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, i.e., claims 1-15, in the reply filed on April 09, 2026 is acknowledged. Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Claim Objections
Claim 6 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 2. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim 2 requires “a blend of random copolymers…”, whereas claim 6 requires “a blend of at least two random copolymers”. Since a blend inherently requires more than one, the scope of these claims are deemed to be identical.
Claim Rejections - 35 USC § 102
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 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, 3, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2000-006337. An English language machine translation of JP ‘337 is attached to this Office action and relied upon in the below rejections.
Regarding claim 1, JP ‘337 discloses a composition ([0047], [0050], Example 1, Comparative Example 3, Table 1) comprising component (a) a propylene-based copolymer; and component (b) a polybutene elastomer (CAP355S). Component (a) and component (b) are melt-blended to form the composition (Comparative Example 3) and exhibit a haze value of 1.2% and a tensile modulus of 300 MPa (Table 1).
Regarding claim 3, JP ‘337 discloses that the copolymer has a melt flow rate of 3.4 g/10 min (Example 1).
Regarding claim 14, JP ‘337 discloses that the blended composition can comprise 50 wt.% of component (a) and 50 wt.% of component (b) (Comparative Example 3).
Regarding claim 15, JP ‘337 discloses that the composition can be used to form a film (Examples).
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 13 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 JP 2000-006337.
JP ‘337 is silent as to the polymerization process used to prepare the polybutene elastomer. As set forth in MPEP 2113, “[E]ven 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). "[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). In the instant claim, it is deemed that the polybutene elastomer disclosed in JP ‘337 is the same or similar to the claimed polybutene elastomer prepared by a metallocene or Ziegler-Natta catalyst polymerization process and the burden has shifted to the Applicant to provide any evidence to the contrary.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-8, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Asanuma et al. (US Pat No. 5,206,324) in view of Gahleitner et al. (US Pub 2020/0317898).
Regarding claim 1, US ‘324 discloses a composition comprising component (a) a propylene-based copolymer; and component (b) a polybutene elastomer (Example 2). Component (a) and component (b) are melt-blended to form the composition (col 5, lines 13-20) and exhibit a haze value of 2.1% and a Young’s modulus of 68 kg/mm (Example 2; col 8, lines 54-61). The Young’s modulus, i.e., tensile modulus, of Example 2 is outside of the presently claimed range. US ‘898 discloses a similar composition comprising a propylene-based copolymer and an elastomer polymeric component wherein tensile modulus is below 320 MPa ([0251], Table 2). US ‘898 discloses that such a material having a low modulus is advantageous to create a material having desired softness for modern packaging applications [0005]. It would have been obvious to have prepared the composition of US ‘324, wherein the composition has a tensile modulus of less than 320 MPa, as taught by US ‘898, motivated by the desire to obtain a composition suitable for the use in the preparation of materials suitable for modern packaging applications.
Regarding claims 2 and 6, US ‘324 suggests that the composition can contain a blend of more than one copolymer (col 1, lines 8-11). Further, US ‘898 specifically discloses embodiments wherein two or more different propylene-based copolymers are used [0062]. It would have been obvious to one of ordinary skill in the art to have prepared the composition of US ‘324 wherein a propylene-based copolymer blend is used, as suggested in US ‘324 and explicitly taught in US ‘898, motivated by the desire to optimize the properties of the propylene-based copolymer component of the composition.
Regarding claim 3, US ‘324 discloses that the propylene-based copolymer can have a melt flow rate of 0.5 to 20.0 g/10 min (claim 3).
Regarding claim 5, Example 2 of US ‘324 discloses that the propylene-based copolymer has a tensile modulus within the presently claimed range.
Regarding claims 7 and 8, US ‘898 discloses the claimed process steps of these product-by-process claims ([0124], [0125]). Further, these process steps do not appear to result in a materially different composition. See MPEP 2113.
Regarding claim 14, Example 2 of US ‘324 discloses a blended composition that comprises 80 wt.% of component (a) and 20 wt.% of component (b).
Regarding claim 15, US ‘324 discloses that the composition can be used to form a film (col 5, lines 26-27).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Asanuma et al. (US Pat No. 5,206,324) in view of Gahleitner et al. (US Pub 2020/0317898) as applied to claim 1 above, and further in view of Jacob et al. (US Pat No 7,994,253).
US ‘324 and US ‘898 are silent as to the density of the propylene-based copolymer. US ‘253, which is also directed to blended compositions containing a propylene-based copolymer/terpolymer and an elastomer blend, discloses that it is conventional in the art to use propylene-based polymers having a density in the range of 0.85 to 0.92 g/cm3 (col 5, lines 3-5). US ‘253 discloses that such compositions are useful in manufacturing articles where good elastic recovery in an important attribute (col 10, lines 41-62). It would have been obvious to one of ordinary skill in the art to have used a propylene-based polymer having a density within in the claimed range of 0.88 to 0.92 g/cm3, as taught in US ‘253, as the component (a) material of modified US ‘324, motivated by the desire to obtain a composition that was useful in the manufacture of articles that require good elastic recovery.
Claims 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Asanuma et al. (US Pat No. 5,206,324) in view of Gahleitner et al. (US Pub 2020/0317898) as applied to claim 1 above, and further in view of Pellegatti et al. (US Pub 2010/0137543).
Regarding claims 9-12, US ‘324 is silent as to the melt flow rate (claim 9), density (claim 10), tensile modulus (claim 11), and tensile elongation at break (claim 12) of the polybutene elastomer. US ‘543, which is the US equivalent to WO2009/000637 that is cited in the present specification on page 9, line 1, discloses a polybutene elastomer that is useful to be blended with other polyolefin and polymeric products in order to modulate particular properties such a sealing strength, flexibility and softness of the plastic materials [0001]. As disclosed in the present specification [0034], the polybutene elastomer can be compositions within the scope of the disclosure of WO ‘637 [US ‘543]. Thus, the polybutene elastomers disclosed in US ‘543 would have the same properties as the present claims, i.e., both US ‘543 and the present invention use the same polybutene elastomers. It would have been obvious to one of ordinary skill in the art to have prepared the composition of modified US ‘324, wherein component (b) is a polybutene elastomer set forth in US ‘543 based on the disclosure in US ‘543 that the polybutene elastomer can be blended with other polymeric components in order to modulate desired properties, such as flexibility and softness.
Regarding claim 13, US ‘543 discloses that the polybutene elastomer is polymerized in a process comprising a metallocene catalyst ([0001], [0058]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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