DETAILED ACTION
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 37-40 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 37 recites the limitation "the additive composition" in line 5. There is insufficient antecedent basis for this limitation in the claim.
It is noted that since claims 38-40 ultimately or directly depend from Claim 37, they are rejected along with claim 37 because they incorporate all of the limitations of claim 37, including those that are indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,118,027. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US Patent No. ‘027 claims a method for producing a polymer composition comprising (a) providing a thermoplastic polymer, (b) providing an additive composition comprising calcium cis-1,2-cyclohexanedicarboxylate salts, wherein 25 mol% or more of the calcium cis-1,2-cyclohexanedicarboxylate salts are cis-1,2-cyclohexanedicarboxylate monohydrate, (c) combining the thermoplastic polymer and additive composition, (d) heating to produce a molten mixture, and (e) essentially cooling to produce a polymer composition (claim 1).
The method claimed by US ‘027 inherently results in the claimed composition.
As to claims 22-25, US ‘027 also claims the monohydrate in an amount of 33 mol%, 50 mol%, 75 mol% and 90 mol% in claims 3-6, respectfully.
As to claims 26-31, US ‘027 also claims the additive as further comprising zinc stearate, in claims 7-14.
As to claim 32, US ‘027 claims the polymer as polypropylene or polyethylene (claims 17-18).
Claim 33 can be rejected as thermoplastic polymers are claimed as alternatives to the waxes, where US ‘027 claims the thermoplastic polymers.
As to claims 34-35, US ‘027 claims the composition as comprising 50-5000 ppm and then 100-2000 ppm of the cis-1,2-cyclohexanedicarboxylate salts, in claims 19-20, respectfully.
As to claims 37-40, US ‘027 claims a similar method for preparing the composition.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,746,212. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US Patent No. ‘212 claims a method for producing a polymer composition comprising (a) providing a thermoplastic polymer and (b) providing an additive composition comprising calcium cis-1,2-cyclohexanedicarboxylate salts, wherein 25 mol% or more of the calcium cis-1,2-cyclohexanedicarboxylate salts are cis-1,2-cyclohexanedicarboxylate monohydrate, (c) combining the thermoplastic polymer and additive composition, (d) heating to produce a molten mixture, and (e) essentially cooling to produce a polymer composition (claim 1).
The method claimed by US ‘212 inherently results in the claimed composition.
As to claims 22-25, US ‘212 also claims the monohydrate in an amount of 33 mol%, 50 mol%, 75 mol% and 90 mol% in claims 2-5, respectfully.
As to claims 26-31, US ‘212 also claims the additive as further comprising zinc stearate, in claims 6-13.
As to claim 32, US ‘212 claims the polymer as polypropylene or polyethylene (claims 17-18).
Claim 33 can be rejected as thermoplastic polymers are claimed as alternatives to the waxes, where US ‘212 claims the thermoplastic polymers.
As to claims 34-35, US ‘212 claims the composition as comprising 50-5000 ppm and then 100-2000 ppm of the cis-1,2-cyclohexanedicarboxylate salts, in claims 19-20, respectfully.
As to claims 37-40, US ‘212 claims a similar method for preparing the composition.
Allowable Subject Matter
Assuming applicants can overcome the above 112(b) and double patenting rejections, the claimed subject matter would be allowed.
The following is an examiner’s statement of reasons for allowance:
The primary reason for allowance of claims 21-40 is the inclusion of an at least 25 mol% of more of calcium cis-1,2-cyclohexanedicarboxylate monohydrate in a thermoplastic polymer or wax, in all the claims which is not found in the prior art references, alone or in combination.
The closest prior art references are the following:
US 2020/0131331 teaches preparing a transparent nucleating agent by extruding and granulating a blend of 0.25-4 parts by weight water into 1 part by weight of a powdery sorbitol nucleating agent.
WO 2020/068679 does not qualify as prior art, but does teach the production of calcium cis-1,2-cyclohexanedicarboxylate monohydrate.
US 2007/0036960 teaches a nucleating agent comprising a calcium hexahydrophthalate, Irganox 1010, Irgafos 168 and zinc stearate.
US 2004/0132884 teaches calcium cis-hexahydrophthalate as a nucleating agent, which is prepared in the presence of water, followed by drying, teaching that the amount of % water absorbed is 0.20, which is about 2 mol% water or hydrated salt.
US 2014/0179846 teaches the use of the hydrated form of nucleating agents, which includes calcium cis-1,2-cyclohexanedicarboxylate, but does not teach the amount of monohydrate present, as the anhydrous form is taught as preferred (p. 3, [0021]-[0024]).
US 2010/0010168 teaches away from using calcium salts of dicarboxylic acids which contain crystalline water, as it is taught as decreasing the effect of beta-nucleation, and the removal of such water is only achievable under severe conditions (p. 1, [0009]).
Zhang (Preparation and nucleation effects of nucleating agent hexahydrophthalic acid metal salts for isotactic polypropylene. Colloid Polym Sci, 295, 2017, pp. 1973-1982) teaches the preparation of calcium hexahydrophthalic acid in the presence of water, which can be used as a nucleating agent for polypropylene, increasing the Tc from 122.37ºC to 129.83ºC; however, there is no teaching or suggestion as to how many water molecules are bound to the salt.
While it may be obvious to use 100 mol% of a hydrated calcium cis-1,2-cyclohexanedicarboxylate, there is no indication in the art as to whether other hydrated salts can be formed, such as dihydrate or decahydrate, in addition to the monohydrate. Applicants have shown unexpected improvements in the nucleating effect of a polyolefin in the presence of cis-1,2-cyclohexanedicarboxylate monohydrate, particularly a higher peak recrystallization temperature and mechanical properties of the final molded articles prepared therefrom, which can be obtained from a much lower content of the hydrated form compared to the anhydrous form of the cis-1,2-cyclohexanedicarboxylate salts.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766