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 .
This communication is responsive to the claim set and Applicant’s Remarks filed 01/16/2026. Claims 1-6, 8, 10-12, 14-25 and 29 are pending. Elected claims 1-6, 8, 10 and 29 are under consideration in this Office Action.
Claims 11-12, 14-25 are withdrawn.
The 35 USC 102 rejection dated 10/20/2025 based on Wang (US2019/0276571) is WITHDRAWN due to Applicant’s persuasive argument.
The 35 USC 102 rejection dated 10/20/2025 based on Guo (US2013/0108814 A1) is WITHDRAWN due to Applicant’s persuasive argument.
The 35 USC 103 rejection dated 10/20/2025 based on Chen (US2010/0222530 Al)
is MAINTAINED.
No new grounds of rejection for the previously presented claims are set forth below. Thus, the following action is properly made final.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Claim Rejections - 35 USC§ 103
Claims 1-6, 8, 10 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al.
(US2010/0222530 Al).
Regarding Claim 1, Chen teaches that a propylene-based copolymer formed in present of a
catalyst composition including a substituted phenylene aromatic diester ([0015-0016]). Chen further
teaches that the propylene-based copolymer may contain I-butene ([0146]) in the amount of 0.001 wt.%
to 20 wt.% relative to propylene ([0147]), thereby the propylene-butene copolymer having a butene from
0.001 wt.% to 16.7 wt.%. Chen further teaches that the propylene-based copolymer having a xylene
soluble content from 0.5% to 40% ([00146]). Moreover, Chen discloses that the propylene-based
copolymer has a molecular weight distribution (MWD) from about 4 to about 15 ([0145]). Therefore,
Chen teaches a propylene-butene copolymer comprising propylene as a primary monomer, butene and a
substituted phenylene aromatic diester wherein the butene content, xylene soluble fraction and MWD of
the copolymer overlap the respective claimed ranges. In the case where the claimed ranges "overlap or lie
inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 I). It
would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed
invention to have selected the overlapping portion of the range taught by Chen.
Regarding Claim 2, as discussed above, Chen discloses that the propylene-butene copolymer
having a butene from 0.001 wt.% to 16.7 wt.%, overlapping the claimed 2 wt.% to 8 wt.%.
Regarding Claim 3, Chen discloses that the propylene-based polymer produced by the catalyst
composition has high isotacticity and broad molecular weight distribution ([0003]). The high isotacticity and broad molecular weight distribution renders the polymer having a high heat deflection temperature. A
high heat deflection temperature provides the polymer better stiffness at a higher temperature; however,
lower flexibility. Thus, one ordinary skilled artisan must balance the benefits of certain heat deflection
temperature values with the disadvantage of them. The heat deflection temperature values are, therefore,
considered a result effective variable by one of ordinary skill in the art before the effective filing date of
instant application. As such, without showing unexpected results, the claimed heat deflection temperature
values cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective iling date of instant application would have optimized, by routine experimentation, the heat deflection
temperature values, to reach the desired stiffness at a high temperature, balanced by the flexibility, since it
has been held that where the general conditions of the claim are disclosed in the prior art, discovering the
optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding Claim 4, polymers having a higher melting temperature would render the molded
articles of the polymers a better stiffness at a temperature lower than the melting temperature, however, a
higher melting temperature decreases processability of the polymers. Thus, one ordinary skilled artisan
must balance the benefits of certain melting temperature values with the disadvantage of them. The
melting temperature values are, therefore, considered a result effective variable by one of ordinary skill
in the art before the effective filing date of instant application. As such, without showing unexpected
results, the claimed melting temperature values cannot be considered critical. Accordingly, one of
ordinary skill in the art before the effective filing date of instant application would have optimized, by
routine experimentation, the melting temperature values, to reach the desired stiffness of the molded
articles of the polymers, balanced by the processability, since it has been held that where the general
conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding Claim 5, as discussed above, Chen discloses the propylene- butene copolymer having
a xylene soluble content from 0.5% to 40%, overlapping the claimed 2 wt. % to 7 wt. %.
Regarding Claim 6, Chen discloses the propylene- butene copolymer having a MFR 0.01 to 200
g/10 min ([0146]), overlapping the claimed 0.2 to 8 g/10 min.
Regarding Claim 8, as discussed in Claim 1, Chen discloses a propylene-butene copolymer
having the claimed monomer constitution and the claimed xylene soluble fraction and molecular weight
distribution. Therefore, Chen discloses a substantially identical copolymer of Claim 1. Accordingly, the
claimed flexural modulus is expected. "Products of identical chemical composition cannot have mutually
exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior
art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (See MPEP 2112.01 11). In this case, the content of butene is relatively low which
renders a higher flexural modulus.
Regarding Claim 10, Chen discloses the propylene- butene copolymer having a xylene soluble
content from 0.5% to 40% and a butene from 0.001 wt.% to 16.7 wt.%, thereby the xylene soluble
fraction/ butene content ratio being from 0.029 to 40, 000, overlapping the claimed 0.3 to 3.0.
Regarding Claim 29, as discussed in claim 10, Chen discloses the propylene- butene copolymer having a xylene soluble fraction/ butene content ratio being from 0.029 to 40, 000, overlapping the claimed 0.5 to 3.0.
Response to Arguments
Examiner agrees with Applicant’s argument that the substituted phenylene aromatic diester is a component of the claimed copolymer. Therefore, the 35 USC 102 rejections based on Wang and Guo are withdrawn.
Applicant's arguments on Chen (US2010/0222530 Al). have been fully considered but they are not persuasive.
Applicant’s argument: Chen fails to disclose any specific propylene-butene copolymer having a xylene soluble fraction of from about 1.0% to about 8.0% by weight and/or a molecular weight distribution (Mw/Mn) of greater than about 3.5.
Examiner’s response: The rejection of the claims over Chen is based on obviousness. Chen teaches a propylene-butene copolymer comprising propylene as a primary monomer, butene and a substituted phenylene aromatic diester wherein the butene content, xylene soluble fraction and MWD of the copolymer overlap the respective claimed ranges. In the case where the claimed ranges "overlap or lie
inside ranges disclosed by the prior art" a prima facie case of obviousness exists (See MPEP 2144.05 I). It
would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed
invention to have selected the overlapping portion of the range taught by Chen.
Applicant’s argument: the claimed propylene-butene copolymer achieved unexpected results.
Examiner’s answer: Examiner agrees that samples 20-28 and 32-36, which are the exemplary copolymers of the instant Claim 1, achieved superior results in term of reduced tensile strength and flexural modulus, compared to samples 18-19 and 37-38 which are propylene-ethylene copolymers. However, Examiner did not find the specification disclosing contents of butene of the propylene-butene copolymers. Applicant informed that the content being 1 wt.% to 8 wt.% at page 6 3rd paragraph of the Remarks filed 01/16/2026, while the instant claim 1 claims the content being from about 1 wt.% to 12 wt.%. Therefore, the unexpected results are not commensurate in scope with the instant Claim 1. The showing of unexpected results must be commensurate in scope with the claims. See MPEP 716.02(d).
If Examiner is correct that the instant specification has no disclosure of the butene content of the sample copolymers, Applicant is requested to submit an affidavit to that support unexpected results have been establish. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
Prosecution Insights