Kahlen teaches its heterophasic polypropylene has a melting temperature of at least 160°C (para [0081]), overlapping and thus rendering obvious the recited range of at least 100°C.
Regarding claim 10, Example A described in Table 1, (columns 11-12) includes "EXXPRO 89-1" (i.e., elastomer E, further described at Table 7 (bottom of columns 19 and 20)) in the amount of 20 wt.%, a value that is within the recited range of 0.5-35 wt.%. See MPEP 2131.03.
Regarding claim 21, as discussed in the rejection of claim 1 above, Yu teaches a propylene content falling within the recited "at least 60 wt.-%." However, the Yu teaching of 7 wt.-% ethylene content falls outside the recited range of "9 - 18 wt.-%." Kahlen teaches its composition may include a random copolymer of propylene with ethylene wherein the comonomer content (i.e., ethylene) may range from 0.05 to 20 wt.% (para [0055]). Both Yu and Kahlen teach a preference for the propylene polymer to be isotactic (Yu and col. 7, lines 30-35 and Kahlen at para [0055]), generally understood to provide the properties of enhance strength and impact resistance. In view of the similarities between the compositions of Yu and Kahlen, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to further modify the composition of Yu/Kahlen that includes the particular heterophasic polypropylene of Kahlen as well as the ethylene-octene polymer of Kahlen, to further utilize the propylene-ethylene random copolymer as taught in Kahlen, having an ethylene content of greater than 7 wt.%, as suitable and predictable, and providing a reasonable expectation of success, in particular when the composition includes recycled materials as taught by Kahlen.
Regarding claim 23, Yu discuses the TP2 as being a copolymer of ethylene and an alpha olefin with C8 (i.e. octene) (see column 8, lines 44-46).
Claims 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over the teachings of Kahlen et al., US 2020/0385555.
Regarding claim 19, Kahlen teaches a thermoplastic composition (Abstract) comprising:
a) a thermoplastic polymer component (TP) (component A), described as a blend of at least two different polyolefins (paras [0043]-[0052]), further described as comprising polypropylene and polyethylene, thus understood as a thermoplastic polymer component); and
b) at least one elastomer (E) (component C) described at paras [0130]-[0141]) as a copolymer of ethylene and one or more C4 to C19 alpha olefin; a commercially available component C) being Queo® 2M138 described as an ethylene/octene plastomer(paras [0214]-[0216]), also understood as a thermoplastic elastomer),
wherein the thermoplastic polymer component (TP) comprises
at least one propylene copolymer (TP1) having a propylene content of at least 60 wt.-%, and an ethylene content of 5 - 20 wt.-%, based on the weight of the propylene copolymer (para [0055] describing the polypropylene of the blend may be a random copolymer of propylene with ethylene wherein the comonomer content (i.e., ethylene) ranges from 0.05 to 20 wt.-% (and therefore propylene content of over 60 wt.-%), such ranges overlapping and thus rendering obvious the recited ranges) and
at least one ethylene copolymer (TP2) having an ethylene content of at least 50 wt.-%, based on the weight of the ethylene copolymer (para [0059]-[0060] describing a polyethylene of the blend being preferably HDPE, LLDPE or LDPE with comonomer content being below 50 wt.-%, thus teaching ethylene content of at least 50 wt.-%).
Regarding the claim limitation of at least one thermoplastic polyolefin elastomer (TP3) different from the at least one propylene copolymer (TP1) and from the at least one ethylene copolymer (TP2), and comprising a heterophasic propylene copolymer, Kahlen teaches component B) at paras [0074]-[0129] that is a heterophasic polypropylene, preferably comprising 14-35 wt.-% based on the total weight of the composition (paras [0074]-[0077]), such range overlapping and thus rendering obvious the range recited in the claim of 0.5 - 25 wt.-%, of the total weight of the thermoplastic composition. Kahlen teaches the polypropylene of its blend A) preferably does not comprise a heterophasic copolymer (para [0058]), thus teaching the component (B of Kahlen is preferably different than the thermoplastic polymers of component (A of Kahlen.
Regarding the claim 22 recitation of the propylene copolymer (TP1) having a propylene content of at least 60 wt.-%, and an ethylene content of 9 - 18 wt.-%, based on the weight of the propylene copolymer, please see the discussion in the rejection of claim 19 above and the Kahlen teachings that overlap and thus render obvious the recited ranges.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the teachings of Kahlen as applied to claim 19 and further in view of Yu (US 6,207,754).
As discussed in the rejection of claim 19 above, Kahlen includes a component C) in its composition that may be a plastomer, also understood as a thermoplastic elastomer (para [0216]). A focus of Kahlen is to provide a composition that balances stiffness and impact strength (para [0007]). Kahlen is silent as to its elastomer being "at least one butyl rubber (E1) and/or at least one ethylene propylene diene monomer rubber (E2)" recited in claim 20.
Yu teaches a thermoplastic composition (Abstract) that includes a thermoplastic polymer component and at least one elastomer and further includes propylene and ethylene copolymers (please see the rejection of claim 1 above). An elastomer of Yu may be ethylene propylene diene rubber (col. 10, line 65 to col. 11, line 10). Yu also teaches the partial replacement of plastomer with a temperature resistant rubber for the advantage of producing a low modulus compound, one suitable rubber being brominated isobutylene-paramethylstyrene rubber (col. 11, line 60 to col. 12, line 13).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the composition of Kahlen to replace at least part of the plastomer of Kahlen with the rubbers taught in Yu as advantageous when a low modulus is desired, such teaching corresponding to the Kahlen desire to balance stiffness with impact resistance that necessarily requires some flexibility.
Response to Arguments
Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive.
The applicant argues that the narrowed TP2 range renders the claims non-obvious.
The examiner has thoughtfully considered the argument, but finds it unpersuasive for the following reasons. First, the prior art discloses the claimed TP2 as low as “about” 40% (column 10, line 53), whereby said “about” causes the range to even further approach the upper bound of the claimed 35%. Given the foregoing disclosure in the prior art and the fact that the courts have established that a prima facie case of obviousness exists where the claimed ranges do not overlap with the prior art but are merely close (MPEP 2144.05), the claimed range is deemed to not be patentably distinguishing. Even further evidencing the non-obviousness of the claimed range is the disclosure in column 10 of Yu which describes a particular secant modulus. In essence, it would have been within the level of ordinary skill to tailor the plastomer additive to arrive at the desired plasticity and secant modulus based on design choice. Note that the MPEP states that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical (MPEP 2144.05(II)(A)).
The applicant argues that the Queo 2M138 plastomer is different from the claimed elastomer and therefore claim 19 should be rendered patentable.
The examiner disagrees as the examiner has not found evidence that the term is defined in such as way so as to exclude the foregoing from consideration as such. Said another way, the term elastomer is broad and the claims/spec fail to provide additional quantification so as to exclude the prior art under BRI. Even Yu (of record) notes that plastomers are neither completely like nor unlike thermoplastics and elastomers (column 8, lines 29-32). In essence, Yu is highlighting that there remains a notable amount of elastomeric properties associated with plastomers, even if there are some plastic ones (e.g. rigidity). In the absence of quantifying the characteristics of the elastomer further, the foregoing is taken to render obvious such a broad a term, as under BRI a compound with elastomeric properties is considered to be an elastomer. The dictionary definition of plastomer is a compound which possess qualities of elastomers and plastics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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