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 § 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, 3-4, 7-8, 10, 12, 14, 20, 22-23, 25, 27-28, 30, and 59-66 are rejected under 35 U.S.C. 103 as being unpatentable over Knerr (US 2018/0036764 A1).
Regarding claim 1, Knerr teaches a process for producing an extrusion-coated material (Abstract), involving at least one filler material, a polymer binder, and a thermoplastic polymer ([0010]-[0012]), wherein the filler(s) may be calcium carbonate ([0020]), the polymer binder may be olefinic polymers including inter alia polypropylene homopolymers ([0028]), and the thermoplastic polymer may be polyvinyl chloride ([0275]).
Knerr teaches that the inventive process involves the blending of the polymer binder and filler(s) to form a compacted material ([0015]), to which the thermoplastic polymer is added thereafter to obtain a filled thermoplastic polymer ([0017]). The compacted material of Knerr therefore reads on the claimed “b) masterbatch composition,” and the filled thermoplastic polymer therefore reads on the claimed “polymer composition” and the claimed “a) polymer resin composition comprising at least one halogenated polymer resin and a first calcium carbonate material.”
With respect the claimed compositional limitations, Knerr further teaches that the filler(s) comprise 50-99 wt% of the compacted material (p. 25, claim 8), and that the compacted material comprises 1- 80 wt% of the filled thermoplastic polymer product (p. 26, claim 13). The filler(s) therefore comprise between 0.5 and about 79.2 wt% of the filled thermoplastic polymer, which encompasses the claimed range of “from 17 to 35 wt% of the polymer composition,” establishing a prima facie case of obviousness.
Furthermore, the claim is recognized as including product-by-process limitations, wherein the claimed polymer composition is formed via the combination of a resin with a calcium carbonate-filled masterbatch. The composition as claimed does not require that the claimed “first” and “second” calcium carbonates are different from one-another; furthermore, the instant Specification contemplates circumstances where said calcium carbonates are the same material (c.f. Instant Specification p. 17, [0097]). Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps (see MPEP 2113.I.). In the instant case, the implied structure of the claimed composition requires only the incorporation of the claimed components in their claimed compositional amounts. Therefore, the amount of calcium carbonate taught by Knerr (between 0.5 and about 79.2 wt% of the filled thermoplastic polymer, as described above), also reads on and overlaps/encompasses the claimed weight percentages of each of the claimed filler components, establishing prima facie cases of obviousness.
As described above, Knerr teaches that the compacted material comprises 1- 80 wt% of the filled thermoplastic polymer product (p. 26, claim 13). The thermoplastic polymer, which reads on the claimed “halogenated polymer resin,” therefore comprises between 20 and 99 wt% of the filled thermoplastic polymer product, which overlaps the claimed range of “at least 50 wt%,” establishing a prima facie case of obviousness.
Knerr is silent with regard to the claimed fusion time characteristics. Nevertheless, Knerr as applied above results in a composition which is structurally identical to the claimed composition. 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 obviousness has been established. See MPEP 2112.01. The claimed fusion time characteristics will therefore necessarily be present in Knerr, as applied above.
Knerr further teaches that the filler(s) comprise 50-99 wt% of the compacted material (p. 25, claim 8), and that the compacted material comprises 1- 80 wt% of the filled thermoplastic polymer product (p. 26, claim 13). The binder polymer (which reads on the claimed “masterbatch polyethylene” and “masterbatch polypropylene” as described above), therefore comprises between 1 and 50 wt% of the compacted material, and therefore comprises between 0.01 and 40 wt% of the filled polymer composition, which overlaps the claimed range of “0.1 to 5.0 wt%,” establishing a prima facie case of obviousness.
Regarding claim 3, Knerr teaches that the inventive calcium carbonates have weight median particle diameters (d50, [0052]) preferably ranging from 0.05 to 10 microns ([0082]), which overlap the claimed range of “0.1 µm to 8.0 µm,” establishing a prima facie case of obviousness.
Regarding claim 4, Knerr teaches that the inventive calcium carbonates have specific surface areas preferably ranging from 0.5 – 35 m2/g ([0079]), which overalps the claimed range of “1 m2/g to 25 m2/g,” establishing a prima facie case of obviousness.
Regarding claim 7, Knerr teaches the particular usage of both ground and precipitated calcium carbonates ([0072]).
Regarding claim 8, Knerr teaches surface treated fillers with the surface treatment comprising at least 0.1 wt% of the dry weight of the filler material(s) ([0090]), which overlaps the claimed range of “at least 0.1%,” establishing a prima facie case of obviousness. Furthermore, Knerr teaches that the surface treatment may comprise at least one mono-substituted succinic anhydride, mono-substituted succinic acid, or salty reaction products thereof ([0092]), which reads on the claimed coatings “(ii).” Knerr further teaches the incorporation of a surface treatment comprising carboxylic acids ([0096]), including those having 4 to 24 carbon atoms, and reaction products thereof ([0224]), which read on the claimed coatings “(i).”
Regarding claim 10, as described above, Knerr teaches the incorporation of between 0.5 and about 79.2 wt% of calcium carbonate, which reads on both of the claimed calcium carbonates, and which encompasses the claimed range of “1 to 25 wt%,” establishing prima facie cases of obviousness.
Regarding claim 12, as described above, Knerr teaches that the filler(s) comprise 50-99 wt% of the compacted material (p. 25, claim 8), and that the compacted material comprises 1- 80 wt% of the filled thermoplastic polymer product (p. 26, claim 13). The filler(s) together therefore comprise between 0.5 and about 79.2 wt% of the filled thermoplastic polymer, which encompasses the claimed range of “from 17 to 30 wt%,” establishing a prima facie case of obviousness.
Regarding claim 14, Knerr exemplifies the polyethylene within the inventive composition as an LDPE product having a density of 0.918 g/cm3 ([0350]), which falls within the claimed range of “0.850 to 0.975 g/cm3,” establishing a prima facie case of obviousness.
Regarding claim 20, Knerr teaches the particular usage of polyvinyl chloride ([0275]), which reads on the claimed listing of halogenated polymer resins.
Regarding claim 22, as described above, Knerr teaches that the compacted material comprises 1- 80 wt% of the filled thermoplastic polymer product (p. 26, claim 13). The thermoplastic polymer, which reads on the claimed “halogenated polymer resin,” therefore comprises between 20 and 99 wt% of the filled thermoplastic polymer product, which encompasses the claimed range of “from 50 to 90 wt%,” establishing a prima facie case of obviousness.
Regarding claims 23 and 25, as described above, Knerr is silent with regard to the claimed fusion time characteristics. Nevertheless, Knerr as applied above results in a composition which is structurally identical to the claimed composition. 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 obviousness has been established. See MPEP 2112.01. The claimed fusion time characteristics will therefore necessarily be present in Knerr, as applied above.
Regarding claims 27 and 28, Knerr is silent with regard to the claimed suitability for producing products of the claimed density and impact strength characteristics. Nevertheless, Knerr as applied above results in a composition which is structurally identical to the claimed composition. 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 obviousness has been established. See MPEP 2112.01. The claimed suitability for producing products of the claimed density and impact strength characteristics will therefore necessarily be present in Knerr, as applied above.
Regarding claim 30, as described above, Knerr teaches that the inventive process involves the blending of the polymer binder and filler(s) to form a compacted material ([0015]), to which the thermoplastic polymer is added thereafter to obtain a filled thermoplastic polymer ([0017]). These inventive steps read on the claimed steps “a)” through “c).” Furthermore, as described above, Knerr teaches the claimed compositional limitations. Finally, as described above, while Knerr does not appear to contemplate the improvement of fusion time as claimed, the composition of Knerr is substantially identical to the claimed composition, and therefore the claimed fusion time characteristics are inherently present in the composition of Knerr. The process of Knerr therefore reads on the claimed “method for decreasing fusion time.”
Regarding claim 59, Knerr teaches a coating of the inventive composition ([0018]), which reads on the claimed “polymer composition.”
Regarding claim 60, Knerr teaches the extrusion of the filled thermoplastic polymer into a substrate to produce a coated substrate ([0018]), which reads on the claimed method.
Regarding claims 61-63, Knerr is silent with regard to the claimed density, impact strength, and hardness characteristics. Nevertheless, Knerr as applied above results in a composition which is structurally identical to the claimed composition. 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 obviousness has been established. See MPEP 2112.01. The claimed density, impact strength, and hardness characteristics will therefore necessarily be present in Knerr, as applied above.
Regarding claims 64 and 65, Knerr teaches a coating of the inventive composition ([0018]), which reads on the claimed products.
Regarding claim 66, Knerr teaches, inter alia, the specific formation of a coated sheet containing the inventive composition ([0317]-[0319]), which reads on “sheet” within the claimed list.
Response to Arguments
Applicant's arguments filed February 11, 2026 have been fully considered but they are not persuasive.
Applicant argues that the inherency rejection, applied previously and applied above, is inappropriate “because the Examiner must pick and choose from various limitations.” Applicant therefore essentially asserts that Knerr is not structurally identical to the claimed composition because there are compositions within Knerr that do not fall within the claimed composition.
However, the presence of compositions within Kerr which do not fall within the claimed composition does not rebut the presence of compositions within Kerr which do fall within the claimed composition. The inherency rejection applied above and previously does not state that the claimed properties are inherently present within the compositions of Kerr which fall outside of the claimed composition – in contrast, the inherency analysis is being applied only to those compositions which meet all of the claimed compositional limitations.
Applicant has asserted that the Examiner has failed to provide a rationale to show inherency. However, as re-stated above, the Examiner has explained that where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “fusion time” characteristic will therefore necessarily be present in Knerr as applied above. Once again, the mere existence of choices or embodiments within Kerr which fall outside of the claimed range does not rebut the fact that choices or embodiments which fall within the claimed ranges additionally exist. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant next relies on a precedential PTAB case to assert that the Examiner-applied inherency rejection is inappropriate. However, the circumstances of Ex Parte Whalen differ from the instant case in the following significant ways:
The Board determined that the Examiner failed to provide an adequate basis -based on evidence or scientific reasoning – to support the finding of inherency. By contrast, as described above, the Examiner has referenced the appropriate section of the MPEP, which states that a prima facie case exists where claimed and prior art products are identical or substantially identical in structure or composition. This is a basis which as been previously adjudicated (In re Best, 562 F.2d 1252, 1255, 195, USPQ 430, 433 (CCPA 1977)), and which places the burden on the Applicant to show that the prior art and claimed products are not the same.
Ex Parte Whalen concerns inherency with respect to an anticipation rejection, whereas the instant case concerns obviousness. The inherency analysis is therefore not limited to a specific formulation described within the prior art; instead, each of the claimed compositional limitations would have been obvious as described above, and the claimed fusion time characteristic would inherently be present in said obvious compositions. The Examiner in Whelan failed to point out how any specific composition disclosed by the prior art fell within the scope of the claims. By contrast, the Examiner in this case has shown how every component as claimed is present within the prior art and therefore would have been obvious to one having ordinary skill in the art.
Importantly, while an obviousness rejection is simultaneously discussed in Ex Parte Whelan, said obviousness rejection stands alongside the aforementioned inherency analysis. Said obviousness rejection was a separate matter additionally adjudicated by the board in the same case. The Examiner’s position with respect to obviousness was likewise overturned due to a lack of showing obviousness, however as described above, the Examiner in this case has shown how each and every component as claimed would have been obvious to one having ordinary skill in the art.
Applicant’s remaining arguments are directed towards allegations of unexpected results. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In this case, the Applicant has pointed to the experimental examples within Tables A4 and A5 to show that the claimed compositions contain fusion times with “surprisingly reduced fusion time.” However, the Examples pointed to by the Applicant, within Tables A4 and A5 represent compositions formed using “CaCO3-A” and masterbatches of “CaCO3-C” (c.f. p. 40 of instant Specification, [00240] and Table A1 and p. 41-42, Table A3), whereas the purportedly comparative examples are formed from a different calcium carbonate (CaCO3-B, as shown on p. 48, Table B2). The Applicant is therefore attempting to show that the use of a masterbatch is wholly responsible for the reduced fusion time while utilizing examples where additional variable(s) are present which might be at least partially responsible for the purported effect.
Furthermore, the data provided represents experimental results for a single halogenated polymer resin (PVC-1091), whereas many of the claims are open to virtually any halogenated polymer resin, and claim 20 is open to virtually any PVC, PVCC, PVDF, and mixtures thereof. The claims are additionally open to significantly broader compositional ranges compared to the experimental data (c.f. in claim 1, the halogenated resin may be any amount greater than or equal to 50 wt% of the composition, whereas the Experimental results cited include only around 70-80 wt% (c.f. Table A3, p. 41 of instant Specification). The applicant therefore asserts that a showing of unexpected results for a narrow portion of the claimed composition would be sufficient to rebut a prima facie determination of obviousness.
The applicant need not provide data for every possible composition as claimed; however, the experimental data provided is not reasonably commensurate in scope with the claims to sufficiently rebut a prima facie determination of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. 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
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