DETAILED ACTION
This Office Action is responsive to the amendment filed on 3/27/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Double Patenting
Claims 1-10 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 10, and 12 of U.S. Patent No. 11,332,604. Although the claims at issue are not identical, they are not patentably distinct from each other.
Patented claim 1 recites a composition (for claim 1) comprising a propylene-based polymer, corresponding to claimed polypropylene (A) (for claim 1), a first ethylene/1-octene elastomer, a second ethylene/1-octene elastomer, and an inorganic filler. The composition of the patented claim comprises 2 to 30 wt% of the combination of first and second elastomers and 0.1 to 30 wt% of the filler; it is therefore deduced that the amount of propylene-based polymer is in the range of 40 to 97.9 wt%, overlapping the claimed range (for claim 1).
Regarding claimed copolymer (B1): The first ethylene/1-octene elastomer comprises 1-octene (for claims 4, 14) and is characterized by a density in the range of 0.850 to 0.890 g/cm3.
Regarding claimed copolymer (B2): The second ethylene/1-octene elastomer comprises 1-octene (for claims 5, 15) and has a density of 0.850 to 0.890 g/cm3, overlapping the claimed range (for claim 1), and a melt flow index (MFI) (190 °C, 2.16kg) of and 0.55 to 4 dg/min, overlapping the claimed range (for claim 9) (page 8: lines 1-2). The second ethylene/1-octene elastomer of the patented claims therefore corresponds to claimed copolymer (B2) (for claim 1).
Regarding the amounts/ratio of copolymer (B2) to (B1): As noted above, the composition of the patented claim contains 2 to 30 wt% of the combination of first and second elastomers (for claim 16); each of the first and second elastomer therefore is individually present in an amount in the range of greater than 0 to less than 30 wt%. The ratio of second to first elastomer would therefore be in the range of <30: >0 to >0 : < 30, overlapping the claimed range (for claims 1, 2).
Alternatively, note that dependent claim 2 states that the amount of second elastomer is 10 to 90 wt% relative to the total amount of first and second elastomers. The ratio would therefore be in the range of 90:10 to 10 to 90 (i.e., 9 to about 0.11), overlapping the claimed range (for claims 1, 2).
Regarding claims 3, 6: Patented claim 10 states that the propylene-based polymer may be a heterophasic copolymer comprising 65 to 95 wt% of a matrix which is a propylene homopolymer (for claim 6). Patented claim 12 further specifies that the matrix has a MFI of 0.3 to 300 dg/min, overlapping the claimed range (for claim 3).
Regarding claim 7: The first and second ethylene/1-octene elastomers are characterized by MFI (190, 2.16 kg) of 5 to 50 dg/min and 0.55 to 4 dg/min, respectively. The ratio of the MFI of the first elastomer to the MFI of the second elastomer is therefore in the range of 5/4 to 50/0.55-i.e., 1.25 to 90.9, overlapping the claimed range.
Regarding claim 8: The difference between the claimed range and the patented range for the MFI of the first ethylene/olefin elastomer is small-i.e., less than 3 dg/min. Furthermore, the patented claims render obvious a composition having the other required components. It is therefore reasonably expected that the properties of the composition of the patented claims would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range.
Regarding claim 10: Patented claim 13 states that the composition has a MFI of at least 20 dg/min, overlapping the claimed range.
The patented claims do not specifically teach the production of a composition comprising the claimed amounts of polypropylene and first and second elastomers, wherein the elastomers have the required densities.
Regarding the amounts of each polymer and the density of copolymer (B2): It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The ranges for the amounts of the components and the density of the second elastomer in the patented claims overlap the claimed ranges. It therefore would have been obvious at the time the invention was effectively filed to prepare a composition comprising the claimed amounts of each polymer wherein the second elastomer has a density in the claimed range in view of the teachings of the patented claims (for claim 1).
Regarding the density of claimed copolymer (B1): It has been held that a prima facie case of obviousness exists where the claimed ranges and the 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, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As discussed earlier in this Action, the first ethylene/olefin elastomer has a density in the range of 850 to 890 g/cm3. Note that the difference between the upper limit of 890 g/cm3 in the patented claim and the claimed lower limit for the density of copolymer (B1) of 0.895 g/cm3 is only 0.005; this corresponds to difference of only 0.5%. Given that 1) the difference in density is so small and 2) the patented claim renders obvious a composition that meets all other claimed limitations, an ordinary artisan would reasonably expect that the properties of the patented composition wherein the first ethylene/olefin elastomer has a density of 0.890 g/cm3 would not be materially different from those of the claimed invention wherein copolymer (B1) has a density of 0.891 g/cm3. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 1).
Claim Rejections - 35 USC § 103
Claim(s) 1-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al, WO2019/030139.
Huang discloses a composition comprising a propylene-based polymer, a first ethylene/olefin elastomer, a second ethylene/olefin elastomer, and an inorganic filler (abstract). The prior art composition has a melt flow index (MFI) (230 °C, 2.16 kg) of at least 20 dg/min (page 10: lines 20-22), overlapping the claimed range (for claim 10), and is used in the production of batteries (for claim 11) (page 12: line 29) via a process comprising mixing (i.e., compounding) the components to form the composition followed by processing via injection molding (for claim 12) (page 11: lines 13-16; page 12: lines 12-15).
Regarding claimed polypropylene (A): The prior art propylene-based polymer may be a propylene homopolymer, corresponding to claimed polypropylene (A) (for claims 1, 6) (page 2: lines 5-6). Alternatively, it may be a heterophasic propylene copolymer (page 2: lines 5-7) comprising a propylene-based matrix and a dispersed phase (page 3: lines 14-15), wherein said propylene-based matrix may be a propylene homopolymer (for claim 6) having a MFI (230 C, 2.16 kg) of 0.3 to 300 dg/min, overlapping the claimed range (for claim 3) (page 3: line 29; page 3: line 34 to page 4: line 2).
Regarding claimed copolymer (B1): The prior art first ethylene/olefin elastomer is a copolymer of ethylene and a comonomer such as 1-octene (for claims 4, 14) (page 6: lines 29-35). The prior art first ethylene/olefin elastomer is characterized by a density in the range of 0.850 to 0.890 g/cm3 (page 7: lines 10-11).
Regarding claimed copolymer (B2): The prior art second ethylene/olefin elastomer is a copolymer of ethylene and a comonomer such as 1-octene (for claims 5, 15) (page 6: lines 29-35) and has a density of 0.850 to 0.890 g/cm3, overlapping the claimed range (for claim 1) (page 7: lines 13-15), and a MFI (190 °C, 2.16kg) of and 0.55 to 4 dg/min, overlapping the claimed range (for claim 9) (page 8: lines 1-2). The prior art second ethylene/olefin elastomer therefore corresponds to claimed copolymer (B2) (for claim 1).
Regarding the claimed amounts of polypropylene (for claim 1) and the combination of copolymers B1 and B2 (for claim 16): Huang teaches that the prior art composition comprises 2 to 30 wt% of the combination of first and second elastomers, overlapping the claimed range (for claim 16), and 0.1 to 30 wt% of the inorganic filler (page 1: lines 19-32). Based on these numbers, it is estimated that the prior art composition may comprise 40 to 97.9 wt% of the polypropylene, overlapping the claimed range (for claim 1).
Regarding the claimed ratio of the amount of copolymer (B2) to amount of copolymer (B1): Huang teaches that the combination of the prior art first and second elastomers comprises 10 to 90 wt% of the second elastomer (page 9: lines 16-18) and (deduced) 10 to 90 wt% of the first elastomer. The ratio of the amount of second ethylene/olefin elastomer to the amount of first ethylene/olefin elastomer would therefore be in the range of 10:90 to 90:10 (i.e., 1:9 to 9:1), overlapping the claimed range (for claims 1, 2).
Regarding claim 7: The prior art first and second ethylene/olefin elastomers are characterized by MFI (190, 2.16 kg) of 5 to 50 dg/min (page 7: lines 32-36) and 0.55 to 4 dg/min (page 8: lines 1-2), respectively. The ratio of the MFI of the first elastomer to the MFI of the second elastomer is therefore in the range of 5/4 to 50/0.55-i.e., 1.25 to 90.9, overlapping the claimed range.
Regarding claim 8: The prior art first ethylene/olefin elastomer is characterized by a MFI in the range of 5 to 50 dg/min (Page 7: line 31).
Huang does not specifically teach the production of a composition comprising the claimed amounts of polypropylene and first and second elastomers, wherein the elastomers have the required densities.
Regarding the amounts of each polymer and the density of copolymer (B2) (for claim 1): The prior art ranges for the amounts of the components and the density of the second elastomer overlap the claimed ranges. It therefore would have been obvious at the time the invention was effectively filed to prepare a composition comprising the claimed amounts of each polymer wherein the second elastomer has a density in the claimed range in view of the teachings of Huang (for claim 1); see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Regarding the density of claimed copolymer (B1) (for claim 1): It has been held that a prima facie case of obviousness exists where the claimed ranges and the 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, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As discussed earlier in this Action, the prior art first ethylene/olefin elastomer has a density in the range of 850 to 890 g/cm3. Note that the difference between the prior art upper limit of 890 g/cm3 and the claimed lower limit for the density of copolymer (B1) of 0.895 g/cm3 is only 0.005; this corresponds to difference of only 0.5%. Given that
the difference in density is so small,
the prior art renders obvious a composition that meets all other claimed limitations, and
the prior art composition is used for the same purpose as the claimed invention,
an ordinary artisan would reasonably expect that the properties of the prior art composition wherein the first ethylene/olefin elastomer has a density of 0.890 g/cm3 would not be materially different from those of the claimed invention wherein copolymer (B1) has a density of 0.895 g/cm3. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 1).
Regarding the MFI of copolymer (B1) (for claim 8): As noted above, the prior art renders obvious a composition that appears to be substantially identical to and is used for the same purpose as the claimed composition. As such, an ordinary artisan would reasonably expect that the properties of the prior art composition would not be materially different from those of the claimed composition. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 8); see Titanium Metals Corp. of America v. Banner cited earlier in this Action.
Claim(s) 1-10 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Volkov et al, WO2020/091621.
Volkov discloses a composition comprising crystalline homopolypropylene (abstract; page 8: lines 26-28), corresponding to claimed polypropylene (A) (for claim 1) which is a homopolymer (for claim 6); an ethylene/olefin elastomer; and an ethylene copolymer (abstract). The prior art composition comprises 53.8 to 79.8 wt% of the isotactic polypropylene (page 8: lines 26-28), overlapping the claimed range (for claim 1). Based on the amounts of the ethylene/olefin elastomer (10 to 20 wt%) and the ethylene copolymer (10 to 25 wt%) (abstract), the prior art composition comprises a combined total of 20 to 45 wt% of the ethylene/olefin elastomer and the ethylene copolymer, overlapping the claimed range (for claim 16).
Regarding the claimed first ethylene/olefin copolymer: The prior art ethylene copolymer is a copolymer of ethylene and a C3 to C10 olefin, and is characterized by a density in the range of 0.910 to 0.965 g/cm3 and a MFI (190 °C, 2.16 kg) of 0.1 to 10 g/min (i.e., 0.1 to 10 dg/min), overlapping the claimed range (for claim 8) (page 9: lines 29-29). The olefin comonomer may be 1-octene (for claims 4, 14) (page 10: line 23).The prior art ethylene copolymer therefore corresponds to claimed copolymer (B1) (for claim 1).
Regarding the claimed second ethylene/olefin copolymer: The prior art ethylene/olefin elastomer is a copolymer of ethylene and a olefin such as 1-octene (for claims 5, 15) having a density of 0.855 to 0.890 g/cm3, overlapping the claimed range (for claim 1), and a MFR (190 C, 2.16 kg) of 1 to 30 g/10 min (i.e., 1 to 10 dg/min), overlapping the claimed range (for claim 9) (page 9: lines 18-22). The prior art ethylene/olefin elastomer therefore corresponds to claimed copolymer (B2) (for claim 1).
Regarding the ratio of the amounts of first and second ethylene copolymers: The prior art composition comprises 10 to 25 wt% of the ethylene/olefin copolymer and 10 to 20 wt% of the ethylene/olefin elastomer (Page 8: lines 29-32). The ratio of the amounts of elastomer to the copolymer therefore is in the range of 20:20 to 10:25 (i.e., 2 to 0.4), overlapping the claimed range (for claims 1, 2).
Regarding claim 3: The prior art homopolypropylene is a blend of polymers having MFI (230 °C, 2.16) in the ranges of 2.0 to 4.0 and 20 to 40 g/10 min (page 9: lines 6-11). The MFI (230 °C, 2.16 kg) of the overall homopolypropylene will therefore be in the range of 2.0 to 40 g/10 min (i.e., 2.0 to 40 dg/min), overlapping the claimed range.
Regarding claim 7: As noted above, the prior art ethylene copolymer and ethylene/olefin elastomer are characterized by MFI values of 0.1 to 10 g/10 min and 1 to 30 g/10 min, respectively. The ratio of the MFI of the copolymer to the MFI of the elastomer is therefore in the range of 0.1:30 to 10:1 (i.e., about 0.003 to 10), overlapping the claimed range.
Regarding claim 9: Volkov exemplifies the production of compositions having MFI in the range of 21.1 to 27.8 g/10 min (Table 2: Examples 2-4, 7-13, 16), overlapping the claimed range.
Volkov does not specifically disclose the production of a composition comprising first and second ethylene copolymers having the claimed densities in the required ratio.
Regarding the amounts of each polymer and the density of copolymer (B2) (for claim 1): As discussed in the previous paragraphs, the prior art teaches a composition comprising homopolypropylene, an ethylene/olefin elastomer, and an ethylene copolymer wherein the densities of the prior art polymers and their amounts overlap the ranges recited in the instant claims. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to prepare a composition comprising the claimed amounts of elastomer and copolymer having the required densities in view of the teachings of Volkov; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action (for claim 1).
Regarding the density of claimed copolymer (B1) (for claim 1):). As discussed earlier in this Action, the prior art ethylene copolymer has a density in the range of 0.910 to 0.965 g/cm3. Note that the difference between the prior art lower limit of 0.910 g/cm3 and the claimed upper limit for the density of copolymer (B1) of 0.907 g/cm3 is only 0.003; this corresponds to difference of only 0.3%. Given that
the difference in density is so small, and
the prior art renders obvious a composition that meets all other claimed limitations,
an ordinary artisan would reasonably expect that the properties of the prior art composition wherein the ethylene copolymer has a density of 0.910 g/cm3 would not be materially different from those of the claimed invention wherein copolymer (B1) has a density of 0.907 g/cm3. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range (for claim 1).
Response to Arguments
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Regarding the rejection over Huang: Applicant argues that Huang does not render obvious a composition wherein the first ethylene/olefin copolymer has a density in the range of 0.895 to 0.907 g/cm3; this argument is not persuasive per the rationale outlined in paragraph 31 of this Action.
Applicant further argues that the claimed invention yields unexpected results, citing the data from the examples in the instant specification.
It is well settled that evidence of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness; see In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (MPEP 716.02(e)). As reported in the specification (see Table 2), Comparative examples CE1, CE3, CE4, C5, and CE9 disclose compositions which only contain a polypropylene and a single ethylene/olefin copolymer. In contrast, the composition of Huang comprises a propylene-based polymer and first and second ethylene/olefin elastomers (abstract). Arguments based on a comparison of the claimed invention to comparative examples CE1, CE3, CE4, C5, and CE9 therefore are not persuasive, as they do not compare the claimed invention to the prior art as required.
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; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)). As reported in the specification (Table 2), both inventive examples were both prepared using COP3 as claimed copolymer B1 and COP5 as claimed copolymer B2. COP3 is an ethylene/octene copolymer having a density of 0.902 g/cm3 and a melt index of 1.0g/10 min (specification Table 1); in contrast, claimed copolymer B1 may be a copolymer of ethylene and any olefin comonomer having any melt flow index and a density in the range of 0.895 to 0.907 g/cm3. Similarly, COP5 is an ethylene/octene copolymer having a density of 0.868 g/cm3 and a melt flow index of 1.0 g/10 min (specification Table 1), whereas claimed copolymer B2 can comprise any olefin comonomer and is characterized by any melt flow index and a density in the broad range of 0.859 to 0.881 g/cm3. The specific polymers used in the inventive examples are not commensurate in scope with the broad range of copolymers that fall within the scope of claimed copolymers B1 and B2.
Additionally, the inventive examples disclose compositions which contain 25 to 27 wt% of the combination of copolymers B1 and B2, with the ratio of B2 to B1 being in the narrow range of 2.0 to 2.1. In contrast, it is deduced that the claimed invention may contain the combination of copolymers B1 and B2 in an amount in the range of 13 to 29 wt%, with the ratio of B2 to B1 being any value in the range of 1.0 to 3.8. The cited examples therefore are not commensurate in scope with regards to the amount(s) and ratio of copolymers B1 and B2 that fall within the scope of the instant claims.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)(II)). With regards to the comparison with comparative example CE6, it is noted that COP2 used in the comparative example is reported to have a density of 0.862 g/cm3. As noted earlier in this Action, however, Huang’s first ethylene/olefin elastomer can have a density as high as 0.890 g/cm3; note that this is much closer to the claimed lower limit of 0.895 g/cm3 than the value exemplified in CE6. Comparison to applicant’s CE6 therefore does not demonstrate the criticality of the claimed range, as the prior art value is much closer to the claimed lower limit than the value exemplified in CE6.
Similarly, the comparative examples CE7 and CE8 disclose compositions wherein the ratio of the amount of B2 to the amount of B1 is 4.0; the difference between this value and the claimed upper limit of 3.8 is only 0.2. In contrast, the difference between the claimed upper limit of 3.8 and the value exemplified in inventive examples EX1 and EX2 is 1.7 to 1.8-i.e., nearly 100 times larger than difference between the ratio in the comparative examples and the claimed value. Because the comparative value is so much closer to the claimed limit than the inventive examples, the cited examples do not demonstrate the criticality of the claimed range. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive, and the rejection is maintained.
Regarding the rejection over Volkov: Applicant argues that the prior art does not render obvious a composition wherein the first copolymer (B1) has a maximum density of 0.907 g/cm3. This is not persuasive per the rationale outlined in paragraph 43 of this Action.
Applicant argues that the claimed invention yields unexpected results. As discussed earlier in this Action, the examples provided in the instant specification are not commensurate in scope with the claimed invention and do not demonstrate the criticality of the claimed ranges. Applicant’s argument that the claimed invention yields unexpected results therefore is not persuasive per the same rationale as outlined in paragraphs 46 to 51 of this Action with respect to the rejection over Huang. The rejection is therefore maintained.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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