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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 15, 2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JPH06240058 A, hereinafter referring to the attached ESPACENET translation) in view of Menczel (Journal of Thermal Analysis, 1983, Vol. 28, pp. 161-174).
Regarding claim 1, Kobayashi teaches crystal nucleating agents for polyolefins ([0001]) including polypropylene ([0018]). Kobayashi teaches that the crystal nucleating agents are formed from an isocyanate reacting with an amine ([0013]), and teaches the incorporation of between 0.05 and 5 parts by weight of the nucleating agent per 100 parts by weight of the resin ([0019]), equal to a range of from about 0.05 wt% to about 4.7 wt% of the total weight of the composition. This range overlaps the claimed range of 250 – 20000 ppm” because 250 – 20000 ppm equates to a range of 0.025 – 2 wt%, establishing a prima facie case of obviousness.
Kobayashi exemplifies the usage of a polypropylene with a melt flow rate of 7 g/10 min ([0025]), which falls within and therefore anticipates the claimed range of “1.5 to 40 g/10min.”
Examples 2-5 ([0027]-[0030]) contain the same polypropylene as example 1, and which also contain methylamine, cyclohexylamine, aniline, and ethylamine-derived reaction products with isocyanate, respectively, all of which read on the claimed masterbatch.
Kobayashi further teaches the extrusion of these examples ([0025]), which reads on the claimed “process” which includes “melt mixing.”
Kobayashi differs from claim 1 because it is silent with regard to the explicit steps of first forming a masterbatch, and subsequently diluting the masterbatch.
Within the same field of endeavor, Menczel teaches a nucleating agent for polypropylene (Abstract), and teaches that nucleating agents may be included in polypropylene in a master batch which is subsequently diluted to a desired concentration (p. 162, second paragraph). It is prima facie obvious to substitute equivalents known for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to form the composition of Kobayashi via a masterbatching and dilution process, with the masterbatch having the nucleating agent at a high concentration and being subsequently diluted to a final, lower concentration. One having ordinary skill in the art would at least be motivated to include masterbatch concentrations of 30 wt% as taught by Menczel, and would be motivated to dilute said concentration to any desirable final concentration within the range taught by Kobayashi. The value of 30 wt% masterbatch concentration falls within the claimed range of “2 to 60 wt.%,” establishing a prima facie case of obviousness.
Regarding claim 2, Kobayashi teaches that the isocyanate may include inter alia, butyl isocyanate (aliphatic isocyanate), cyclohexane diisocyanate (cycloaliphatic diisocyanate), and toluene isocyanate (aromatic isocyanate) ([0014]), all of which read on the claimed isocyanates.
Regarding claim 3, Kobayashi teaches that the isocyanate may include diphenylmethane diisocyanate (MDI), isophorone diisocyanate (IPDI), and hexamethylene diisocyanate (HMDI) ([0014]), all of which read on the claimed list.
Regarding claims 4 and 5, Kobayashi teaches that the amine may include, inter alia, aniline ([0015]).
Regarding claim 6, Kobayashi teaches products resulting from the incorporation of ethylamine ([0030]) and methylamine ([0017]), which read on the claimed list.
Regarding claim 7, Kobayashi teaches that the amine may be cyclohexylamine ([0015]).
Regarding claim 8, Kobayashi exemplifies the mixing of the composition at 240°C ([0025]), which falls within and therefore anticipates the claimed range of “150-300°C.”
Regarding claim 9, Kobayashi teaches that the polymer resin may be homopolymers of polypropylene ([0018]), which reads on the claimed list.
Regarding claim 11, Kobayashi exemplifies the extrusion of the composition ([0025]). The extrusion equipment used in this exemplified process read on the claimed “any other processing equipment.”
Regarding claim 12, Kobayashi is silent with regard to the particularly claimed temperature increase. Nevertheless, Kobayashi as applied above results in a composition that is structurally identical to the claimed masterbatch, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of anticipation has been established. See MPEP 2112.01. The claimed crystallization temperature increase will therefore necessarily be present in Kobayashi as applied above.
Regarding claim 13, as described above, Kobayashi teaches a composition containing the claimed polypropylene and nucleating agents in the claimed compositional ranges. Therefore, Kobayashi teaches the claimed composition.
Response to Arguments
Applicant's arguments filed May 15, 2026 have been fully considered but they are not persuasive.
Applicant first rebuts the prior art documents Kobayashi and Menczel individually. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant next asserts that Menczel is only directed towards talc masterbatching, and asserts Menczel therefore does not remedy the deficiencies of Kobayashi which is focused on a different nucleator besides talc. However, while Menczel does specifically contemplate a different nucleator (a urea-based soluble nucleating agent), the lack of teaching said nucleator does not constitute a teaching away from the use thereof, and Kobayashi teaches that isocyanate/amine adduct nucleating agents are suitable for polypropylene (likewise to talc), as described in previous office actions. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06); therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the process of Menczel for the formulation of Kobayashi despite Menczel’s lack of a specific teaching of the same non-talc nucleating agent.
Applicant argues that Menczel’s focus on talc, which is an insoluble nucleating agent, “is not a general teaching that all nucleating agents are predictably suitable for masterbatching.” However, this is not required for a reasonable combination of the prior art documents; Menczel teaches the formation of a nucleating agent masterbatch, and one having ordinary skill in the art would reasonably generalize the suitability of other nucleating agents to be likewise masterbatched. Applicant focuses on a suggestion within Menczel that masterbatched samples crystallize slower than samples formed from direct addition, however this does not constitute a teaching away from the suitability or usefulness of masterbatches. Furthermore, assuming arguendo that one having ordinary skill in the art would not generalize the suitability of all nucleating agents towards masterbatching, Menczel’s suggestion that particle agglomeration is responsible for the difference between masterbatched and direct-addition talc compositions would lead one of ordinary skill in the art to consider that soluble nucleating agents, which may possess less agglomeration tendencies, may even be more suitable than insoluble nucleating agents, as their solubility may preclude the only potential drawback (i.e., the agglomeration) identified within the prior art.
Applicant argues that there is no evidence of record to support the substitution of the soluble urea-based nucleating agent in place of the insoluble talc-based nucleating agent within the process of Menczel; however, it is prima facie obvious to substitute equivalents known in the prior art as suitable for their intended use (see MPEP 2144.06). In this case, the talc and urea-based nucleating agents are both nucleating agents. Furthermore, An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). The substitution discussed in the previous Office Actions, as well as above, is therefore appropriate despite the lack of a specific and explicit statement regarding each and every potential difference between two nucleators and/or nucleator types (such as solubility). Prima facie, a soluble nucleator and an insoluble nucleator are useful for the same purposes.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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