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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on September 25, 2025 is acknowledged.
Claims 11-20 have been withdrawn from consideration as being directed towards the non-elected invention.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 8 recites the limitation “wherein said composition comprising a monofilament or multifilament fiber.”
There is no discussion in the originally filed disclosure for the composition containing a monofilament fiber or a multifilament fiber. The originally filed disclosure discusses forming a fiber from the composition but the composition in and of itself containing a monofilament or multifilament fiber is not taught.
Claim Interpretation
Ultra-high molecular weight polyethylene is interpreted as having a molecular weight of at least about 500,000 g/mol, aligned with para 0004 of the published 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 3 and 6-8 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.
Claim 3 recites the limitation “said trimethylbenzene solvent”. There is no antecedent basis for this limitation. The claim previously recites trimethylbenzene and has the polyethylene at least partially dissolved in said trimethylbenzene but does not positively recite trimethylbenzene solvent. It is unclear if claim 3 is reference the trimethylbenzene previously claimed or a different trimethylbenzene. For the purpose of compact prosecution and prior art application, Examiner will interpret claim 3 as encompassing said trimethylbenzene, as previously claimed.
Claim 6 recites the limitation “said composition is a dry solid.” Claim 2 recites the limitation “wherein the trimethylbenzene is a liquid solvent.” It is unclear how the composition can contain a liquid solvent and be a dry solid. In the originally filed disclosure, the polyethylene-trimethylbenzene being further treated, such as by heating, to evaporate most or all of the trimethylbenzene solvent to form a dry solid (se para 0066 of published application). The composition as a dry solid would not contain the liquid solvent. It is unclear if the claimed intends the composition to contain trimethylbenzene as a liquid solvent while being a dry solid or is directed towards the intended use of the composition to be further treated, such as by heating, to form a dry solid. For the purpose of compact prosecution and prior art application, Examiner will interpret claim 6 as encompassing the intended use of the composition to form a dry solid.
The remaining claims are rejected based on their dependency on rejected claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites the limitation “wherein said trimethylbenzene comprises 1,2,4-trimethylbenzene”, however, claim 5, upon which claim 7 depends, already recites the limitation “wherein said trimethylbenzene comprises 1,2,4-trimethylbenzene.” Therefore claim 7 is an improper dependent claim as not further limiting the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104371412 to Dongguan.
NOTE: The English Machine Translation provided by Applicant is being used for the prior art mapping.
Regarding claims 1-4, Dongguan teaches a slurry (composition) comprising a polyethylene wax and a solvent, including trimethylbenzene, that dissolves the wax (Dongguan, abstract), reading on a mixture of polyethylene and trimethylbenzene (claim 1) and the trimethylbenzene is a liquid solvent and the polyethylene is at least partially dissolved in the trimethylbenzene (claim 2).
Regarding claim 3, Dongguan teaches putting the wax and the solve in a dissolving kettle and heating till the wax is dissolved (Dongguan, abstract), reading on the polyethylene being fully dissolved in the trimethylbenzene solvent.
Regarding claim 4, Dongguan teaches at least one of methylbenzene, dimethylbenzene, trimethylbenzene, tetramethylbenzene, butyl acetate and mineral oil (Dongguan, abstract, para 0015), reading on at least one additional liquid solvent.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 2018/0305530 to Wang.
Regarding claims 1-2 and 4-5, Wang teaches a polyethylene formed using a solvent, including pseudocumene (1,2,4-trimethylbenzene) (Wang, abstract, Figure 1, para 0008-0036, 0145-0151, 0176), which the exiting stream would read on a composition comprising a mixture of polyethylene and trimethylbenzene, specifically 1,2,4-trimethylbenzene. Wang teaches the reactors being solution polymerization reactors and operating at a pressure low enough for one phase polymer solution to phase separate into two phase liquid/liquid (Id., para 00198-0200), reading on the 1,2,4-trimethylbenzene being a liquid solvent and the polyethylene being at least partially dissolved in the trimethylbenzene (claim 2).
Regarding claim 4, Wang teaches a combination of solvents (Wang, para 0176), reading on at least one additional liquid solvent.
Claim Rejections - 35 USC § 102 / 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.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 104371412 to Dongguan, remaining as applied to claims 1-4 above.
NOTE: The English Machine Translation provided by Applicant is being used for the prior art mapping.
Regarding claim 9, Dongguan teaches the slurry comprising 5-20 parts of wax and 45-155 parts of solvent (Dongguan, abstract, para 0012-0013), reading on the composition comprising greater than 1% solvent by weight based on the weight of the polyethylene plus the weight of the solvent. Dongguan teaches putting the wax and part of the solvent, heating till the wax dissolves, then cooling (Id., abstract). Absent evidence to the contrary, it appears that a gel would be formed as a result of the process. Regarding the composition being a gel, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this feature, the claimed properties are deemed to be inherent to the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Dongguan teaches a composition comprising a trimethylbenzene solvent and polyethylene dissolved therein at elevated temperature that is cooled. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Claims 6-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2018/0305530 to Wang, remaining as applied to claims 1-2 and 4-5 above.
Regarding claims 6-7, the limitation “wherein said composition is a dry solid” is interpret as a limitation with regards to the intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The composition of Wang is capable of being dried and forming a dry solid when the solvent is driven off and polyethylene temperature cooled to solidify.
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 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Dongguan, as applied to claims 1-4 and 9 above, in view of USPN 3,240,774 to Joyner.
Regarding claims 5-7, Dongguan does not explicitly teaches the trimethylbenzene being 1,2,4-trimethylbenzene.
However, Joyner teaches the use of suitable solvents for extraction used in the production of polyethylene includes pseudocumene (1,2,4-trimethylbenzene) (Joyner, abstract, col. 2 line 30-col. 3 line 62).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the slurry of Dongguan, wherein the trimethylbenzene is pseudocumene (1,2,4-trimethylbenzene) as taught by Joyner, motivated by the desire of using conventionally known trimethylbenzene predictably suitable for use as solvent in conjunction with polyethylene.
Regarding claim 6, the limitation “wherein said composition is a dry solid” has been interpreted as an intended use of the composition. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The composition of Dongguan is capable of being dried and thereby forming a dry solid.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2011/0207907 to Simmelink in view of “The physical and chemical properties of plasma treated ultra-high-molecular-weight polyethylene fiber” to Kusano, USPN 3,240,774 to Joyner, and CN 107867984 to Li.
NOTE: The English Machine translation of CN 107867984 is being used for prior art mapping.
Regarding claims 1-10, Simmelink teaches a ultrahigh molecular polyethylene (UHMWPE) gel used to form fibers comprising ultra-high molecular weight polyethylene with a spinning solvent including aromatic hydrocarbons such as toluene, xylene, and naphthalene, including hydrogenated derivative thereof such as decalin (Simmelink, abstract, para 0008-0014, 0027-0034), reading on a composition comprising a polyethylene, specifically an ultra-high molecular weight polyethylene (claim 10) and an aromatic hydrocarbon solvent and the composition being a gel (claim 9). Simmelink teaches the slurry containing between 5 and 20% of the UHMWPE (Id., para 0031), reading on the composition comprising at least 1% solvent (claim 9). Simmelink teaches combination of spinning solvents can be used (Id., para 0028), reading on the composition comprising at least one additional liquid solvent (claim 4).
Simmelink does not explicitly teach the aromatic hydrocarbon solvent being trimethylbenzene, specifically 1,2,4-trimethylbenzene (claim 5, 7, 10).
However, Kusano shows that pure polyethylene surface have a Hansen solubility parameters (HSP) of 18.0, 1.2, and 1.4, which are similar to the HSP of 18, 1, 1, for dispersion, polar, and hydrogen bonds, of trimethylbenzene and toluene (Kusano, abstract, Table 1). Therefore, based on the concept of like dissolving like, absent evidence to the contrary, the polyethylene will be partially soluble if not fully dissoluble in the trimethylbenzene solvent. Kusano teaches there being a distinct region characteristics of PE at higher dissolution parameter and low polarity and hydrogen bonding shown by the strong interaction with aromatic solvents such as toluene and trimethylbenzene (Id., p. 2796), indicating an expected similar performance of toluene and trimethylbenzene. Additionally, Joyner teaches the use of suitable solvents for extraction used in the production of polyethylene includes pseudocumene (1,2,4-trimethylbenzene) (Joyner, abstract, col. 2 line 30-col. 3 line 62), reading on pseudocumene (1,2,4-trimethylbenzene) being suitable trimethylbenzene to use as a polyethylene solvent. Furthermore, Li teaches a chemical process in which unsymmetrical trimethylbenzene solvent is used due to low toxicity and being safe to use (Li, abstract, Advantage). One of ordinary skill in the art before the effective filing date would appreciate that 1,2,4-trimethylbenzene is unsymmetrical.
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the ultrahigh molecular polyethylene gel of Simmelink, wherein trimethylbenzene, specifically pseudocumene (1,2,4-trimethylbenzene) is used as the aromatic hydrocarbon spinning solvent as taught by Kusano and Joyner, motivated by the desire of using conventionally known aromatic solvent having similar solubility parameters as polyethylene and toluene used for polyethylene and considered an equivalent to toluene as taught by Kusano and known to have low toxicity and being safe for chemical processing as taught by Li.
Regarding claims 2-3, the prior art combination teaches the slurry being converted into a solution of the UHMWPE in the spinning solvent (Simmelink, para 0008), reading on the spinning solvent, specifically trimethylbenzene being a liquid solvent and the polyethylene being at least partially dissolve, specifically fully dissolved, in the solvent.
Regarding claim 6, the prior art combination teaches removing the spin solvent and forming a solid UHMWPE fiber (Simmelink, para 0008, 0018-0022), reading on the composition being capable of forming a dry solid.
Regarding claim 8, the prior art combination teaches the composition being formed into a fiber (Simmelink, para 0018-0022) and therefore comprising a monofilament fiber.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 105492381 to Kim teaches a concrete polymer composite (composition) comprising a polyethylene fiber and a modified sulphur comprising an aromatic solvent including 1,3,5-trimethylbezene. “NTP toxicology and carcinogenesis studies of decalin” to National Toxicology Program teaches the result of several toxicity studies of decalin.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789