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.
Priority
3. This application is a 371 of PCT/EP2021/078781 10/18/2021.
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 20202544.1 10/19/2020 filed on 02/15/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 04/19/23, 04/09/25, and 08/01/25 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
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 1-12, 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-9, 11-12, 14-15 of copending Application No. 18/579043. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a polyolefin composition and a process for preparing the polyolefin composition wherein regarding instant claims 1-2, 9-10, the copending claim 1 discloses 20-30 wt% of at least one propylene homopolymer, overlapping instant claim 1 at end point of 30-60 wt% or instant claim 2 at end point of 30-50 wt% of at least one propylene homopolymer; 10-45 wt % of a blend of recycled plastic material comprising polypropylene and polyethylene in a ratio between 3:7 and 49.5:1, which is recovered from a waste plastic material derived from post-consumer and/or post-industrial waste, encompassing instant claim 1 range of 15-40 wt % of a blend of recycled plastic material comprising polypropylene and polyethylene in a ratio between 3:7 and 10:1; 15-25 wt % of glass fibers, overlapping instant claim 1 range of 17-50 wt% or instant claim 2 range of 20-50 wt% glass fiber; 0.5-2.5 wt % of at least one coupling agent, wherein copending claim 8 discloses the blend of recycled plastic material comprising polypropylene and polyethylene and having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of 5-100 g/10 min, encompassing instant claim 1 range of 8-14 g/10 min or instant claim 2 range of 10-12 g/10 min, wherein the copending claim 3 discloses polyolefin composition according claim 1, having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) of at least 7 g/10 min, fall into instant claim 1 range of at least 2 g/10 min; copending claim 4 discloses a tensile modulus (ISO 527-2) of at least 4 GPa; and copending claim 6 discloses an impact strength (ISO179-1, Charpy 1 eA+23° C.) of at least 5.0 kJ/m.sup.2.
A prima facie case of obviousness exists for the composition, wherein copendng claims discloses 10-45 wt % of a blend of recycled plastic material comprising polypropylene and polyethylene in a ratio between 3:7 and 49.5:1, which is recovered from a waste plastic material derived from post-consumer and/or post-industrial waste, 15-25 wt % of glass fibers, blend of recycled plastic material comprising polypropylene and polyethylene and having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of 5-100 g/10 min, overlapping and/or encompassing the requirement of instant claims 1-2. 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).
The examiner takes note of the fact that the copending claim range of 20-30 wt% of at least one propylene homopolymer overlaps the instant claim 1 range of 30-60 wt% or instant claim 2 range of 30-50 wt% at least one propylene homopolymer at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Regarding instant claims 3-5, copending claim 7 discloses at least one polypropylene homopolymer (PPH-1) having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of range of 10 to 30 g/10 min, at least one polypropylene homopolymer (PPH-2) having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of 60 to 100 g/10 min, and at least one polypropylene homopolymer (PPH-3) having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of 100 to 150 g/10 min.
Regarding instant claims 6-7, copending claim 9 discloses the at least one heterophasic propylene copolymer having a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range of 10 to 25 g/10 min.
Regarding instant claim 8, copending claim 3 discloses a melt flow rate MFR.sub.2 (230° C., 2.16 kg, measured according to ISO 1133) in the range between 8 and 15 g/10 min, fall into instant claim range of 3 to 17 g/10 min.
Regarding instant claim 11, copending claim 11 discloses the glass fibers have an average length of 2.0 to 10.0 mm.
Regarding instant claim 12, 14-15, are same as copending claims 12, 14-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 5, 7-12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance,
Claim 5 recites the broad recitation “5 to 15 g/10 min” in line 5, and the claim also recites “preferably of 5 to 10 g/10min, more preferably of 8 g/10 min” in lines 5-6 which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “10 to 30 g/10 min” in line 8, and the claim also recites “preferably of 15 to 25 g/10min, more preferably of 20 g/10 min” in lines 8-9 which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “60 to 100 g/10 min” in line 11, and the claim also recites “preferably of 70 to 80 g/10min, more preferably of 75 g/10 min” in lines 11-12 which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “100 to 150 g/10 min” in line 14, and the claim also recites “preferably of 100 to 130 g/10min, preferably of 125 g/10 min” in lines 14-15 which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “600 to 1000 g/10 min” in line 17, and the claim also recites “preferably of 700 to 900 g/10min, preferably of 800 g/10 min” in lines 17-18 which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “≤ 1.5 g/10 min” in line 20, and the claim also recites “preferably in the range between 0.15 to 0.5 g/10min, more preferably of 0.3 to 0.45 g/10 min, even more preferably of 0.2 g/ 10 min” in lines 20-22 which is the narrower statement of the range/limitation.
Claim 7 recites the broad recitation “15 to 25 g/10 min” in line 2, and the claim also recites “preferably of 15 to 20 g/10 min, more preferably of 18 g/10 min” in lines 2-3 which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “2 to 20 g/10 min” in line 3, and the claim also recites “preferably between 3 and 17 g/10min, more preferably between 5 and 15 g/10min, even more preferably between 10 and 15 g/10min” in lines 4-5 which is the narrower statement of the range/limitation.
Claim 9 recites the broad recitation “at least 4.0 GPa” in line 3, and the claim also recites “preferably of at least 4.5 GPa; more preferably of at least 5.5 GPa, preferably of at least 6 GPa, more preferably at least 6.5 GPa, even more preferably at least 6.8 GPa, in particular in a range between 4 and 14 GPa, more in particular in a range between 4.5 and 12 GPa” in lines 3-5 which is the narrower statement of the range/limitation.
Claim 10 recites the broad recitation “at least 5.0 kJ/m²” in line 3, and the claim also recites “preferably of at least 6.0 kJ/m², more preferably at least 7 kJ/m², still more preferably of at least 7.5 kJ/m², more preferably of at least 8 kJ/m², even more preferably of at least 8.5 kJ/m², in particular in a range between 5.0 and 12.0 kJ/m², more in particular in a range between 5.5 and 10 kJ/m²” in lines 3-6 which is the narrower statement of the range/limitation.
Claim 11 recites the broad recitation “2.0 to 10.0 mm” in line 3, and the claim also recites “preferably in the range of 2.0 to 8.0 mm, even more preferably in the range of 2.0 to 6.0 mm and a diameter of from 5 to 20 µm, more preferably from 8 to 18 µm, still more preferably 8 to 15 µm” in lines 3-5 which is the narrower statement of the range/limitation.
Claim 12 recites the broad recitation “functionalized polypropylene” in line 3, and the claim also recites “in particular a polypropylene functionalized with maleic
anhydride (MAH)” in lines 3-4 which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Potential Allowable Subject Matter
9. Claims 1-12, 14-15 are declared allowable over the prior art of record and if the 112 rejection is overcome (by amendment) and obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
10. The following is an examiner’s statement of reasons for allowance:
Closest prior arts are Kahlen (WO 2018/206/353), and Kahlen (WO 2015/ 169690, hereinafter called “Kahlen-1”).
Claim 1 is directed to a polyolefin composition comprising a) 30-60 wt% (based on the overall weight of the polymer composition) of at least one polypropylene homopolymer, b) 15-40 wt% (based on the overall weight of the polymer composition) of a blend of recycled plastic material comprising polypropylene and polyethylene in a ratio between 3 : 7 and 10:1, which is recovered from a waste plastic material derived from post-consumer and/or post-industrial waste having a melt flow rate MFR₂ (230°C, 2.16 kg, measured according to ISO 1133) in the range of 8-14 g/10 min, c) 17-50 wt% (based on the overall weight of the polymer composition) of glass fibers; and d) 0.5-2.5 wt% (based on the overall weight of the polymer composition) of at least one coupling agent, and optionally further additives, wherein the sum of all ingredients add always up to 100 wt%, wherein the polyolefin composition has a melt flow rate MFR₂ (230°C, 2.16 kg, measured according to ISO 1133) of at least 2 g/10 min; a tensile modulus at 23°C of at least 4 GPa (ISO 527-2), and an impact strength (ISO179, charpy leA +23°C) of at least 5 kJ/m².
Kahlen discloses a polyolefin composition comprising A) 40 to 80 wt.-%, based on the total weight of the polyolefin composition, of a blend of at least two different polyolefins, comprising at least 65 wt.-%, based on the total weight of polyolefin blend, of polypropylene, B) 14 to 60 wt.-%, based on the total weight of the polyolefin composition, of a heterophasic polypropylene (HECO), wherein i) the melt flow rate MFR2 (230 °C, 2.16 kg) measured according to ISO 1133 of the heterophasic polypropylene is at least 30 g/10 min, ii) the relative amount of the xylene cold soluble (XCS) fraction is at least 10.0 wt.-%, and the intrinsic viscosity of the XCS fraction of the heterophi polypropylene measured in decalin according to DIN ISO 1628/1 at 135°C is at least 2.0 dl/g, C) 3 to 12 wt.-%, based on the total weight of the polyolefin composition, of a copolymer of ethylene and one or more C4 to C19 alpha olefin having a density measured according to ASTM D792 in the range of 850 to 885 g/m3 and a melt flow rate MFR.sub.2 (190 °C, 2.16 kg) measured according to ISO 1133 in the range of 0.05 to 5 g/10min, and D) 3 to 12 wt.-%, based on the total weight of the polyolefin composition, of a reinforcing mineral filler such as glass fiber, the blend of at least two different polyolefins is a recycled polyolefin, which is recovered from waste plastic material derived from post-consumer and/or post-industrial waste, wherein the polypropylene (PP) may comprise at least two, e.g. at least three or four, more preferably three or four, yet more preferably consists of three or four, polypropylene homopolymer fractions (PPl), (PP2), (PP3) and optionally (PP4), the three or four polypropylene fractions (PPl), (PP2), (PP3) and optionally (PP4) differ from each other by the melt flow rate MFR.sub.2 (230 °C) measured according to ISO 1133, wherein the polyolefin composition preferably has Charpy Notched Impact Strength (according to ISO 179/leA, measured at +23°C) in the range of 4.5 to 10.0 kJ/m.sup.2 and tensile modulus in range of 1200 to 188 MPa, and melt flow rate (MFR) of from 0.5 to 300 g/10min (page 2, lines 15-, page 3, lines -27, page 16, lines 20-. Page 18, lines -13, page 24, lines 7-23, page 26, lines 30-, page 27, lines -23). Kahlen does not disclose the claimed individual polypropylene homopolymer and blend of recycled plastic comprising polypropylene and polyethylene in ration 3:7 to 10:1 having melt flow rate (MFR) of from 8 to 14 g/10min, and the amount of glass fiber is different from claimed amount. Further, Kahlen does not disclose claimed amount of coupling agent and tensile modulus.
Kahlen-1 relates to a polypropylene-polyethylene blend comprising: A) 75 - 90 wt% of a blend of A1) 30 - 70 wt% of polypropylene and A-2) 70 to 30 wt% of polyethylene and B)10 - 25 wt% of a compatibilizer being a heterophasic polyolefin composition comprising: B-1) 55 - 90 wt% of a polypropylene with an MFR2 between 1.0 and 300 g/10 min (according to ISO 1133 at 230°C at a load of 2.16 kg) and B-2) 45 - 10 wt% of a copolymer of ethylene and propylene or C4 to C10 alpha olefin with a glass transition temperature Tg (measured with dynamic-mechanical thermal analysis, DMTA, according to ISO 6721-7) of below -25 °C and an intrinsic viscosity (measured in decalin according to DIN ISO 1628/1 at 135 °C) of at least 3.0 dl/g, whereby the blend has (i) a Charpy Notched Impact Strength (according to ISO 179-1eA, measured at 23 °C) of at least 2% higher than for the same blend without the compatibilizer B) (ii) a Flexural Modulus (according to ISO 178) of at least 3% higher than for the same blend without the compatibilizer B) and additionally (iii) a heat deflection resistance (determined with DMTA according to ISO 6721- 7) expressed by the temperature at which the storage modulus G' of 40 MPa is reached (T(G' = 40 MPa)) which is at least 4°C higher than for the same blend without the compatibilizer B) (claim 1), wherein Component (A) is a recycled material, which is recovered from waste plastic material derived from post-consumer and/or post-industrial waste (claim 3), wherein the blend may be used with a virgin polypropylene and glass fibers or talc (page 12, para 3; page 13, para 1). The talc may be treated with a coupling agent page 13, para 2). However, Kahlen-1 does not disclose all of the claimed components. Prior arts do not suggest or disclose claimed polyolefin composition.
Conclusion
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