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 .
Response to Amendment
Applicants’ amendments of October 9, 2025, are noted and entered. However, the status identifier for claim 22 recites “Previously presented.” However, the claim was non-elected and withdrawn in the Non-Final Rejection of July 9, 2025. Future submissions to the Office should reflect the current status of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 6, 7, 9, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 4, 6, 7, 9, and 21, claim 4 recites a resin composition molded body, hydrocarbon components consisting only of a resin A and a resin B. Applicants’ specification as originally filed does not appear to teach the claimed limitation. Therefore, the limitation constitutes new matter.
Additionally, claim 4 recites that a peak molecular weight in a molecular with distribution of the resin A is “6 x 104 or more and 6 x 105 or less” and that a peak molecular weight in a molecular with distribution of the resin B is “4 x 104 or more and 4 x 105 or less”. Applicants’ specification as originally filed does not recite the specifically claimed peak molecular weight ranges. Therefore, the limitations constitute new matter.
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.
Claims 4, 6, 7, 9, and 21 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.
Regarding claims 4, 6, 7, 9, and 21, claim 4 recites a resin composition molded body, hydrocarbon components consisting only of a resin A and a resin B. It is unclear what the scope of the structure entails, as there appears to be a transitional phrase absent between “a resin composition molded body” and “hydrocarbon components”, including in what manner the hydrocarbon components are related to the resin composition molded body.
Additionally, it is unclear what the scope of “hydrocarbon components consisting only of” a resin A and a resin B necessarily entails. For example, it is unclear if resin A and resin B are combined to form the hydrocarbon components, or if resin A and resin B are separate components or some other interpretation.
Additionally, claim 4 recites that a peak molecular weight in a molecular with distribution of the resin A is “6 x 104 or more and 6 x 105 or less” and that a peak molecular weight in a molecular with distribution of the resin B is “4 x 104 or more and 4 x 105 or less”. It is unclear if Applicants intended the peak molecular weights as specifically claimed, or if Applicants intended the peak molecular weights to be consistent with the specification, such as “104” or “105” instead of the claimed “104” or “105.”
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 4, 6, 7, 9, and 21 are rejected under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2004/0106723 to Yang.
Regarding claims 4, 6, 7, 9, and 21, Yang teaches plasticized polyolefin compositions comprising a polyolefin and a non-functionalized hydrocarbon plasticizer (Yang, Abstract), having improved properties such as processability, softness, and impact resistance (Id., paragraph 0002). Yang teaches that the polyolefins are present in the composition at from 50 wt% to 99 wt%, and the non-functionalized hydrocarbon plasticizer is present at 0.01 to 50 weight % (Id., paragraphs 0042-0046). Yang teaches that the polyolefin is a polypropylene, wherein the polypropylene may be polypropylene homopolymer and wherein the homopolymer is an isotactic polypropylene or random copolymer, having a Mw of 30,000 to 2,000,000 g/mol and a Mw/Mn of more preferably 1.8 to 10 (Id., paragraphs 0113-0150). Yang teaches that the polyolefin may be an impact copolymer comprising 40% to 95% by weight Component A and from 5% to 60% by weight Component B, wherein Component A comprises propylene homopolymer and Component B comprises ethylene-propylene copolymers (Id., paragraphs 0151-0154). Yang teaches that Component B preferably has a narrow molecular weight distribution Mw/Mn lower than 5.0 and a weight average molecular weight most preferably at least 200,000 (Id., paragraph 0157). Yang teaches that Component B has a Tg of about 50 to 100ºC (Id., paragraph 0154). One of ordinary skill in the art would recognize that Component B as described by Yang, and substantially similar as claimed, would be solid at 25ºC. Yang teaches that the enhanced properties of the compositions are useful in a variety of applications including molding (Id., paragraphs 0193-0211, 0242).
Yang appears to teach the claimed resin A and resin B. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyolefin composition of Yang, comprising the component A and component B having properties and in amounts, such as claimed, motivated by the desire of forming a conventional composition based on the totality of the teachings of Yang.
Regarding the claimed first, second, and third requirements, Yang establishes a similar composition for a similar molding purpose, wherein the propylene may comprise a random copolymer having a similar and overlapping Mw and Mw/Mn, combined with a similar ethylene-propylene copolymer having a similar and overlapping Mw and Mw/Mn as set forth in Applicants’ specification. Therefore, the claimed properties, including the elastic modulus, first, second, and third requirements, storage modulus, and ratio of storage modulus would appear to be inherent to, or naturally flow from, the teachings of Yang. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 21, Yang does not appear to require voids or crystals. Although Yang does not measure the absence of voids or crystals by the claimed test, it is reasonable for one of ordinary skill to expect that the invention of Yang, once tested as claimed, would appear to comprise the claimed structure. Support for the presumption is based on Yang teaching a substantially similar structure and composition as claimed, and within the scope of the specification. The burden is on Applicants to prove otherwise.
Response to Arguments
Applicants’ arguments filed October 9, 2025, have been fully considered but they are not persuasive. Applicants argue that Yang’s non-functionalized plasticizers remain liquid at 25ºC, based on pour points below room temperature. Examiner respectfully disagrees. Yang does not require the non-functionalized plasticizer to have a pour point below room temperature, as Yang teaches that the plasticizer has one or more properties including a pour point of 10ºC or less (see Yang, paragraph 0054). Additionally, note that the plasticizer is not relied on in the Rejection to render obvious the claimed invention.
Applicants argue that Yang does not recognize the first, second and third requirement as claimed. Examiner notes that the claimed properties are measured based on the claimed composition. As set forth above, Yang establishes a similar composition for a similar molding purpose, wherein the propylene may comprise a random copolymer having a similar and overlapping Mw and Mw/Mn, combined with a similar ethylene-propylene copolymer having a similar and overlapping Mw and Mw/Mn as set forth in Applicants’ specification. Therefore, the claimed properties, including the elastic modulus, first, second, and third requirements, storage modulus, and ratio of storage modulus would appear to be inherent to, or naturally flow from, the teachings of Yang. Products of identical structure cannot have mutually exclusive properties. Applicants have not proven otherwise.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786