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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, there is no mention of cyclohexylamine in the disclosure; rather, the disclosure includes cycloaliphatic amines ([0014]). The Applicant includes hexyl amine, a different molecule than cyclohexyl amine, in the description ([0014]). However, hexyl amine is not a cycloaliphatic amine because it is a linear (i.e., non-cyclic) compound. This issue was raised in an indefiniteness rejection under 35 USC 112(b) in a previous Office Action. The claiming of cyclohexyl amine is indicated as an attempt to overcome said indefiniteness rejection, however there is no support in the disclosure for cyclohexyl amine in particular, and thus it is not clear that the Applicant was in possession of this embodiment at the time of filing.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, see Applicant’s Remarks, filed November 18, 2025, with respect to Claim Objections and 35 USC 112(b) have been fully considered and are persuasive. The Objections and rejection under 35 USC 112(b) of claims 3-4, 6-7, and 10 have been withdrawn.
Applicant’s arguments with respect to the rejection(s) of claims 1-14 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made under 35 USC 103 in view of Kobayashi and further in view of Menczel.
Applicant argues that Kobayashi does not teach the claimed two-step masterbatching and dilution process; however, Kobayashi as modified by Menczel renders obvious the process of forming a polypropylene masterbatch and subsequently diluting said masterbatch using the claimed nucleating agent and with the claimed masterbatch and final product concentrations. Kobayashi as modified by Menczel meets all of the limtiations of the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762