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 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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 because:
Claim 2 recites the limitation "”the copolymer" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, “the copolymer” will be interpreted as “the propylene/ethylene copolymer”.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 8-9 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated over EP2933291 to Grestenberger et al.
Regarding Claim 1, 3, Grestenberger teaches a propylene copolymer composition [title] comprising 85-99.5 wt% of a random copolymer of propylene (A) [0006] wherein the preferred comonomer is ethylene [0018] reading on 85-99 w/w propylene/ethylene copolymer; and 0.5-15 wt% of a heterophasic copolymer of propylene (B) [0006] that is a elastomeric component [0013] and contributes to improved impact-stiffness balance [0040] reading on 0.2-14 w/w elastomer as impact modifier based on polypropylene; and a total amount of additives is preferably between 0.0001 and 2.5 wt% [0073] reading on additives between 1% w/w and 2% w/w.
Regarding claim 8, Grestenberger teaches the propylene resin according to claim 1 wherein the ratio of propylene/ethylene copolymer to elastomer is reasonably calculated as 5.6:1 to 199:1 ( 99.5 / 0.5 = 199 and 85/15 = 5.6).
Regarding Claim 9, Grestenberger teaches the propylene resin according to claim 1 comprising additives such as nucleating agents and antioxidants [0074].
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 and 35 U.S.C. 103 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Grestenberger et al.
Regarding Claim 10 , Grestenberger teaches the propylene resin according to claim 1 wherein all properties are tested using ISO methods [0095 – 0102] and do not necessarily correspond to instant applications ASTM testing procedures [table 4].
Grestenberger is silent regarding melt flow rate, density, elongation, flexural modulus, tensile strength, and Izod impact wherein the aforementioned properties are tested using ASTM testing procedures, as set forth in instant applications ASTM testing procedures [table 4].
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Grestenberger, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties set forth in claim 10 would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 00/39238 to Pitteri et al.
Regarding Claims 1 and 3, Pitteri teaches polymer (1) 90-100% by weight of a propylene/C2-C10 α-olefin random copolymer [abstract] wherein ethylene is the most preferred comonomer [reading on 85-99 w/w propylene/ethylene copolymer; and 0-10 wt% of an ethylene/C2-C10 α-olefin random α-olefin elastomer copolymer [abstract] reading on 0.2-14 w/w elastomer as impact modifier based on polypropylene; wherein the composition is blended with additives such as antistatic additives [page 7, ¶3].
Pitteri does not particularly teach additives between 1-2% w/w.
However, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the amount of antistatic additive so that the polypropylene resin has adequate antistatic properties. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05(II))
Regarding Claim 2, Pitteri teaches the polypropylene resin of claim 1, wherein polymer (1) comprises comonomer content of 0.5-6% by weight that is preferably ethylene [page 2, last full paragraph] which is calculated as propylene to ethylene ratio of between 15.6:1 to 199:1 that reasonably reads on the range of 15.7:1 to 49:1.
Though the prior art range is not identical to the claimed range, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 4, Pitteri teaches the polypropylene resin of claim 1, wherein polymer (2) is a ethylene/propylene/C4-C10 -olefin [page 3, ¶4].
Pitteri does not specifically teach the alpha olefin is butylene.
However, Pitteri teaches alpha olefins having C4-C10 range [page 3, ¶4] thereby teaching butylene with “sufficient specificity” that one of ordinary skill in the art would arrive at the claimed combination. Therefore, it would have been obvious to one of ordinary skill in the art to select butylene as the comonomer. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” butylene within the comonomer as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claim 5, Pitteri teaches the polypropylene resin of claim 4, wherein the comonomer content in the ethylene/propylene/butene-1 copolymer is 5-15 mole% [page 3, ¶4]. Therefore, reasonably assuming the ethylene and propylene are of equal weight, the propylene to butylene ratio is reasonably calculated as 3.3:1 to 10:1 (50%/5% = 10 and 50%/15% = 3.3)
Regarding Claim 6, Pitteri teaches the polypropylene resin of claim 1, wherein polymer (2) is an ethylene/butene-1 copolymer [page 3, ¶4].
Regarding Claim 7, Pitteri teaches the polypropylene resin of claim 6, wherein the comonomer content in the ethylene/butene-1 copolymer is 5-15 mole% [page 3, ¶4] which is calculated as a propylene to butylene ratio of 5:1 to 19:1.
Though the prior art range is not identical to the claimed range, it does overlap (4:1 to 49:1). It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 8, Pitteri teaches the polypropylene resin of claim 1 comprising 90-100% by weight polymer (1) and 0-10 wt% of polymer (2) [abstract]. As such, the ratio of propylene/ethylene copolymer to elastomer is reasonably calculated as 9:1 and above.
Though the prior art range is not identical to the claimed range (6.1:1 to 98:1), it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 9, Pitteri teaches the polypropylene resin of claim 1, wherein the composition is blended with additives such as antistatic additives [page 7, ¶3]
Regarding Claim 10, Pitteri teaches the polypropylene resin of claim 1, wherein the polymer composition has an MFR of 1-15 g/10 min [page 2, last paragraph], elongation values of 7.2-20.6 [table 2], Flexural modulus values of 600-1800 MPa [Table 2] and notched Izod testing [table 2]. However these values are taken using a different testing procedures such as ISO methods [page 9, ¶1] and do not necessarily correspond to instant applications ASTM testing procedures [table 4]. Therefore, Pitteri does not teach the density, elongation, flexural modulus, tensile strength, or unnotched IZOD as set forth in instant claim 10.
Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Pitteri, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties set forth in claim 10 would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764