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 amendment dated 6/1/26, claims 1-17 are currently pending in the application.
The terminal disclaimer filed on 6/8/26 disclaiming the terminal portion of any
patent granted on this application which would extend beyond the expiration date of
18/264593 has been reviewed and is accepted. The terminal disclaimer has been
recorded.
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 1-4, 7-9, 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Turner et al. (US 2009/0283939 A1, of record).
Regarding claims 1, 4, 7-9, 11, Turner teaches a composition comprising:
45 to 80% by weight of a high molecular weight component comprising an ethylene interpolymer that has a density of from 0.920 g/cm3 to 0.950 g/cm3, an I21 of from 0.05 to 1 dg/min, i.e., 0.05 to 1g/10 min, and a molecular weight distribution (Mw/Mn) of from 1.5 to 10;
55 to 20% by weight of a low molecular weight component comprising an ethylene polymer, said weight percentages being based on the sum weight of the high molecular weight component and the low molecular weight component; and wherein
said composition has a density from 0.950 g/cm3 to 0.970 g/cm3, and a melt index (I2) of from 0.02 to 0.2 dg/min, i.e., 0.02 to 0.2 g/10min (Ab., [0045], [0054]-[0086], ref. claims).
Thus, the disclosed density, molecular weight distribution and I21 of 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.
Turner is silent on a composition comprising claimed components having claimed features in one single embodiment as in the claimed invention.
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.
Given the teaching on suitable high molecular weight component and low molecular weight component, amounts thereof and the properties of the composition, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, as of the effective filing date of the claimed invention, to prepare any composition within the scope of Turner, including those of the claimed invention, and having a claimed CD value for the low molecular weight component.
Regarding the claimed CD value, Turner’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, Turner teaches a composition having a molecular weight distribution of from 8 to 40 [0085].
Regarding claim 12, for reasons stated above, one of ordinary skill in the art would have found it obvious to prepare the composition within the scope of Turner, including those of overlapping scope. 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 the polyethylene composition of overlapping scope to have the claimed property, absent evidence to the contrary.
Regarding claim 13, the limitation “wherein the polyethylene composition was polymerized using a hafnium-containing metallocene catalyst system” is a process limitation in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
Regarding claims 14 and 15, Turner teaches that the compositions can be molded into various articles, including bottle and having excellent mechanical strength and rigidity, in addition to excellent balance of stiffness and toughness, environmental stress crack resistance and impact resistance [0031], [0128]. In view of the advantageous properties, a skilled artisan would have found it obvious to prepare a closure for a beverage bottle from the disclosed compositions of overlapping scope.
Allowable Subject Matter
Claims 5, 10, 16 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
In view of the amendment (dt. 6/1/26) and the terminal disclaimer (dt. 6/8/26), the rejections based on Michie-Jejelowo combination and the double rejections set forth in the office action dated 3/2/26 are withdrawn. Applicant’s arguments on the rejections based on Turner et al. have been duly considered.
Applicant argues that Turner is directed to a different type of polyethylene for blow molding of large containers and not to injection molding for articles such as closures, that Turner’s teachings on the flow index (I21) for the high molecular weight component (disclosure: 0.05-1, preferred: 0.20-0.40, Examples 0.25-0.35 g/10min, and Turner’s overall melt index (disclosed: 0.02 to 0.2, preferred 0.03 to 0.1, examples: 0.06-0.08 g/10 min), suggest that Turner achieving a balance of stiffness, stress crack and impact resistant with a preferred I21 value of 0.20 to 0.40 g/10min and that Turner's teaching of lower 121 values as well as a low overall melt index 12 value of 0.03 to 0.1 g/10 min therefore enforce that low melt flow values are necessary to achieve the balance of mechanical properties for large containers.
In response, Turner prescribes a range of a disclosure: 0.05-1 g/10min for the flow index (I21) for the high molecular weight component, i.e., a range that overlaps in scope with the claimed range of 1 to 10 g/10min. Likewise, turner teaches an overall melt index (I2) of 0.02 to 0.2, which overlaps in scope with the claimed range encompassing any value less than 4.5 g/10min.
A teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Furthermore, Applicant’s arguments on the negative impacts of relying on I21 and I2 values outside of the preferred ranges in Turner are not backed by evidentiary data. Thus, for reasons elaborated in the rejections of record and herein above, Examiner maintains that Turner’s teachings on compositions that overlap in scope with those of the claimed invention obviates the claimed invention. 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.
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 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
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