DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on April 30, 2026 has been fully considered. The amendment to instant claims 1 and 19 is acknowledged. Specifically, claim 1 has been amended to include limitations of:
wherein the fiber reinforced composition (C) comprises: an amount of volatile compounds (VOC) as determined according to VDA 278 of below 25 µg/g, an amount of medium volatile compounds (FOG) as determined according to VDA 278 of below 80 µg/g, or an amount of volatile compounds (VOC) as determined according to VDA 278 of below 25 µg/g and an amount of medium volatile compounds (FOG) as determined according to VDA 278 of 80 below µg/g.
In light of the amendment filed by Applicant, the previous rejections not cited below are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-6, 8, 11, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615) and Vestberg et al (US 2014/0190723), as evidenced by Jamtvedt et al (US 2011/0132864).
4. As to instant claims 1 and 19, Hemmeter et al discloses a fiber reinforced composition and an article comprising:
A) 30-75%wt of a polypropylene random copolymer comprising ethylene and/or C4-C8
alpha olefin; the copolymer comprising:
- 1-8%wt of ethylene or C4-C8 alpha olefin ([0021], as to instant claims 4-6, 11);
- xylene cold soluble content (XCS) of 1-20%wt ([0027], as to instant claims 8,
13);
- MFR of 10-150 g/10 min ([0019]);
- melting point of 140-156⁰C ([0056]);
- having a bimodal comonomer distribution ([0022])
B) 20-45%wt of glass fibers having length of 1-10 mm ([0031], as to instant claim 14), and
C) 0.5-5%wt of a polar modified polypropylene adhesion promoter ([0037]), specifically propylene homo- or copolymer grafted with 0.5-30%wt of maleic anhydride and having MFR of 1-50 g/10 min ([0039], [0065]-[0066], [0059], as to instant claim 15);
the overall fiber reinforced composition is having MFR of 3-100 g/10 min ([0034], as to instant claim 16).
5. As to instant claim 3, the split in two fractions having different comonomer content of the bimodal distribution is 50:50; or the first fraction is present in amount of 40-60%wt and the second fraction is present in amount of 60-40%wt ([0053]).
6. All ranges in the composition and article of Hemmeter et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
7. It is noted that instant claims 17 and 18 are product-by-process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
8. Hemmeter et al recites that the random polypropylene copolymer A) is produced in the presence of Ziegler-Natta catalyst, but does not teach said copolymer being produced by metallocene catalyst, and does not specify the amount of 1,2-erythro regio-defects.
9. However,
1) Mecklenburg et al discloses glass fiber-reinforced molding compositions comprising:
a) a random copolymer of propylene with up to 30%wt, preferably up to 6%wt of ethylene, or C4-10 alkenes having MFR of 0.2-200 g/10 min and xylene soluble fraction of 5%wt ([0028]-[0030]) and
b) 10-40%wt of glass fibers having a length of 3-6 mm ([0013], [0014]) and
c) a polar-functionalized compatibilizer ([0016]),
wherein Mecklenburg et al specifically teaches that such random propylene copolymers can be produced not only in the presence of Ziegler-Natta catalyst, but in the presence of metallocene catalyst as well ([0032]).
2) Vestberg et al further discloses random propylene copolymers having MFR of up to 100 g/10 min, Tm of 130-165⁰C and xylene soluble content of 0.5-10%wt ([0060-[0064]), wherein Vestberg et al explicitly teaches that such random propylene copolymers can be produced in the presence of Ziegler-Natta catalyst or metallocene catalyst, and the propylene copolymers produced in the presence of metallocene catalyst are having a high amount of 2,1-erythro regiodefects, such as more than 0.4%mol. or 0.7-0.9%mol ([0059], as to instant claims 1, 2).
The used metallocene catalyst is having the formula ([0183]):
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10. Since i) the glass fiber-reinforced random propylene copolymer compositions can be produced not only in the presence of Ziegler-Natta catalyst, but in the presence of metallocene catalyst, as taught by Mecklenburg et al, and ii) the random propylene copolymers having the values of MFR, XCS and Tm as required by Hemmeter et al, but further having a high amount of 2,1-erythro regiodefects can be produced in the presence of metallocene catalyst, as taught by Vestberg et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Mecklenburg et al, Vestberg et al and Hemmeter et al, and to produce, or obvious to try to produce the random propylene copolymer of Hemmeter et al in the presence of metallocene catalyst, so to form said copolymer having not only required MFR, XCS and Tm, but further high content of 2,1-erythro regio defects, given such is desired as well, or alternatively, include or obvious to try to include, at least partially, the random propylene copolymer of Vestberg et al as the random propylene copolymer in the composition and article of Hemmeter et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1, 2, 17-18). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
11. Since the composition and article of Hemmeter et al in view of Mecklenburg et al and Vestberg et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al and Vestberg et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since,
as evidenced by Jamtvedt et al the composition and the articles comprising propylene random copolymers as the major component, produced either in the presence of Ziegler-Natta catalyst or metallocene catalyst ([0032], [0058] of Jamtvedt et al), are having VOC values of 0.5-5 ppb ([0068] of Jamtvedt et al).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
12. It is further noted that instant specification does not provide sufficient evidence of criticality in using metallocene catalyst for producing the random propylene copolymer and providing the composition having the claimed ranges for VOC and FOG.
Thus,
1) the inventive examples IE1-IE3 of Table 3 of instant specification show the use of two very specific metallocene-produced random propylene copolymers with ethylene and hexene (P-I) and with ethylene and butene (P-II).
Though the propylene copolymers with ethylene and hexene (P-I) is having MFR2 after visbreaking of 79 g/10 min, Tm of 135⁰C and 1,2-erythro regio defects of 0.8%mol, and the propylene random copolymer with ethylene and butene P-II is having MFR2 of 94 g/10 min, Tm of 140⁰C and 1,2-regiodefects of 0.9%mol, these are specific copolymers with the specific properties, wherein the claimed ranges for MFR2 (45-150 g/10 min), Tm and especially 1,2-erythro regio-defects (open-ended range of at least 0.4%mol) for the claimed propylene random copolymers are significantly broader than said properties shown for the propylene random copolymers P-I and P-II. Further, for the inventive compositions IE1-IE3, the propylene random copolymer P-I in amounts of 74.5-76%wt, the propylene random copolymer P-II in amount of 77.1%wt, are used in combination with the specific amounts of 20% of glass fibers and 1.5%wt of adhesion promoter. The claimed ranges for the amounts of the components in the overall claimed composition are significantly broader than those presented for said examples. Whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
2) Though the comparative example CE2 of Table 3 shows VOC value of 25 µg/g and FOG value of 215 µg/g,
i) said comparative example CE2 is based on a commercial propylene homopolymer HJ120UB, and not a propylene random copolymer and
ii) even for said commercial propylene homopolymer VOC value was 25 µg/g, which value is very close to the claimed range of “below 25 µg/g”, which maybe 24.9 µg/g. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
13. Claims 1-6, 8-11, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615) and Vestberg et al (US 2014/0190723), as evidenced by Jamtvedt et al (US 2011/0132864), in further view of Bernreitner et al (US 2012/0225993).
14. The discussion with respect to Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615) and Vestberg et al (US 2014/0190723), as evidenced by Jamtvedt et al (US 2011/0132864), set forth in paragraphs 3-12 above, is incorporated here by reference.
15. Though Hemmeter et al in view of Mecklenburg et al and Vestberg et al disclose the use of the propylene copolymer having MFR of as high as 150 g/10 min, Hemmeter et al in view of Mecklenburg et al and Vestberg et al do not recite said random propylene copolymer as being visbroken.
16. However, Bernreitner et al discloses glass fiber-reinforced composition comprising:
10-60%wt of a propylene copolymer (C-PP1),
10-45%wt of fibers and
0.5-4%wt of a compatibilizer ([0048]-[0051]),
wherein Bernreitner et al teach such overall composition having a high melt flow rate of 12-80 g/10 min, XCS content of 5-45%wt ([0052]-[0053], as to instant claim 16), and wherein Bernreitner et al explicitly teaches that one possibility to obtain the propylene copolymer with high melt flow rate is visbreaking with a peroxide, with MFR before visbreaking being not more than 150 g/10 min, the visbreaking ratio being 2-10 ([0096], as to instant claim 9) and the amount of the peroxide depends on the MFR polypropylene before visbreaking and the desired target MFR ([0190]).
Thus, Bernreitner et al explicitly teaches that the propylene copolymer used for producing glass fiber-reinforced polypropylene compositions and having a high melt flow rate can be obtained by the process of visbreaking with visbreaking ratio of 2-10.
17. Since Bernreitner et al and Hemmeter et al in view of Mecklenburg et al and Vestberg et al are related to substantially the same glass fiber-reinforced propylene copolymer compositions having high MFR, and thereby belong to the same field of endeavor, wherein Bernreitner et al explicitly teaches that such high MFR values of the propylene copolymers can be obtained by the process of visbreaking by peroxide with visbreaking ratio of 2-10, or 6.5-10, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Bernreitner et al and Hemmeter et al in view of Mecklenburg et al and Vestberg et al, and to use, or obvious to try the use the propylene copolymer having MFR of as high as 150 g/10 min obtained by visbreaking, as taught Bernreitner et al, in the composition of Hemmeter et al in view of Mecklenburg et al and Vestberg et al, since such method for obtaining high MFR propylene copolymer is taught in the art as shown by Bernreitner et al, and it would have been obvious to choose such method for forming high MFR propylene copolymer used in the composition of Hemmeter et al in view of Mecklenburg et al and Vestberg et al as well. Further, based on the teachings of Bernreitner et al that the amount of used peroxide can be chosen depending on the targeted MFR and initial MFR of the propylene copolymer, therefore, it would have been obvious to a one of ordinary skill in the art to make variations and optimize the MFR of the initial propylene copolymer, including the use of propylene copolymer having initial MFR in the range of 0.5-10 g/10 min, so that by applying the visbreaking ratio of 2-10, or 6.5-10, to obtain the propylene copolymer having MFR of 10-150 g/10 min used as the component A) in the composition of Hemmeter et al in view of Mecklenburg et al and Vestberg et al as well, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
18. Since the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Bernreitner et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Bernreitner et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since,
as evidenced by Jamtvedt et al the composition and the articles comprising propylene random copolymers as the major component, produced either in the presence of Ziegler-Natta catalyst or metallocene catalyst ([0032], [0058] of Jamtvedt et al), are having VOC values of 0.5-5 ppb ([0068] of Jamtvedt et al).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
19. Claims 1-8, 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615) and Vestberg et al (US 2014/0190723), as evidenced by Jamtvedt et al (US 2011/0132864), in further view of Ommundsen et al (US 2009/0306271).
20. The discussion with respect to Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615) and Vestberg et al (US 2014/0190723), as evidenced by Jamtvedt et al (US 2011/0132864), set forth in paragraphs 3-12 above, is incorporated here by reference.
21. Though Hemmeter et al in view of Mecklenburg et al and Vestberg et al disclose the propylene copolymer as being multimodal, having two fractions with different comonomer content and the split of two fractions having different comonomer content of the bimodal distribution being 50:50; or the first fraction is present in amount of 40-60%wt and the second fraction is present in amount of 60-40%wt ([0053] of Hemmeter et al), Hemmeter et al in view of Mecklenburg et al and Vestberg et al do not recite the comonomers being butene and hexene and the comonomer content being as cited in claims 12 and 7).
22. However, Ommundsen et al disclose a multimodal polymer composition comprising:
a) 40-60%wt of a propylene random copolymer comprising propylene and up to 2.5%wt of a C4-C10 alpha olefin (Abstract, [0022], [0021]) and
b) 60-40%wt of a random copolymer of propylene with 02.5-7%wt, or 3.5-6%wt of C4-C10 alpha olefin ([0027],
wherein the total comonomer content being 0.5-5%wt ([0015]-[0018]), MFR of at least 6-50 g/10 min ([0029]) and XCS fraction of 0.1-20%wt or 5-15%wt ([0030], [0046]), produced using metallocene catalyst ([0040]).
It is noted that C4-C10 alpha olefin comonomers include butene-1 and hexene-1, and it would have been obvious to a one of ordinary skill in the art to choose and use butene-1 or hexene-1 as the comonomers in the component a) and b) of the composition of Ommundsen et al as well (as to instant claims 5-6, 11), since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
23. Since Ommundsen et al disclose a multimodal random propylene copolymer composition, produced in the presence of metallocene catalyst and having MFR and XCS fraction as required by Hemmeter et al in view of Mecklenburg et al and Vestberg et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ommundsen et al and Hemmeter et al in view of Mecklenburg et al and Vestberg et al, and to include, or obvious to try to include the multimodal random propylene copolymer composition of Ommundsen et al as the component A) in the composition of Hemmeter et al in view of Mecklenburg et al and Vestberg et al, since it would have been obvious to a choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
24. Since the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Ommundsen et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Ommundsen et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since,
as evidenced by Jamtvedt et al the composition and the articles comprising propylene random copolymers as the major component, produced either in the presence of Ziegler-Natta catalyst or metallocene catalyst ([0032], [0058] of Jamtvedt et al), are having VOC values of 0.5-5 ppb ([0068] of Jamtvedt et al).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
25. Claims 1-6, 8, 11, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615), Vestberg et al (US 2014/0190723) and Boragno et al (US 2017/0166711).
26. As to instant claims 1 and 19, Hemmeter et al discloses a fiber reinforced composition and an article comprising:
A) 30-75%wt of a polypropylene random copolymer comprising ethylene and/or C4-C8
alpha olefin; the copolymer comprising:
- 1-8%wt of ethylene or C4-C8 alpha olefin ([0021], as to instant claims 4-6, 11);
- xylene cold soluble content (XCS) of 1-20%wt ([0027], as to instant claims 8,
13);
- MFR of 10-150 g/10 min ([0019]);
- melting point of 140-156⁰C ([0056]);
- having a bimodal comonomer distribution ([0022])
B) 20-45%wt of glass fibers having length of 1-10 mm ([0031], as to instant claim 14), and
C) 0.5-5%wt of a polar modified polypropylene adhesion promoter ([0037]), specifically propylene homo- or copolymer grafted with 0.5-30%wt of maleic anhydride and having MFR of 1-50 g/10 min ([0039], [0065]-[0066], [0059], as to instant claim 15);
the overall fiber reinforced composition is having MFR of 3-100 g/10 min ([0034], as to instant claim 16).
27. As to instant claim 3, the split in two fractions having different comonomer content of the bimodal distribution is 50:50; or the first fraction is present in amount of 40-60%wt and the second fraction is present in amount of 60-40%wt ([0053]).
28. All ranges in the composition and article of Hemmeter et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
29. It is noted that instant claims 17 and 18 are product-by-process claims. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” See In re Thorpe, 777F.2d 695,698,227 USPQ 964,966 (Fed.Cir.1985).
30. Hemmeter et al recites that the random polypropylene copolymer A) is produced in the presence of Ziegler-Natta catalyst, but does not teach said copolymer being produced by metallocene catalyst, and does not specify the amount of 1,2-erythro regio-defects.
31. However,
1) Mecklenburg et al discloses glass fiber-reinforced molding compositions comprising:
a) a random copolymer of propylene with up to 30%wt, preferably up to 6%wt of ethylene, or C4-10 alkenes having MFR of 0.2-200 g/10 min and xylene soluble fraction of 5%wt ([0028]-[0030]) and
b) 10-40%wt of glass fibers having a length of 3-6 mm ([0013], [0014]) and
c) a polar-functionalized compatibilizer ([0016]),
wherein Mecklenburg et al specifically teaches that such random propylene copolymers can be produced not only in the presence of Ziegler-Natta catalyst, but in the presence of metallocene catalyst as well ([0032]).
2) Vestberg et al further discloses random propylene copolymers having MFR of up to 100 g/10 min, Tm of 130-165⁰C and xylene soluble content of 0.5-10%wt ([0060-[0064]), wherein Vestberg et al explicitly teaches that such random propylene copolymers can be produced in the presence of Ziegler-Natta catalyst or metallocene catalyst, and the propylene copolymers produced in the presence of metallocene catalyst are having a high amount of 2,1-erythro regiodefects, such as more than 0.4%mol. or 0.7-0.9%mol ([0059], as to instant claims 1, 2).
The used metallocene catalyst is having the formula ([0183]):
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3) Boragno et al discloses a fiber-reinforced composition comprising:
a) 50-84.5%wt of a polypropylene random copolymer comprising ethylene and/or C4-C8 alpha olefin, having MFR2 of at least 2.5 g/10 min; Tm of at least 135⁰C ([0029]);
b) 15-45%wt of glass fibers;
c) 0.5-5%wt of a modified polypropylene as adhesion promoter ([0202]-[0208]),
wherein the polypropylene random copolymer is produced in the presence of metallocene catalyst ([0058]-[0072]),
wherein such composition is having VOC of below 35 ppm and FOG of below 100 ppm ([0224]-[0226]), specifically exemplified compositions are having FOG of 74 ppm and VOC of 25 ppm ([0296]).
It is further noted that units “ppm” are the same as units “µg/g”:
Parts per million (PPM) is a unit of measurement that indicates the concentration of a substance in a million parts of a solution. It is equivalent to micrograms per gram (μg/g), meaning that 1 ppm is equal to 1 μg/g.
32. Since i) the glass fiber-reinforced random propylene copolymer compositions can be produced not only in the presence of Ziegler-Natta catalyst, but in the presence of metallocene catalyst, as taught by Mecklenburg et al, ii) the random propylene copolymers having the values of MFR, XCS and Tm as required by Hemmeter et al, but further having a high amount of 2,1-erythro regiodefects can be produced in the presence of metallocene catalyst, as taught by Vestberg et al, and iii) the fiber-reinforced compositions based on propylene random copolymers produced using metallocene catalyst are having low values of VOC and FOG, as shown by Boragno et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Mecklenburg et al, Vestberg et al, Boragno et al and Hemmeter et al, and to produce, or obvious to try to produce the random propylene copolymer of Hemmeter et al in the presence of metallocene catalyst, so to form said copolymer having not only required MFR, XCS and Tm, but further high content of 2,1-erythro regio defects and low values of VOC and FOG, given such are desired as well, or alternatively, include or obvious to try to include, at least partially, the random propylene copolymer of Vestberg et al as the random propylene copolymer in the composition and article of Hemmeter et al, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1, 2, 17-18). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
33. Since the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since,
Boragno et al explicitly teach the fiber-reinforced metallocene-produced propylene-random copolymer-based compositions further comprising modified polypropylene adhesion promoters, are having FOG as low as 74 µg/g. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
34. It is further noted that instant specification does not provide sufficient evidence of criticality in using metallocene catalyst for producing the random propylene copolymer and providing the composition having the claimed ranges for VOC and FOG.
Thus,
1) the inventive examples IE1-IE3 of Table 3 of instant specification show the use of two very specific metallocene-produced random propylene copolymers with ethylene and hexene (P-I) and with ethylene and butene (P-II).
Though the propylene copolymers with ethylene and hexene (P-I) is having MFR2 after visbreaking of 79 g/10 min, Tm of 135⁰C and 1,2-erythro regio defects of 0.8%mol, and the propylene random copolymer with ethylene and butene P-II is having MFR2 of 94 g/10 min, Tm of 140⁰C and 1,2-regiodefects of 0.9%mol, these are specific copolymers with the specific properties, wherein the claimed ranges for MFR2 (45-150 g/10 min), Tm and especially 1,2-erythro regio-defects (open-ended range of at least 0.4%mol) for the claimed propylene random copolymers are significantly broader than said properties shown for the propylene random copolymers P-I and P-II. Further, for the inventive compositions IE1-IE3, the propylene random copolymer P-I in amounts of 74.5-76%wt, the propylene random copolymer P-II in amount of 77.1%wt, are used with the specific amounts of 20% of glass fibers and 1.5%wt of adhesion promoter. The claimed ranges for the amounts of the components in the overall claimed composition are significantly broader than those presented for said examples. Whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
2) Though the comparative example CE2 of Table 3 shows VOC value of 25 µg/g and FOG value of 215 µg/g,
i) said comparative example CE2 is based on a commercial propylene homopolymer HJ120UB, and not a propylene random copolymer and
ii) even for said commercial propylene homopolymer VOC value was 25 µg/g, which value is very close to the claimed range of “below 25 µg/g”, which maybe 24.9 µg/g. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
35. Claims 1-6, 8-11, 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615), Vestberg et al (US 2014/0190723) and Boragno et al (US 2017/0166711), in further view of Bernreitner et al (US 2012/0225993).
36. The discussion with respect to Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615), Vestberg et al (US 2014/0190723) and Boragno et al (US 2017/0166711), set forth in paragraphs 25-34 above, is incorporated here by reference.
37. Though Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al disclose the use of the propylene copolymer having MFR of as high as 150 g/10 min, Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al do not recite said random propylene copolymer as being visbroken.
38. However, Bernreitner et al discloses glass fiber-reinforced composition comprising:
10-60%wt of a propylene copolymer (C-PP1),
10-45%wt of fibers and
0.5-4%wt of a compatibilizer ([0048]-[0051]),
wherein Bernreitner et al teach such overall composition having a high melt flow rate of 12-80 g/10 min, XCS content of 5-45%wt ([0052]-[0053], as to instant claim 16), and wherein Bernreitner et al explicitly teaches that one possibility to obtain the propylene copolymer with high melt flow rate is visbreaking with a peroxide, with MFR before visbreaking being not more than 150 g/10 min, the visbreaking ratio being 2-10 ([0096], as to instant claim 9) and the amount of the peroxide depends on the MFR polypropylene before visbreaking and the desired target MFR ([0190]).
Thus, Bernreitner et al explicitly teaches that the propylene copolymer used for producing glass fiber-reinforced polypropylene compositions and having a high melt flow rate can be obtained by the process of visbreaking with visbreaking ratio of 2-10.
39. Since Bernreitner et al and Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al are related to substantially the same glass fiber-reinforced propylene copolymer compositions having high MFR, and thereby belong to the same field of endeavor, wherein Bernreitner et al explicitly teaches that such high MFR values of the propylene copolymers can be obtained by the process of visbreaking by peroxide with visbreaking ratio of 2-10, or 6.5-10, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Bernreitner et al and Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al, and to use, or obvious to try the use the propylene copolymer having MFR of as high as 150 g/10 min obtained by visbreaking, as taught Bernreitner et al, in the composition of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al, since such method for obtaining high MFR propylene copolymer is taught in the art as shown by Bernreitner et al, and it would have been obvious to choose such method for forming high MFR propylene copolymer used in the composition of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al as well. Further, based on the teachings of Bernreitner et al that the amount of used peroxide can be chosen depending on the targeted MFR and initial MFR of the propylene copolymer, therefore, it would have been obvious to a one of ordinary skill in the art to make variations and optimize the MFR of the initial propylene copolymer, including the use of propylene copolymer having initial MFR in the range of 0.5-10 g/10 min, so that by applying the visbreaking ratio of 2-10, or 6.5-10, to obtain the propylene copolymer having MFR of 10-150 g/10 min used as the component A) in the composition of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al as well, thereby arriving at the present invention. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
40. Since the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al, Boragno et al and Bernreitner et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al, Boragno et al and Bernreitner et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since, Boragno et al explicitly teach the fiber-reinforced metallocene-produced propylene-random copolymer-based compositions further comprising modified polypropylene adhesion promoters, are having FOG as low as 74 µg/g.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
41. Claims 1-8, 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615), Vestberg et al (US 2014/0190723) and Boragno et al (US 2017/0166711), in further view of Ommundsen et al (US 2009/0306271).
42. The discussion with respect to Hemmeter et al (US 2015/0218355) in view of Mecklenburg et al (US 2007/0123615), Vestberg et al (US 2014/0190723) and Boragno et al (US 2017/0166711), set forth in paragraphs 25-34 above, is incorporated here by reference.
43. Though Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al disclose the propylene copolymer as being multimodal, having two fractions with different comonomer content and the split of two fractions having different comonomer content of the bimodal distribution being 50:50; or the first fraction is present in amount of 40-60%wt and the second fraction is present in amount of 60-40%wt ([0053] of Hemmeter et al), Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al do not recite the comonomers being butene and hexene and the comonomer content being as cited in claims 12 and 7).
44. However, Ommundsen et al disclose a multimodal polymer composition comprising:
a) 40-60%wt of a propylene random copolymer comprising propylene and up to 2.5%wt of a C4-C10 alpha olefin (Abstract, [0022], [0021]) and
b) 60-40%wt of a random copolymer of propylene with 02.5-7%wt, or 3.5-6%wt of C4-C10 alpha olefin ([0027],
wherein the total comonomer content being 0.5-5%wt ([0015]-[0018]), MFR of at least 6-50 g/10 min ([0029]) and XCS fraction of 0.1-20%wt or 5-15%wt ([0030], [0046]), produced using metallocene catalyst ([0040]).
It is noted that C4-C10 alpha olefin comonomers include butene-1 and hexene-1, and it would have been obvious to a one of ordinary skill in the art to choose and use butene-1 or hexene-1 as the comonomers in the component a) and b) of the composition of Ommundsen et al as well (as to instant claims 5-6, 11), since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
45. Since Ommundsen et al disclose a multimodal random propylene copolymer composition, produced in the presence of metallocene catalyst and having MFR and XCS fraction as required by Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ommundsen et al and Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al, and to include, or obvious to try to include the multimodal random propylene copolymer composition of Ommundsen et al as the component A) in the composition of Hemmeter et al in view of Mecklenburg et al, Vestberg et al and Boragno et al, since it would have been obvious to a choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
46. Since the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al, Boragno et al and Ommundsen et al are substantially the same as those claimed in instant invention, i.e. comprising the same propylene random copolymer and the same polar modified polypropylene adhesion promoter as claimed in instant invention, which are the main contributors of volatile compounds in the composition, are produced by substantially the same process of polymerization in the presence of the same metallocene catalyst as claimed in instant invention, therefore, the composition and article of Hemmeter et al in view of Mecklenburg et al, Vestberg et al, Boragno et al and Ommundsen et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, especially since,
Boragno et al explicitly teach the fiber-reinforced metallocene-produced propylene-random copolymer-based compositions further comprising modified polypropylene adhesion promoters, are having FOG as low as 74 µg/g. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
47. Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of a copending application 18/845,135 (published as US 2025/0179280).
48. The rejection is adequately set forth on pages 14-16 of an Office action mailed on January 30, 2026 and is incorporated here by reference.
49. With respect to the amended claims 1 and 19, since the composition and article of the application 18/845,135 are substantially the same as those claimed in instant invention, therefore, the composition and article of application 18/845,135 will intrinsically and necessarily comprise, or would be reasonably expected to comprise the same properties, including VOC and FOG amounts, which are the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
50. Since no Terminal Disclaimer has been filed, the rejection is maintained.
51. In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Response to Arguments
52. Applicant's arguments filed on April 30, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
53. It is further noted, that the above rejections are based on combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
54. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
instant specification does not provide sufficient evidence of criticality in using metallocene catalyst for producing the random propylene copolymer and providing the composition having the claimed ranges for VOC and FOG.
Thus,
a) the inventive examples IE1-IE3 of Table 3 of instant specification show the use of two very specific metallocene-produced random propylene copolymers with ethylene and hexene (P-I) and with ethylene and butene (P-II).
Though the propylene copolymers with ethylene and hexene (P-I) is having MFR2 after visbreaking of 79 g/10 min, Tm of 135⁰C and 1,2-erythro regio defects of 0.8%mol, and the propylene random copolymer with ethylene and butene P-II is having MFR2 of 94 g/10 min, Tm of 140⁰C and 1,2-regiodefects of 0.9%mol, these are specific copolymers with the specific properties, wherein the claimed ranges for MFR2 (45-150 g/10 min), Tm and especially 1,2-erythro regio-defects (open-ended range of at least 0.4%mol) for the claimed propylene random copolymers are significantly broader than said properties shown for the propylene random copolymers P-I and P-II. Further, for the inventive compositions IE1-IE3, the propylene random copolymer P-I in amounts of 74.5-76%wt, the propylene random copolymer P-II in amount of 77.1%wt, are used with the specific amounts of 20% of glass fibers and 1.5%wt of adhesion promoter. The claimed ranges for the amounts of the components in the overall claimed composition are significantly broader than those presented for said examples. Whether the 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. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
b) Though the comparative example CE2 of Table 3 shows VOC value of 25 µg/g and FOG value of 215 µg/g,
i) said comparative example CE2 is based on a commercial propylene homopolymer HJ120UB, and not a propylene random copolymer and
ii) even for said commercial propylene homopolymer VOC value was 25 µg/g, which value is very close to the claimed range of “below 25 µg/g”, which maybe 24.9 µg/g. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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