DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 8/8/23, claims 1-15 are currently pending in the application.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Michie et al. (US 2008/0221273 A1), in view of Jejelowo et al. (US 6,242,545 B1).
Regarding claims 1, 4, 6, 8-10, Michie teaches a high-density polyethylene composition comprising:
40 to 60 wt.% of a first component, such as polyethylene a-olefin copolymer, having density of from 0.915 to 0.940 g/cm3 and melt index (I21) in the range of 0.5 to 10 g/10 minutes;
to 60 wt.% of a second component, such as an ethylene polymer,
wherein said high density polyethylene composition has a density of from 0.950 to 0.960 g/cm3, and a melt index (I2) greater than 1, or at least 2, i.e., overlaps with claimed range (Ab., [0011], [0023], [0054], Ref. claims).
Thus, the disclosed density and I21 of the high molecular weight component, the density and I2 of the composition, and the weight percentages of the two polymers in the composition overlap in scope with those of the claimed invention.
Michie further teaches a metallocene catalyst systems for preparing the polymers [0064].
Michie is silent on a composition comprising a high molecular weight component having the claimed molecular weight distribution (Mw/Mn).
At the outset, it is noted that in the case 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 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The secondary reference to Jejelowo teaches substituted hafnocene metallocene catalyst systems having improved catalyst activity and providing for polymers having a higher molecular weight and at the same time, having a lower density (Ab., col. 2, lines 40-58). Disclosed polymers include polymers based on ethylene and a comonomer (col. 10, line 35-col. 11, line 3), having a density, preferably of from 0.910 to 0.940 g/cc, and a narrow molecular weight distribution, of from greater than 1.5 to 4 (col. 12, lines 43-57).
Given the teaching on advantages of the catalyst system in Jejelowo, and the teaching in Michie on suitable high molecular weight component, low molecular weight component, amounts and characteristics thereof, and the overall properties of the high density polyethylene composition, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize Jejelowo’s catalyst in preparing Michie’s high molecular weight component having a molecular weight distribution as claimed, including polyethylene compositions as in the claimed invention, and having a claimed CD value for the low molecular weight component.
Regarding the claimed CD value, Michie’s composition may comprise, for e.g., 45 wt.% high molecular weight component having a density of 0.930g/cm3, 55 wt.% of low molecular weight component, and have an overall density of 0.959g/cm3. The calculated CD value for the low molecular weight component is 0.984g/cm3.
Regarding claims 2 and 3, Michie teaches a polyethylene composition having a molecular weight distribution ranging from 6 to 25 [0054].
Regarding claims 5, 7, 11-13, Michie teaches a high density polyethylene composition having a density of from 0.950 to 0.960 g/cm3, and a melt index (I2) greater than 1, or at least 2, i.e., overlaps with the claimed range, and a molecular weight distribution ranging from 6 to 25 (Ab., [0011], [0023], [0054], Ref. claims).
With regard to the other properties recited in claims 5, 7, 11-13, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare the composition within the scope of Michie, as modified by Jejelowo, including those within the scope of instant claim 1. Noting that the original specification does not identify any feature that results in the claimed effect or physical property outside of the presence of the claimed components in claimed amounts, a skilled artisan would reasonably expect polyethylene compositions of overlapping scope to have the claimed property, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 14 and 15, Michie teaches using the high density polyethylene compositions for molded articles, such as a bottle cap, that can be capable of being a beverage bottle cap [0088]-[0089].
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-15 of copending Application No. 18/264,596 (reference application, preliminary amdt. dated 8/8/23). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 is as follows:
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Although the copending claims are silent on a composition as claimed in one single embodiment, given the overlapping scope of components a) and b) and the polyethylene composition of copending claims with those of the presently claimed invention, it would have been obvious to one of ordinary skill in the art to prepare a composition within the scope of the claimed invention (obviates instant claims 1, 4, 8-10). As stated in paragraph 6 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claims 2, 3, 11, 14 and 15, copending claims 2, 3, 12, 14 and 15 obviate the claimed limitations.
Regarding claims 7, 12 and 13, the polyethylene composition of instant claim 1 overlaps in scope with that of copending claim 1 and therefore, compositions of overlapping scope would reasonably be expected to have the claimed property, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Michie et al. (US 20100084363 A1)
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762