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 .
Claim Interpretation
In claims 1 and 5-6, the required blend (A)’s weight ratio of polypropylene to polyethylene of 19:1 to 7:3 is converted to content of polyethylene in total blend of polyethylene and polypropylene which is equal to 1/(1+19) x 100 =5 wt% and 3/(3+7) x100= 30 wt%. Thus, the claimed limitation of the ratio range of 19:1 to 7:3 equals the requirement of 5 to 30 wt% of polyethylene in the blend (A).
The requirement of component d) a stabilizer or mixture of stabilizers in claims 1, 5-6 and 11 from 0 to 1.0 wt%, is determined to be optional.
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.
Claims 1, 4-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Duranel et al. WO2019/224129 A1, with evidentiary support reference EngageTM 8100 Technical Data Sheet.
Duranel discloses polypropylene-based blend composition comprising post-consumer resins, having a good balance of stiffness and impact properties (Abstract, page 2, lines 23-24).
Regarding claims 1 and 4-8, Duranel teaches polypropylene based composition with melt flow rate of 1.0 to 8.0 g/10 min which comprises (page 50, claim 1; page 53, claim 14; page 21, line 14):
- 35 to 80 wt% of component A, which is a blend of recycled polypropylene and recycled polyethylene derived from post-consumer waste, wherein the content of recycled polyethylene ranges from 5 to 15wt%, which corresponds to applicant’s component a) and blend (A).
- 10 to 60 wt% of component B, which is a polypropylene resin which can be a random copolymer of polypropylene, and which has a melt index (MFR2) of 0.1 to 5.0 g/10 min (page 50, claim 1; page 52, claim 8 ; page 22, line 6 and 18-22). Duranel’s component B corresponds to applicant’s component c).
-0.1 to 10 wt% of component D, which is selected to be an elastomeric copolymer of ethylene with 1-octene (Duranel page 52, claims 8-9; page 53, claim 12; page 30, line 8) with specific example of ethylene octene copolymer, EG8100 from Dow Chemical having a melt index of 1.0g/10 min, melt temperature of 60 oC and density of 0.870 g/cm3 (as evidenced by the Engage 8100 Technical Data Sheet, page 1), which meets applicant’s compatibilizer (B), and corresponds to component b) (instant claims 7-8).
Duranel’s polypropylene-based blend correspond to the required polyethylene-polypropylene composition with overlapping melt flow rate and the amounts of components a), b) and c). In the case 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the olefin materials disclosed, the overlapping range of the prior art is sufficient to support an obviousness rejection.
Duranel is silent on the tensile modulus property of the polypropylene-based blend composition, but highlights that the inventive blends which comprise the recycled polypropylene and polyethylene have a desired balance of stiffness and impact properties (page 2, summary of the invention). Applicant’s specification also recognizes the same goals of achieving the balance of high stiffness and high impact for the polypropylene-polyethylene blends (page 5, line 26). Additionally, Duranel uses the same twin screw extrusion process to create the blend composition as the instant specification (Duranel page 42, line 15; instant specification page 17, Table 1 legend)
It would have been obvious for a person having ordinary skill in the art at the effective filing date of the invention to choose components a), b) and c) corresponding to the claimed, from expressly disclosed suitable components and their respective amounts with the reasonable expectation of achieving desired tensile modulus results.
Regarding claim 9, as discussed when addressing claim 1, Duranel discloses that component A, a polypropylene and polyethylene blend is derived from post-consumer waste, which is a domestic household waste (page 18, line 8). Duranel is silent on the amount of limonene. However, as noted by the applicant, limonene is present as a contaminant in the recycled polymer, and further demonstrates the presence of > 0.1ppm of limonene in a recycled polypropylene polyethylene blend originating from household trash (instant specification, page 6, line 7; page 17, line 10; Table 1, Blend A). Thus, Duranel’s component A also derived from household waste would be reasonably expected to possess similar level of limonene.
Regarding claims 10 and 15, Duranel teaches (page 22, lines 18-22) random copolymer of propylene and ethylene where the comonomer ethylene content can range from 1 to 6 wt%, overlapping the claimed requirement. In the case 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the absence of showing of the criticality of the claimed range and owing to the closeness of the disclosed random copolymer, the overlapping range of the prior art is sufficient to support an obviousness rejection. Duranel clearly indicates that component B can be selected to a random propylene copolymer which are preferably copolymers of propylene and ethylene (page 22, line 22), thus guiding a person having ordinary skill in the art at the effective filing date of the invention towards the desired propylene-ethylene copolymer derived from propylene and ethylene monomers only (instant claim 15).
Regarding claim 11, Duranel discloses (page 45, examples E6 and E7), where composition is derived from components corresponding to a), b) and c) and which add to 100 wt%. Duranel notes that different embodiments would be apparent to a person skilled in the art from the provided disclosure (page 16, lines 16-24). As discussed, when addressing claim 1, Duranel discloses overlapping ranges of the required components a), b) and c). Based on the Duranel’s disclosure, it would have been obvious for a skilled artisan to generate a polypropylene blend, derived from 80 wt% Duranel’s component A (recycled polypropylene and polyethylene blend), 10 wt% component B (random propylene copolymer) and 10 wt% elastomer component D (ethylene octene copolymer), which adds to 100 wt%.
Response to Arguments
Applicant's arguments filed on 03/16/2026 have been fully considered, see the responses below.
Amended claim 10 which removes the adverb “preferably”, overcomes the 35 USC 112 (b) rejection.
Applicant argues that Duranel’s component B is preferably a heterophasic propylene copolymer resin and not a random polypropylene copolymer as required by claim 1. Duranel provides a clear disclosure that component B can be a propylene random copolymer and that if the propylene resin is a random copolymer of propylene then the random copolymers are copolymers of propylene and ethylene (Duranel page 22, lines 18-22). Patents are relevant as prior art for all they contain and preferred embodiments do not constitute a teaching away for a broader disclosure. See MPEP 2123 I. and II.
Applicant adds that Duranel’s component D is described as “one or more elastomers” which is distinct from the “plastomer” compatibilizer required by claim 1. As discussed when addressing claim 1, Duranel teaches ethylene octene copolymer, EG8100 from Dow Chemical (page 30 line 8, and in examples E12 and E14, page 48, Table 8), which has the required combination of properties of DSC melting point of 60 oC and the required MFR2 of 1.0g/10 min and density 0.870 g/cm3. Duranel does not need to label the elastomer as plastomer, since it teaches the required ethylene octene copolymer, it reads on the claimed structure and its properties.
Applicant argues that the action has not established that selecting components from Duranel’s disclosed range would necessarily or predictably result in the desired tensile modulus range. While it is acknowledged that the Duranel does not provide the values of tensile modulus, Duranel discusses balancing stiffness (tensile modulus is a quantitative measure of stiffness) and impact properties, thus guiding a skilled artisan towards blend compositions which are similar to applicant’s. The polymer blends that fully correspond to the claimed compositions are within the disclosure of Duranel (as discussed above) and owing to the closeness of the disclosed materials to that of the instant specification, it would necessarily follow the blends provided by Duranel would possess the desired tensile modulus.
Applicant finally discusses that the present application demonstrated unexpected results which are achieved by the claimed combination. Applicant notes that the loss of stiffness by adding C2C8 plastomer are marginal, while random propylene copolymer results in boosting effect with respect to impact properties. Inventive IE1 is compared to CE4, where it is noted that in the inventive example stiffness is slightly improved with marginal loss in impact strength. Applicant’s argument is not convincing since addition of a high modulus material random polypropylene copolymer (CE2, which is pure random propylene copolymer has a modulus 1006 MPa), and reducing the amount of material which increases impact strength (the C2C8 plastomer), would result in an expected increased modulus and decreased impact strength in the final IE1 blend. Thus, applicant’s data in IE1 and CE4 merely demonstrates an expected modulus and impact strength behavior of the blended polypropylene. "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967). See MPEP 716.02 (c) II.
Applicant’s arguments against Duranel are not convincing and the reference continues to provide the foundation for maintaining the rejection.
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.
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/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765
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