DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 22, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 3, the claim recites ranges for claimed components “A)” and “C)” which overlap, but do not fall within, the ranges of claim 1 (on which claim 3 depends). As a result, the composition of claim 3 includes formulations which fall outside of the scope of claim 1 and therefore fails to include all the limitations of the claim on which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Cavalieri (US 2010/0230377 A1).
Regarding claims 1 and 3, Cavalieri teaches a polyolefin composition (Abstract), comprising between 70 and 98 wt% of a propylene homopolymer or copolymer and from 2 to 30 wt% of a butene-1 copolymer (Abstract), and additionally comprising a clarifying agent ([0053]) including acetals of sorbitols ([0055]) wherein the clarifying agents are preferably included in amounts ranging from 100 to 2,000 ppm with respect to the amount of the propylene homopolymer or copolymer ([0057]). This range is equivalent to a range of 0.01 to 0.2 wt% with respect to the amount of propylene homopolymer or copolymer, and since said propylene polymer is included in amounts ranging from 70 to 98 wt%, the amount of clarifying agent within the inventive composition ranges from about 0.007 to about 0.196 wt% of the entire composition.
The range of clarifying agent overlaps the correspondingly claimed ranges of “0.02% to 0.3% by weight,” within claim 1 and “0.05% and 1.5% by weight” within claim 3, establishing prima facie cases of obviousness.
The newly amended claim 1 requires that the compositional amounts of the propylene polymer and butene-1 polymer range from “99.2% to 99.97% by weight” and “0.01% to 0.5% by weight,” respectively. The corresponding ranges taught by Cavalieri fall outside of these ranges. Nevertheless, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05.I.). In these cases, the prior art ranges differ from the claimed ranges by very small amounts -- about 1.2 wt% in the case of the propylene polymer and about 1.5 wt% in the case of the butene-1 polymer. Furthermore, Cavalieri is silent with regard to any significant impact imposed by a relatively small difference such as the one separating the claimed and prior art ranges. Finally, the instant Specification fails to indicate any granularity or criticality with regard to a precision of compositional amounts of either polymer. To the contrary, the instant Specification only includes comparative examples wherein the butene-1 copolymer is completely absent (c.f. p. 32, Table 4 of the instant Specification, where the only comparative example, Comparative Example 1, is devoid of a butene-1 copolymer while the inventive Examples 1-4 all contain 0.065 wt% of the butene-1 copolymer. Regarding the propylene polymer, all of results, both comparative and experimental, include compositional amounts within the claimed range; therefore, the specification does not describe an impact of compositional amounts outside of said range.
The ranges of 70-98 wt% and 2-30 wt%, taught by Cavalieri, therefore render obvious the claimed ranges of “99.2% to 99.97%” and “0.01 to 0.5%,” respectively. The corresponding compositional range for the propylene polymer within as-amended claim 3 is likewise rendered obvious – the range of Cavalieri lies even closer thereto -- a difference of about 0.25 wt%.
Regarding the newly added limitation requiring that the propylene polymer has a flexural modulus in the range of from higher than 200 MPa to lower than 600 MPa, Cavalieri teaches that the propylene homopolymer preferably has a flexural modulus of higher than 600 MPa ([0018], [0023]). The range taught by Cavalieri therefore falls outside of the claimed range. Nevertheless, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05.I.). In this case, the claimed range which includes “lower than 600 MPa” falls arbitrarily close to 600 MPa. Likewise, the disclosure of Cavalieri which states “higher than 600 MPa” falls arbitrarily close to 600 MPa. The difference in the prior art and claimed ranges is therefore arbitrarily small – lower than 1 MPa. Furthermore, the aforementioned disclosure within Cavalieri which states that the range of over 600 MPa is preferred implies that this range is merely optional. Importantly, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). The preference of this range within Cavalieri therefore does not constitute a teaching away from the incorporation of polymers falling outside of said range. The range of greater than 600 MPa therefore renders obvious the claimed range of “lower than 600 MPa.”
Regarding claim 2, Cavalieri teaches that the composition preferably has haze values equal to or lower than 25% ([0068]), which encompasses the claimed range of “equal to or lower than 20%,” establishing a prima facie case of obviousness.
Regarding claim 4, as described above, Cavalieri teaches the incorporation of about 0.007-0.196 wt% of clarifying agent, and 2 to 30 wt% of the butene-1 copolymer. These components read on the claimed components “C)” and “B),” respectively, as described above. Cavalieri therefore teaches a ratio of these two components ranging from about 0.0002 to about 0.98, which overlaps the claimed range of “0.5 to 4,” establishing a prima facie case of obviousness.
Regarding claim 5, Cavalieri teaches that the inventive composition preferably has a melt flow index (measured at 230°C and 2.16 kg) ranging from 1 to 100 g/10 min ([0069]), which falls within the claimed range of “0.1 to 400 g/10 min,” establishing a prima facie case of obviousness.
Regarding claim 6, Cavalieri teaches that the propylene-based polymer may be a propylene homopolymer or copolymer (Abstract), and that the butene-1-based polymer is a butene-1-copolymer (Abstract).
Regarding claim 7, Cavalieri further teaches that the propylene polymer has:
a comonomer content ranging from 0.5 to 15 wt% ([0019]) and that the comonomer is ethylene or hexene-1 ([0019]);
a polydispersity index equal to or higher than 4 ([0020]);
a melt flow rate of 0.1 to 100 g/10 min ([0021]);
a xylene-insoluble fraction of greater than 85 wt% at room temperature ([0022]);
In each case, the ranges taught by Cavalieri overlap or are identical to the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 8, Cavalieri teaches that the butene-1 copolymer has a melt flow rate at 190°C and with a load of 2.16 kg ranging from 1 to 100 g/10 min ([0060]), which falls within the claimed range of “1 to 3000 g/10 min,” establishing a prima facie case of obviousness.
Regarding claim 9, Cavalieri teaches that the butene-1 copolymer has a comonomer content most preferably ranging from 0.5 to 15 wt% ([0008]). In copolymers containing butene-1 and either ethylene or hexene-1 (the preferred comonomers of both Cavalieri and the instant specification, see [0019] of Cavalieri and instant claim 7), this teaching equates to ranges of about 1.01-26.34 mol% of ethylene or about 0.34-10.55 mol% of hexene-1. In each case, the molar percentages of the preferred comonomers of Cavalieri overlap/encompass the claimed range of “0.5% to 4.0% by mole,” establishing prima facie cases of obviousness.
Regarding claim 10, Cavalieri does not directly specify the claimed characteristics of the inventive butene-1 copolymer. However, Cavalieri does specify that the butene-1 copolymer is a relatively isotactic polymer, with an isotacticity index of at least 60% ([0058]), which overlaps the range contemplated by the instant Specification ([0066]). Furthermore, as described above, Cavalieri teaches the specific incorporation of butene-1, alongside preferred monomers ethylene and/or hexene-1 ([0019]), which are those preferred by the instant application (c.f. claim 7).
Cavalieri further teaches that the butene-1 copolymer may be produced using a catalyst obtained by contacting a metallocene with an alumoxane ([0065]), which aligns with the reaction catalyst contemplated by the instant Application (c.f. instant Specification at [0078]).
Therefore, Cavalieri teaches the use of a butene-1 copolymer which is structurally identical to the claimed butene copolymer, containing all of the same components in all of the same compositional amounts, and which is produced using a substantially similar catalyst, and which shares at least one other physiochemical characteristic (overlapping crystallinity index). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed characteristics will therefore necessarily be present within the teachings of Cavalieir, as applied above.
Regarding claim 11, Cavalieri teaches that acetals of sorbitols are suitable clarifying agents ([0055]), which reads on the claimed “derivatives of polyols” because sorbitol is a polyol.
Regarding claim 12, Cavalieri teaches the specific use of C1-C8-alkyl-substituted sorbitol derivatives such as methyl- and ethyl- dibenzylidene sorbitols ([0055]), which read on “di(alkylbenzylidene) sorbitols” from the claimed list.
Regarding claim 13, Cavalieri teaches molded articles of the inventive composition ([0077]).
Regarding claim 14, Cavalieri teaches reduced haze in the inventive composition ([0002]), and teaches all of the compositional limitations, as described above. Furthermore, Cavalieri teaches the melt-mixing of the inventive composition ([0056] and [0072]), which reads on the claimed process step of adding the butene-1 polymer to the polyolefin composition.
Regarding claim 15, Cavalieri teaches an inventive example comprising a mixture of a propylene homopolymer (designated as PP-1, [0107], which reads on the claimed “propylene polymer”) and a propylene/ethylene copolymer (designated as PP-2, [0121]) ([0126]). PP-2 from this inventive example reads on the claimed “ethylene copolymer” because it is a polymer which contains ethylene, and because the instant Specification states that the claimed “heterophasic polyolefin composition A)” may be formed from a mixture of propylene homopolymer and a copolymer of ethylene with propylene ([0052]).
Response to Arguments
Applicant's arguments filed May 22, 2026 have been fully considered but they are not persuasive.
Applicant argues that Cavalieri fails to disclose a composition comprising 0.01 to 0.5 wt% of a butene-1 polymer; however, as described in the previous Office Action, a prima facie case of obviousness exists for this material in view of the prior art due to the closeness of the prior art and claimed ranges. Applicant contends that Cavalieri likewise is silent with regard to the newly-added features of claim 1. However as described above, these ranges are likewise very close to the prior art ranges, and therefore a prima facie case of obviousness exists in these cases as well.
Applicant argues that “the Examiner’s assertion that the composition as claimed would be expected to have the same properties as the composition as claimed… must be based in some fact of record;” however, the determination that a prima facie case is present in circumstances where the claimed and prior art products are identical or substantially identical has been previously adjudicated (see MPEP 2112.01, In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Applicant argues that “one could not assume that one polyethylene grade is the same as other due to the nomenclature of polyethylene,” however, as described above, a prima facie case has been established because the prior art composition meets all of the claimed components and claimed amounts. Per MPEP 2112.01, when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, the sound basis is the high degree of similarity between the claimed and prior art compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
