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 .
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.
3. Claims 3, 5, 12 have been amended, claims 1-2 have been cancelled, and claims 3-15 are pending as amended on 04/24/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 04/24/26. In particular, claims 3, 5, 12 have been amended to change recitation “2.2 dl/g” to “3.3 dl/g.” Now, the scope of independent claims 3, 5, 12 and the claims depends from claims 3, 5, 12 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
7. This application is a 371 of PCT/EP2021/068498 07/05/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 20184412.3 07/07/2020 filed on 01/03/23.
Response to Amendment
8. Applicant's amendment filed on 04/24/26, has been fully considered and entered.
Response to Arguments
9. Applicant's arguments with respect to rejection of claims 3-15 under 35 U.S.C. 103 as being unpatentable over Kahlen (WO 2020/070175) filed on 04/24/26, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn in view of applicants statements of “35 USC 102(b)(2)(C) applies. That is, the subject matter disclosed in Kahlen and the claimed invention of the present application were, not later than the effective filing date of July 7, 2020, owned by, or subject to an obligation of assignment to, the same person, namely Borealis Ag. Accordingly, Kahlen is disqualified as prior art for the present application and the present rejections under 35 USC 103.”
10. Applicant's arguments with respect to rejection of claims 3-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,674,027 in view of Kahlen (US 2017/0044359; hereinafter called “Kahlen-1”) filed on 04/24/26, have been fully considered but are moot in view of amendment. In view of amendment to claims, a new ground(s) of rejection is made.
11. Applicant's arguments with respect to rejection of claims 3-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No17/277651 in view of Kahlen (US 2017/0044359; hereinafter called “Kahlen-1”) filed on 04/24/26, have been fully considered but are moot in view of abandonment of this copending application. Accordingly, the previous rejections have been withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,674,027 in view of Kahlen (US 2017/0044359; hereinafter called “Kahlen-1”).
Regarding instant claims 3-4, patented claim 10 discloses a process of making the patented claim 1 composition comprising melt mixing the blend: a) 80 to 97 wt. % of a blend (A) comprising A-1) polypropylene and A-2) polyethylene, wherein the weight ratio of polypropylene to polyethylene is from 3:7 to 13:7 (fall into instant claimed ratio of 19:1 to 1:19), and b) 3 to 20 wt. % of a compatibilizer (B) (fall into instant claimed range of 1 to 35 wt%) being a heterophasic random copolymer comprising a random polypropylene copolymer matrix phase and an elastomer phase dispersed therein, whereby the heterophasic random copolymer has: a xylene insoluble content (XCI) of from 65 to 88 wt % (overlapping instant claimed range of 60 to 80 wt% , and a xylene soluble content XCS of 12 to 35 wt. % (overlapping instant claimed range of 20 to 40 wt%) xylene soluble content fraction having an intrinsic viscosity of 1.2 dl/g to less than 3.0 dl/g (close enough to instant claimed range of 3.3 dl/g to less than 6.0 dl/g), and wherein xylene insoluble content (XCI) and xylene soluble content (XCS) add up to 100 wt %, patented claim 3 discloses a content of units derived from ethylene in the xylene insoluble (XCI) fraction of from 2.0 to 6.0 wt % and/or whereby a content of units derived from ethylene in the xylene soluble (XCS) fraction of 25.0 to 38.0 wt % (fall into instant claimed range of 20 to 40 wt%), wherein patented claim 4 discloses MFR2 is in the range of 5 to 15 g/10 min (fall into patented claimed range of 2 to 30 g/10min).
A prima facie case of obviousness exists for the intrinsic viscosity of xylene soluble content fraction where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
A prima facie case of obviousness exists for the process, wherein patented claims disclose xylene insoluble content (XCI) of 65 to 88 wt %, a xylene soluble content (XCS) of 12 to 35 wt %, overlapping the requirement of claim 3. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Patented claims do not disclose instant claimed melting temperature of compatibilizer (B).
However, Kahlen-1 discloses blends of polypropylene and polyethylene, which contain a specific kind of compatibilizer comprising propylene homopolymer or an isotactic random copolymer of propylene with ethylene with melting temperature in the range of from 155 to 168 0C (para [0001], [0059]-[0070]), fall into claimed range of 155 to 168 0C.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify patented claims with compatibilizer comprising propylene homopolymer or an isotactic random copolymer of propylene with ethylene as taught by Kahlen-1. The rationale to do so would have been motivation provided by of Kahlen-1 that to do so would provide optimum temperature in the range of from 155 to 168 0C for proper melt mixing of the polypropylene and polyethylene blend.
Since the patented process involve the manufacturing of the composition of claim 3, the composition of claimed 3 properties disclosed in the dependent claims are being considered as a part of the claimed composition itself.
Regarding instant claims 5-8, 11-15, patented claims 1, 11 discloses an article composition comprising melt mixing the blend: a) 80 to 97 wt. % of a blend (A) comprising A-1) polypropylene and A-2) polyethylene, wherein the weight ratio of polypropylene to polyethylene is from 3:7 to 13:7 (fall into instant claimed 65 to 99 wt and ratio of 19:1 to 1:19), and b) 3 to 20 wt. % of a compatibilizer (B) (fall into instant claimed range of 1 to 35 wt%) being a heterophasic random copolymer comprising a random polypropylene copolymer matrix phase and an elastomer phase dispersed therein, whereby the heterophasic random copolymer has: a xylene insoluble content (XCI) of from 65 to 88 wt % (overlapping instant claimed range of 60 to 80 wt% , and a xylene soluble content XCS of 12 to 35 wt. % (overlapping instant claimed range of 20 to 40 wt%) xylene soluble content fraction having an intrinsic viscosity of 1.2 dl/g to less than 3.0 dl/g (close enough to instant claimed range of 3.3 dl/g to less than 6.0 dl/g), and wherein xylene insoluble content (XCI) and xylene soluble content (XCS) add up to 100 wt %, a tensile modulus of at least 800 MPa, the ratio of MFR.sub.2 (blend (A))/MFR.sub.2 (compatibilizer(B)), is in the range 0.5 to 1.5 (fall into claimed range of 0.5 to 2), content of limonene 1 to 100 ppm (fall into claim 8 range of 0.1 to 100 ppm), patented claim 3 discloses a content of units derived from ethylene in the xylene insoluble (XCI) fraction of from 2.0 to 6.0 wt % and/or whereby a content of units derived from ethylene in the xylene soluble (XCS) fraction of 25.0 to 38.0 wt % (fall into instant claimed range of 20 to 40 wt%), wherein patented claim 4 discloses MFR2 is in the range of 5 to 15 g/10 min (fall into patented claimed range of 2 to 30 g/10min).
A prima facie case of obviousness exists for the intrinsic viscosity of xylene soluble content fraction where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
A prima facie case of obviousness exists for the process, wherein patented claims disclose xylene insoluble content (XCI) of 65 to 88 wt %, and a xylene soluble content (XCS) of 12 to 35 wt %, overlapping the requirement of claims 5, 12. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Patented claims do not disclose instant claimed melting temperature of compatibilizer (B).
However, Kahlen-1 discloses blends of polypropylene and polyethylene, which contain a specific kind of compatibilizer comprising propylene homopolymer or an isotactic random copolymer of propylene with ethylene with melting temperature in the range of from 155 to 168 0C (para [0001], [0059]-[0070]), fall into claimed range of 155 to 168 0C.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify patented claims with compatibilizer comprising propylene homopolymer or an isotactic random copolymer of propylene with ethylene as taught by Kahlen-1. The rationale to do so would have been motivation provided by of Kahlen-1 that to do so would provide optimum temperature in the range of from 155 to 168 0C for proper melt mixing of the polypropylene and polyethylene blend.
Regarding instant claim 9, patented claim 8 discloses Charpy notched impact strength (1eA) (non-instrumented, ISO 179-1 at +23° C.) of at least 6.0 kJ/m2.
Regarding instant claim 10, patented claim 8 discloses elongation break of at least 75%
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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