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 Objections
Claims 8 and 15 are objected to because of the following informalities:
Regarding claim 8, the structure provided of the phosphate ester is unclear and should be replaced with a structure with clearer variables. The structure in the PG-PUB and the specification of the instant invention is clear and can be used for examination purposes.
Regarding claim 15, in line 2, “phosphate” should be --phosphite--.
Appropriate correction is required.
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.
Claims 1-8, 10, 11, 14-16, 18, 19, and 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang et al. (US 2008/0171834).
Regarding claims 1-4, 7, 8, 10, 11, 14-16, 18, and 19, Tang et al. teaches a composition comprising a polypropylene homopolymer, 500 ppm of Irganox 1010, 1000 ppm of Irgafos 168, 350 ppm of HPN-20E, 650 ppm of NA-11, 210 ppm of either zinc or calcium stearate, and 390 ppm of DHT4A (¶48-55; Example 1, Samples B and C). Irganox 1010 is pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate) (first sterically hindered phenolic antioxidant) (see, Irganox 1010 data sheet included herewith); Irgafos 168 is tris(2,4-di-tert-butylphenyl) phosphite (phosphite antioxidant) (see, Irgafos 168 synonym sheet included herewith); HPN-20E is calcium hexahydrophthalic acid (dicarboxylate metal salt nucleating agent; ¶21); NA-11 is sodium 2,2’-methylene-bis-(4,6-di-tert-butylphenyl) phosphate (phosphate ester nucleating agent; ¶26); zinc stearate and calcium stearate are fatty acid metal salt acid scavengers; and DHT4A is a hydrotalcite (acid scavenger; ¶50). Tang et al. additionally teaches that the composition is used to make plastic tubes and pipes (¶31).
Tang et al. does not teach that the composition displays an oxidation induction time when tested according to ISO Test 11357-6 (2018) at 210° C of greater than 40 minutes, more specifically of greater than about 44 minutes. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., an induction time of greater than 40 minutes, more specifically of greater than about 44 minutes, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the 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 there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claims 5 and 6, Tang et al. also teaches that HPN-68, which is disodium bicyclo[2.2.1]heptane-2,3-dicarboxylate, can also be used in the inventive composition (¶24; see, HPN 68 data sheet included herewith).
Regarding claim 22, the polypropylene is present in about 99.7% by weight of Samples B and C in Example 1 (calculated by Examiner; assuming 100 parts by weight of polypropylene, converting all amounts of ppm to parts by weight, and taking the percentage of polypropylene).
Regarding claim 23, this claim is a product-by-process claim for making the polypropylene polymer. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, there is no evidence on the record that the method of producing the polypropylene polymer results in a substantially different polymer composition. Therefore, the polypropylene polymer of the claim is considered the same as the polypropylene polymer of the prior art.
Regarding claim 24, as stated above, Tang et al. teaches that the composition is used to make plastic tubes and pipes (¶31). This claim merely describes the basic structure of a tube or a pipe and is therefore met by the teaching of Tang et al.
Regarding claim 25, this claim is a product-by-process claim for making the piping structure. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, there is no evidence on the record that the method of producing the piping structure results in a substantially different pipe from that of the prior art. Therefore, the piping structure of the claim is considered the same as the piping structure of the prior art.
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.
Claims 12, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 2008/0171834) as applied to claim 1 above, and further in view of Hoelzl et al. (US 2015/0087755).
Regarding claim 12, Tang et al. teaches the composition of claim 1 as set forth above. Tang et al. does not teach that the composition comprises a second sterically hindered phenolic antioxidant that is a benzyl compound. However, Hoelzl et al. teaches a composition for making pipes (¶153) that comprises a pipe grade polypropylene, Irganox 1010, Irganox 1330, and Irgafos 168 (¶212-215). Irganox 1330 is 1,3,5-Tri-(2,6-tert-butyl-4-hydroxybenzyl)-2,4,6-trimethylbenzene, which is a benzyl phenolic antioxidant (¶214). Tang et al. and Hoelzl et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polypropylene compositions containing stabilizer packages used for making pipes. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add the benzyl phenolic antioxidant, as taught by Hoelzl et al., to the composition, as taught by Tang et al., and would have been motivated to do so because Hoelzl et al. teaches that this compound is a desired antioxidant to be used in conjunction with pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate) (Irganox 1010) in polypropylene compositions used to make pipes to ensure proper protection of the composition from oxidation.
Regarding claims 20 and 21, Tang et al. teaches the composition of claim 1 as set forth above. Tang et al. does not teach that the polypropylene polymer is a random copolymer with a melt flow rate of from about 0.01 g/10 min to about 3 g/10 min. However, Hoelzl et al. teaches a composition for making pipes (¶153) that comprises a pipe grade polypropylene random copolymer with a melt flow index of 0.25 g/10 min, Irganox 1010, Irganox 1330, and Irgafos 168 (¶212-215). At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use a polypropylene that is a random copolymer with a melt flow index of 0.25 g/10 min, as taught by Hoelzl et al., in the composition, as taught by Tang et al., and would have been motivated to do so because Hoelzl et al. teaches that a polypropylene polymer with these characteristics is a pipe grade polymer and would be desired to use in compositions that are for making pipes.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767