DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, in the reply filed on 1/28/2026 is acknowledged. The traversal is on the ground(s) that are closely related and that searching and examining both allegedly would not present a serious burden. This is not found persuasive.
It is first noted that applicant does not provide any evidence and/or arguments pointing out the supposed errors in the previous Action’s position that the claimed invention lack unity of invention. It is therefore maintained that Groups I and II lack unity of invention.
With regards to the search burden, it is noted that the only common elements to the inventions of Groups I and II is the recitation of a propylene/butene copolymer. The process of Group II does not place any restrictions on any properties of the copolymer being made, and therefore would necessitate searching the prior art for methods of making any propylene/butene copolymer, not just those that fall within the scope of the invention of Group I. This would present a serious burden for examination.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed 8/12/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. While applicant did submit a copy of JPH11-512461, the examiner notes that it is not a legible copy as required. Most of the pages are blank, with only a few figures/drawings being visible. Other than the abstract, none of the text is present. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statement filed 1/23/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not provide a copy of cited reference EP4281498. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Interpretation
Regarding the limitation “substantially free of a fraction having a molecular weight below 1000” : This limitation has been interpreted to require that the copolymer comprises less than 0.015 wt% of the fraction having molecular weight below 1000 g/mol (see specification page 4: lines 23-26).
Regarding the limitation “xylene solubles”: Applicant’s specification defines xylene solubles as having been measured in accordance with the standard GB/T 24282-2009 (specification page 4: lines 18-19). It is noted that an online search indicates that this standard is for the measurement of xylene soluble content at a temperature of 25 °C. See, for instance, Wang et al, published in Polymers vol. 12 (2020), page 4: section 2.3.4. Limitations regarding the xylene soluble content of the copolymer have therefore been interpreted to refer to the xylene soluble content at 25 °C.
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 1-5 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.
Regarding claim 1: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites
the broad recitation that propylene content is 90 to 99 mol% and the butene content is 1 to 10 mol% and the claim also recites preferably from 91 to 97 mol% propylene and from 3 to 9 mol% butene which is the narrower statement of the ranges/limitations; and
the broad recitation the xylene soluble content is ≤ 4 wt%, and the narrower limitation that it is preferably ≤ 3 wt%.
The claim(s) are considered indefinite because there is a question or doubt as to whether the features introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2 and 3 depend from claim 1 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 1.
Regarding claim 2: Claim 2 recites the broad recitation the molecular weight distribution (Mw/Mn) is less than 5, and the narrower limitations that it is preferably less than 4.5, and more preferably less than 4. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims (MPEP § 2173.05(c)).
Regarding claim 4: Claim 4 recites
the broad recitation that the propylene content is 92 to 99 mol% and butene content is 1 to 8 mol% and the narrower limitation that the propylene content and butene content are preferably 93 to 97 mol% and 3 to 7 mol%, respectively;
the broad recitation that the melt flow index (230 °C, 2.16 kg) ≥ 20 g/10 min and the narrower limitations that it is preferably 35 to 200 g/10 min and more preferably 50 to 100 g/10 min; and
the broad limitation that the xylene solubles content is ≤ 5 wt% and the narrower limitation that it is preferably ≤ 4 wt%, and more preferably ≤ 3 wt%.
Claim 4 is therefore indefinite because there is a question or doubt as to whether the feature introduced by the narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims (MPEP § 2173.05(c)).
Claim 5 depends from claim 4 and does not correct this deficiency. Claim 5 is therefore indefinite per the same rationale as claim 4.
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 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al, EP3257878.
Wang discloses the production of propylene/1-butene copolymers having improved stiffness, impact properties, and optical properties (abstract). Example IE1 (Table 1) discloses a propylene/1-butene copolymer (for claim 4) characterized by a (deduced) propylene content of 92.3 wt%, a 1-butene content of 7.7 wt%, a melt flow index (230 C, 2.16 kg) of 128 g/10 min (for claim 4), and a xylene cold soluble content (XCS) of 3.5 wt% (for claim 4).
Based on the molecular weights of propylene (42.08 g/mol) and 1-butene (56.11 g/mol), it is calculated that the copolymer of Wang’s example IE1 has a propylene content of about 94.1 mol% (for claim 4) and a 1-butene content of about 5.9 mol% (for claim 4).
Regarding claim 5: The polymer of the example is combined with additives that include the commercial antioxidants IGANOX 1010 and IRGAFOS 168, calcium stearate, and the clarifying agent MILLAD 3988 (¶0120-0121). Wang does not teach that the additives include a phthalate plasticizer; the polymer of the prior art example is therefore free of phthalate plasticizers.
Claims 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noh et al, US2016/0251460.
Example 2 of Noh (¶100, 102, 103; Tables 2 and 3) discloses the production of a propylene/butene copolymer (for claim 4) characterized by a (deduced) propylene content of 97.7 wt%, a butene content of 2.3 wt%, a melt index (230 °C, 2.16 kg) of 21 g/10 min (for claim 4) (¶0112), and a xylene soluble content of 0.5 wt% (for claim 4).
Based on the molecular weights of propylene (42.08 g/mol) and 1-butene (56.11 g/mol), it is calculated that the copolymer of Noh’s example 2 has a propylene content of about 98.3 mol% (for claim 4) and a 1-butene content of about 1.7 mol% (for claim 4).
Regarding claim 5: Noh does not disclose the addition of phthalates to the prior art polymer. The prior art copolymer is therefore phthalate-free.
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.
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.
Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al, US2013/0108814.
The examiner notes that Bernreiter et al, US8901259, is cited as evidence that Guo implicitly teaches a content of fraction having molecular weight less than 1000 overlapping the claimed range.
Guo discloses the production of a propylene/butene random copolymer (for claims 1, 4) (abstract), wherein said copolymer is characterized by a (deduced) propylene content of 94 to 99 mol% (for claims 1, 4); butene content of 1 to 6 mol% (for claims 1, 4) (abstract, ¶0011); a molecular weight distribution (Mw/Mn) in the range of 3.5-8 (¶0020), overlapping the claimed range (for claim 2); and a melt flow index (230 °C, 2.16 kg) of 0.5 to 50 g/10 min (¶0019), overlapping the claimed range (for claim 4). Guo does not require the addition of phthalate plasticizers to the prior art copolymer; as such, the prior art renders obvious a copolymer that is free of phthalate plasticizers (for claims 3, 5).
Guo further teaches that the xylene soluble content (25 °C) is lower than the line corresponding to the formula Y = 0.77 + 0.252X, wherein Y is the xylene soluble content (wt%) and X is the butene content (mol%) (¶0016-0017). As noted above, the maximum value for the butene content in the prior art copolymer is 6 mol%. Substituting this value into the formula for xylene soluble content yields the following.
Y = 0.77 + 0.252(6)
Y = 0.77 + 1.512
Y = 2.282
As the xylene soluble content is reported to be lower than the value obtained from the prior art formula (¶0016), the prior art copolymer has a xylene soluble content less than 2.282 wt% (for claims 1, 4).
Note that the prior art ranges for propylene content, butene content, and xylene soluble content are all entirely encompassed by the claimed ranges (for claims 1, 4).
Regarding the content of a fraction having a molecular weight below 1000: "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; see In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Note that Guo teaches that the propylene/butene copolymer of US2013/0108814 is intended for use in food packaging (¶0050). It was known in the art that FDA regulations mandate that the extractable fraction of propylene copolymers must be ≤ 5.5 wt% for non-cooking applications and ≤ 2.6 wt% for cooking applications in order to be approved for use in food contact applications (see Bernreiter: column 2, lines 47-54). As such, an ordinary artisan would reasonably infer that Guo requires that the prior art copolymer have an extractable content ≤ 5.5 wt%, as it would not otherwise have been operable for its explicitly taught intended use in food packaging. As acknowledged by applicant in the instant specification (see specification page 4: lines 11-14), the fraction having a molecular weight less than 1000 is part of the extractable fraction. As such, it is reasonably inferred that the copolymer of Guo implicitly has a content of the fraction having molecular weight below 1000 that is < 5.5 wt%, overlapping the claimed range (for claim 1).
Guo does not specifically disclose the production of a copolymer having a content of fraction having molecular weight below 1000, molecular weight distribution, and melt index in the claimed ranges.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). As noted above, the prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the claimed invention was effectively filed to prepare a copolymer having the claimed properties in view of the teachings of Guo (for claims 1, 2, 4).
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765