DETAILED ACTION
The proposed amendments filed 8/3/2026 filed after the Final Office action have been
entered.
Claim(s) 1-14 are now pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Use of parentheses in Claims 1 and 5 – e.g. (230°C/2.16 Kg) – renders the scope of the claims indefinite, as it is unclear whether the limitations enclosed in parentheses are optional or required. For the purposes of examination, these limitations will be interpreted as being optional.
Claims 2-14 are further rejected under 35 U.S.C. 112(b) because they ultimately depend on claim 1 and therefore inherit the deficiencies thereof.
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 are rejected under 35 U.S.C. 103 as being unpatentable over WO2018117271 to Yasumoto et al. (as found on the IDS dated 5/9/2023). For the purposes of examination, citations for Yasumoto are taken from the U.S. equivalent version of the document, US 2020/0024434.
Regarding Claims 1-2 and 5-12, Yasumoto teaches a polypropylene resin composition comprising a masterbatch/heterophasic copolymer composition [0026] comprising 67-75 wt% component 1 [0012] (reading on the amount of instant (a) of claims 1 and 2) and 27-33 wt% component (2) [0012] (reading on the amount of instant (b) of claims 1, and 6). Component (1) is a propylene copolymer containing 0-3 wt% of ethylene or a C4-C10 alpha olefin [0031] with MFR values ranging from 105-117 g/10min [table 1] thereby reading on the (a) limitations of claims 1 and 5. Additionally, Yasumoto teaches component (2) as a propylene-ethylene copolymer comprising 25-35 wt% of ethylene derived units [0030] thereby reading on claims 1 and 7. Additionally, Yasumoto teaches the masterbatch/heterophasic copolymer has a melt flow rate of 5-15 g/10 min [0010] (thereby reasonably reading on a MFR of 3.0-12.0 g/10 min) and xylene solubles having an intrinsic viscosity of 6.0-8.0 dl/g [0014] therefore it is reasonably expected for the xylene soluble fraction of component (b) to have an intrinsic viscosity of 6.0-8.0 dl/g [0014] (thereby reasonably reading on a XS-IV range of 5-9 dl/g of claims 1 and 8).
Yasumoto is silent regarding Charpy impact resistance at 23°C and -20°C of claims 1 and 9-10.
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Yasumoto teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. Charpy impact resistance at 23°C and -20°C in the instantly claimed ranges - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Yasumoto teaches the ratio by weight of the masterbatch to the essential block polypropylene to be blended is 2 – 70: 98 – 30 [0092], corresponding a thermoplastic composition comprising 2 to 70 weight percent of the thermoplastic composition. Though the prior art heterophasic copolymer range is not identical to the claimed ranges (8-30 wt%; 8 to 25 wt%; and 10 to 20 wt%), it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding claims 3-4, Yasumoto teaches the thermoplastic composition of claim 1 wherein component (1) comprises preferably 1.0-2.5 wt% comonomer such as C4-C6-α-olefin [0031] reading on 1.0-1.5 wt% of butene-1.
Regarding claims 13-14, Yasumoto teaches the thermoplastic composition of claim 1 to make industrial articles such as automotive parts [0002].
Response to Arguments
Applicant’s arguments regarding Posch teaching away of the Charpy impact resistance, filed 8/3/2026, with respect to the rejection(s) of claim(s) 1 and 9-10 under Posch in view of Yasumoto and Wang have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yasumoto.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
