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 response to the restriction requirement filed 09/03/2025. Claims 1-6, 8, 10-12, 14-16, 19-25 are pending. Claims 7, 9, 13, 17-18 and 26-28 are cancelled. Claims 11-12, 14-16, and 19-25 are WITHDRAWN.
Claims 1-6, 8 and 10 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election without traverse of Claims 1-6, 8 and 10 in the reply filed on 9/3/2025 is acknowledged.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 8 and 10 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Wang et al. (US2019/0276571).
Regarding Claim 1, Wang teaches that a propylene-butene copolymer comprising: 88.0-96.0 wt. % of propylene; 4.0-12.0 wt. % of 1-butylene (claim 1), thereby propylene being the primary monomer of the copolymer. Attention is drawn to Table 1 (page 8). The inventive copolymers have a butene content from 4.6 wt. % to 8.7 wt.% and have a xylene soluble fraction of from 1.6 wt. % to 3.5 wt. %. The inventive copolymer has a molecular weight distribution (MWD) of 5.2 to 6.9. Thus, Wang teaches a propylene-butene copolymer having contents of propylene and butene, xylene soluble fraction and MWD in the claimed ranges, respectively.
Wang further teaches the copolymer is produced with a solid Ziegler-Natta catalyst and an internal electron donor ([0084]). Although wang is silent on the internal electron donor being a substituted phenylene aromatic diester, the internal electron donor is involved in the producing process, therefore, has no patentability weight. “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). As addressed above, Wang teaches a propylene-butene copolymer having monomers and a xylene soluble fraction in the respective claimed wt. % and MWD also falling within the claimed range. Therefore, Wang teaches a substantially identical propylene-butene copolymer, no matter the internal electron donor being a substituted phenylene aromatic diester or not.
Regarding Claim 2, the inventive copolymers 1-5 and 9 have a butene content from about 4.6 wt. % to 7.8 wt. %, falling within the claimed about 2 wt. % to about 8 wt. %.
Regarding Claim 4, the Tm of the inventive copolymers 3-5 is from 147.1 to 150.70C.
Regarding Claim 5, the inventive copolymers 1-2, 5-7 and 9 have a xylene soluble content from about 2 wt. % to 3.5 wt. %, falling within the claimed about 2 wt. % to about 7 wt. %.
Regarding Claim 6, the inventive copolymers 6 and 9 have MFR of 8 and 0.9 g/10min, respectively, falling within the claimed 0.2 g/10 min to 8 g/10 min.
Regarding Claim 8, the inventive copolymers 1-9 have a flexural modulus from 1117 to 1468 Mpa, falling within the claimed 1200 to 2000 Mpa.
Regarding Claim 10, the inventive copolymer 5 has a xylene soluble fraction/butene content ratio of 0.38, falling within the claimed 0.3 to 3.
Claims 1-3, 6 and 10 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Guo et al. (US2013/0108814 A1).
Regarding Claim 1, Guo teaches a propylene-butene-I random copolymer having butene-1 content of 1-6 mol%. Attention is drawn to Table 1 (page 6). The exemplary copolymers have butene-1 content from 3.4 – 5.5 mol%, which is 4.5 to 7.2 wt. %. The exemplary copolymers have a xylene soluble fraction of from 1.3 to 1.8 wt. % and a molecular weight distribution (Mw/Mn) of 3.9 to 4.5. Thus, Guo teaches a propylene-butene copolymer having contents of propylene and butene, xylene soluble fraction and MWD in the claimed ranges, respectively.
Guo further teaches the copolymer is produced with a solid catalyst and an internal electron donor ([0056]). Although Guo is silent on the internal electron donor being a substituted phenylene aromatic diester, the internal electron donor is involved in the producing process, therefore, has no patentability weight. “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). As addressed above, Guo teaches a propylene-butene copolymer having monomer content and a xylene soluble fraction content in the respective claimed wt. % and MWD also falling within the claimed range. Therefore, Guo teaches a substantially identical propylene-butene copolymer, no matter the internal electron donor being a substituted phenylene aromatic diester or not.
Regarding Claim 2, the exemplary copolymers have a butene-1 content from 4.5 to 7.2 wt. %.
Regarding Claim 3, the exemplary copolymers have a heat deflection temperature of 920C to 980C.
Regarding Claim 6, the example 3 copolymer has a melt index of 4 g/10 min.
Regarding Claim 10, the example 1 copolymer has a xylene soluble fraction/butene content ratio of 0.34.
Claim Rejections - 35 USC § 103
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 1-6, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US2010/0222530 A1)
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 1-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 filing 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 II). 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.
Conclusion
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.
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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.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763