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 .
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.
2. Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
3. Claims 1 and 19 refer to “the comonomer” with respect to the component a), but there is no antecedent basis for said limitation.
4. Claims 4, 7, 12 refer to “a comonomer”, however, since there are no prepositions “the” or “said in front of said terms, it is not clear if “comonomer” cited in claims 4, 7, 12 is the same or different from the previously cited.
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.
5. 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).
6. 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).
7. 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]).
8. 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).
9. 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).
10. 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.
11. 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]):
PNG
media_image1.png
336
476
media_image1.png
Greyscale
12. 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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
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), 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), set forth in paragraphs 5-12 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, 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:
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(A) Combining prior art elements according to known methods to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(B) Simple substitution of one known element for another to obtain predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
PNG
media_image2.png
18
19
media_image2.png
Greyscale
(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. 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), in further view of Ommundsen et al (US 2009/0306271).
19. 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), set forth in paragraphs 5-12 above, is incorporated here by reference.
20. 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).
21. 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).
22. 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).
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).
23. 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
24. The copending application 18/845,135 claims:
A fiber reinforced composition (C), wherein the fiber reinforced composition (C) has a melt flow rate MFR2 (230C, 2.16 kg) determined according to ISO 1133 in the range of 10.0 to 100.0 g/10 min,
wherein the fiber reinforced composition (C) comprises:
a) 20.0 to 89.9 wt.-% of a propylene random copolymer (P),wherein the propylene random copolymer (P) is a copolymer of propylene and at least one comonomer selected from C4 to C12 a-olefins, wherein the propylene random copolymer (P) has an amount of 1,2 erythro regio- defects in a range of 0.4 to 1.2 mol-%,
b) 5.0 to 45.0 wt.-% of glass fibers (GF),
c) 0.1 to 5.0 wt.-% of an adhesion promoter (AP),
based on the overall weight of the fiber reinforced composition (C).
The propylene random copolymer (P) has a melt flow rate MFR2 (230C, 2.16 kg) determined according to ISO 1133 in a range of 45 to 150 g/10 min, a melting temperature Tm determined according to differential scanning calorimetry (DSC) in a range of 125 to 150 °C; the propylene random copolymer (P) has a comonomer content in a range of 2.5 to 10.0 mol-%.
The propylene random copolymer (P) is a copolymer of propylene and 1-butene.
The propylene random copolymer (P) comprises i) a first propylene random copolymer (P1), and ii) a second propylene random copolymer (P2) having a higher comonomer content than the first propylene random copolymer (P1), wherein a weight ratio between the first propylene random copolymer (P1) and the second propylene random copolymer (P2) is in thea range of 20/80 to 60/40.
The propylene random copolymer (P) comprises:
i) a first propylene random copolymer (P1) having a comonomer content in a range of 2.0 to 6.0 mol-%, and
ii) a second propylene random copolymer (P2) having a comonomer content in a range of 4.0 to 14.0 mol-%, wherein the comonomer content of the second propylene random copolymer (P2) is different, and preferably higher, than the comonomer content of the first propylene random copolymer (P1).
The glass fibers (GF) have:
i) an average length of 1.0 to 10.0 mm, and/or
ii) an average diameter of 5 to 20 pm.
The adhesion promoter (AP) is a polar modified propylene homo- or copolymer (PM-PP), preferably comprising polar groups selected from the group consisting of acid anhydrides, carboxylic acids, carboxylic acid derivatives, primary and secondary amines, hydroxyl compounds, oxazoline and epoxides, ionic compounds, and combinations thereof.
The propylene random copolymer (P) is obtained in the presence of a solid catalyst system (SCS) comprising a metallocene compound.
Further claimed an article comprising the fiber reinforced composition (C).
25. Thus, the limitations claimed in instant invention are obvious variants of those claimed in the copending application 18/845,135.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764