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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-12, drawn to a multimodal polyethylene pipe composition.
Group II, claims 13 and 14, drawn to a pipe article.
This application contains claims directed to more than one species of the generic multimodal polyethylene composition. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
A composition comprising components (a), (b) and (c); and
A composition comprising components (a), (b), (c) and a carbon black masterbatch per claim 6.
If Group I is elected, Applicant is required, in reply to this action, to elect a single species of composition to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: claim 1
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. Specifically, Group II does not require the presence of the components (a), (b) and (c) defining Group I.
During a telephone conversation with Mr. Jacob Graham on April 22, 2026 a provisional election was made with traverse to prosecute the invention of Group I comprising the compositional species containing components (a), (b) and (c), claims 1-5, 7, 8 and 10-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6, 9, 13 and 14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the density governing component (b) is missing the g/cm3 units.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-5, 7, 8 and 10-12 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.
In claims 1, 10 and 11, the method by which the molecular weights are determined is not apparent. That is, it is unclear whether the recited molecular weight values refer to the number average molecular weight (Mn(GPC)) or weight average molecular weight (Mw(GPC)) calculations per specification [0089].
In claim 1, the recitation defining the second comonomer “has longer short-chain branches with carbon atoms of greater than C4” is confusing and not understood. Does this mean that the second comonomer contains branches having more than 4 carbon atoms? As recited, it is unclear whether the first and second comonomers are branched comonomers.
In claim 2, it is unclear how the straight-chain comonomers hexene and octene define comonomers having branches per claim 1.
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.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0030125 (Buryak) in view of US 2004/0181010 (Miserque).
Buryak discloses a multimodal polyethylene composition and pipe articles therefrom comprising:
(a) 15 to 50 wt.% of a low molecular weight ethylene homopolymer having a weight average molecular weight (Mw) of from 15,000 to 40,000 g/mol [0017] and a preferred density of 0.965 to 0.975 g/cm3 [0061] (embraces Applicants’ homopolymer (b) having a molecular weight of less than 30,000 g/mol);
(b) 15 to 50 wt.% of a medium molecular weight ethylene/C3-10 α-olefin comonomer copolymer having a Mw of from 70,000 to 200,000 g/mol [0018] and a preferred density of 0.905 to 0.925 g/cm3 [0065] (embraces Applicants’ copolymer (c) having a molecular weight of from 50,000 to 150,000 g/mol); and
(c) 15 to 50 wt.% of a high molecular weight ethylene/C3-10 α-olefin comonomer copolymer having a Mw of from 220,000 to 400,000 g/mol [0019] and a preferred density of less than 0.910 g/cm3 [0068] (embraces Applicants’ copolymer (a) having a molecular weight of greater than 350,000 g/mol), wherein the compositions have a density in the range of 0.920 to 0.960 g/cm3 [0032] (e.g., abstract, [0016-0020], [0026-0032], [0073-0074], examples, claims).
Buryak expressly discloses various multimodal polyethylene compositions (Examples 1, 4, 7 and 10 per Tables 2-4) obtained by admixing:
(a) a low molecular weight ethylene homopolymer (A18) having a Mw of 24,000 g/mol (meets Applicants’ homopolymer (b) having a molecular weight of less than 30,000 g/mol);
(b) a medium molecular weight ethylene/hexene copolymer (A25) having a Mw of 138,000 g/mol (meets Applicants’ copolymer (c) having a molecular weight of from 50,000 to 150,000 g/mol); and
(c) a high molecular weight ethylene/hexene copolymer (A28) having a Mw of 272,000 g/mol (differs from Applicants’ copolymer (a) in that the Mw is not greater than 350,000 g/mol). Notably, the exemplified compositions have a density in the range of 0.9235 to 0.9359 g/cm3 (Table 4).
In essence, Buryak’s examples differ from claim 10 in that the high molecular weight copolymer (A28) does not have a Mw greater than 350,000 g/mol and in that the compositions are not described as having a minimum required strength (MRS) of greater than 11.3 Mpa. With respect to the first difference, it is within Buryak’s inventive disclosure [0019], and obvious to one having ordinary skill in the art, to use a high molecular weight copolymer (c) having a Mw of up to 400,000 g/mol as an alternative to the exemplified copolymer (A28) for its expected additive effect and with the reasonable expectation of success. The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297. As to the presently claimed MRS rating of greater than 11.3 Mpa, such denotes that the multimodal polyethylene composition has sufficient high strength to withstand a hoop stress of 11.3 MPa for 50 years at 20°C (specification [0055]). From Miserque (abstract/[0021]/[0009], it is known that multimodal polyethylene pipe compositions having high densities, i.e., greater than 0.951 g/cm3, can withstand a hoop stress of up to 12.5 Mpa (i.e., a MRS rating of up to 12.5 MPa). Thus, with respect to the second difference, it would have been within Buryak’s inventive disclosure [0032], and obvious to one having ordinary skill in the art, to formulate multimodal polyethylene pipe compositions having a density of greater than 0.951 g/cm3 and up to 0.960 g/cm3 with the reasonable expectation that said compositions having a high density would also have a MRS rating of up to 12.5 MPa as taught by Miserque.
As to claims 11 and 12, it would have been within Buryak’s inventive disclosure [0001-0002]/[0081], and obvious to one having ordinary skill in the art, to produce a pipe from Buryak’s above-modified multimodal polyethylene compositions by extrusion processing the composition to form the pipe, wherein the pipe would have a MSR rating of 12.5 MPa.
Allowable Subject Matter
Claims 1-5, 7 and 8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 1 requires the high molecular weight ethylene copolymer (a) to have a density of 0.920 to 0.935 g/cm3 and a different comonomer from that contained by the medium molecular weight ethylene copolymer (c). However, the presently claimed ethylene copolymer (a) density of 0.920 to 0.935 g/cm3 is higher than Buryak’s corresponding preferred density of less than 0.910 g/cm3 [0068]. Moreover, while the presently claimed high molecular weight ethylene copolymer (a) and the presently claimed medium molecular weight ethylene copolymer (c) are required to have different comonomers, Buryak’s corresponding ethylene copolymers have the same comonomer, e.g., hexene (Table 1). Buryak fails to disclose or suggest the use of a high molecular weight ethylene copolymer (c) having a density higher than the preferred 0.910 g/cm3 or the use of a high molecular weight ethylene copolymer (c) having a different comonomer from the medium molecular weight ethylene copolymer (b). An extensive prior art search has failed to reveal any additional prior art that would fairly teach, suggest or provide motivation to arrive at the presently claimed subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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