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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group 1, claim 1-11 in the reply filed on 03/03/2026 is acknowledged. Accordingly, claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-11 are currently under examination on the merits.
Claim Objections
Claim 1 is objected to because of the following informalities: “the range”, “the amount”, “the moiety”, “the MFI”, and “the xylene” should read “a range”, “an amount”, “a moiety”, ”a MFI”, and “a xylene”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: “where in the intrinsic viscosity of” should read “wherein an intrinsic viscosity of”. Appropriate correction is required.
The unit of MFI should be “g/min” instead of “dg/min”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 7 is 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 pre-AIA the applicant regards as the invention.
Claim 7 is rejected as being vague and indefinite when these claims recite "preferably…” to further limit a range or a species, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Van Beek et al (WO2021/130123, of record, ‘123 hereafter).
Regarding claims 1-5, '123 discloses a polymer composition comprising a first heterophasic propylene copolymer (a), a second heterophasic propylene copolymer (b) and an ethylene based elastomer (Page 1); wherein the amount of the first heterophasic propylene copolymer (a) is in a range from 13.4 to 60.2 wt%, specifically 30 wt% as in Example IE3, satisfying presently claimed ranges as in the claims 1 and 3 ( pages 14 and 20, Polymer A and C); the amount of the second heterophasic propylene copolymer (b) is in a range from 14.2 to 56.3 wt%, specifically 38.25 wt% as in Example IE3, satisfying presently claimed ranges as in claims 1 and 4 (page 15 and 20, Polymer B), and the amount of the ethylene based elastomer is in a range from 0.5 to 18.7 wt%, overlapping presently claimed range as in claim 1 (page 15), based on the total amount of the polymer composition. The first heterophasic propylene copolymer comprises from 65 to 85 wt% of a propylene polymer and from 15 to 35 wt% of an ethylene-α-olefin copolymer with α-olefin having 3 to 20 carbon atoms (pages3-4), with MFI (Measured according to ISO1133-1:2011 with a 2.16kg load at 230°C, applicable to all MFI in this office action) in a range from 41 to 92 g/min, satisfying present claims 1 and 5 (page 6 and Polymer A and C in page 20). The second heterophasic propylene copolymer has xylene soluble part in a range from 12.6 to 22.2 wt% based on the total amount of the second heterophasic propylene copolymer (page 13, Polymer B in page 20) and the intrinsic viscosity of the xylene soluble part of the second heterophasic propylene copolymer is in the range from 2.19 to 4.54 dl/g (page 13, Polymer B in page 20). The MFI of the second heterophasic propylene copolymer is in a range from 11.7 to 48.2 g/min (page 13), satisfying the present claims 1 and 2. The density of the ethylene based elastomer is in a range from 0.860 to 0.876 g/cm³ (page 11). ‘123 does not specifically exemplify an embodiment having the amount of ethylene based elastomer falling within the presently claimed range to render the present claims being anticipated, however, it is well-known in the art that the ethylene based elastomer is an impact resistance promoter which can be used to improve impact resistance of a polymer composition, and its amount used in the polymer composition is an effective variable in terms of impact strength of the polymer composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the amount of the ethylene based elastomer within the scope of the present claims so as to produce desired impact resistance of the polymer composition.
Regarding claims 6 and 7, ‘123 discloses that the MFI of the ethylene based elastomer is in the range from 0.3 to 14.3 g/min, and the ethylene based elastomer is preferably an ethylene-octene copolymer (page 11).
Regarding claim 8, ‘123 discloses that the polymer composition has MFI in a preferred range from 15 to 50 g/min (page 15).
Regarding claims 9-10, ‘123 discloses that the polymer composition further comprises an inorganic filler being talc (Examples), wherein the amount of the inorganic filler is in an preferred range of 5.7 to 17.3 wt% (page 15), based on the total amount of the polymer composition.
Regarding claim 11, ‘123 also discloses that the polymer composition further comprises additives, wherein the total amount of the first heterophasic propylene copolymer (a), the second heterophasic propylene copolymer (b), ethylene based elastomer, an inorganic filler and the additives is100 wt%, based on the total amount of the polymer composition (page 15 and Examples).
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Neuteboom et al (US 2017/0002188, ‘188 hereafter).
Regarding claims 1-5, '188 discloses a polymer composition comprising a first heterophasic propylene copolymer (a), a second heterophasic propylene copolymer (b) and an ethylene based elastomer ([0035]); wherein the amount of the first heterophasic propylene copolymer (a) can be 48.75 wt% ([0159], Examples in Table 2, BG A1 in E9 and E10), satisfying the presently claimed ranges as in claims 1 and 3; the amount of the second heterophasic propylene copolymer (b) is 30.0 wt%, ([0159], Examples in Table 2, BG B1 and BG B2 in E9 and E10), satisfying the presently claimed ranges as in claims 1 and 4; and the amount of the ethylene based elastomer is in a range from 5 to 20 wt%, overlapping the presently claimed range as in claim 1 ([0103]); based on the total amount of the polymer composition. The first heterophasic propylene copolymer comprises from 70 to 90 wt% of a propylene polymer and from 10 to 30 wt% of an ethylene-α-olefin copolymer with α-olefin having 3 to 20 carbon atoms ([0056]), with a MFI being 39 g/min, satisfying the present claims 1 and 5 (BG A1, [0159]). The MFI of the second heterophasic propylene copolymer is 12 g/min ([0159], BG B1 and BG B2), satisfying present claims 1 and 2. The density of the ethylene based elastomer is in a range from 0.860 to 0.886 g/cm³ ([0103]), satisfying the present claim 1. ‘188 does not expressly set forth that the second heterophasic propylene copolymer has xylene soluble part in a range from 12 to 27 wt% based on the total amount of the second heterophasic propylene copolymer and the intrinsic viscosity of the xylene soluble part of the second heterophasic propylene copolymer being 2.9 to 4.6 dl/g; however, since the second heterophasic propylene copolymer of ‘188 is a reactor grade copolymer formed from a polymerization with Ziegler-Natta catalyst ([0086]-[0092]), which is substantially identical to the second heterophasic propylene copolymer used in the preset application (see page 5 to page 8 of present specification), it is reasonable to expect that the second heterophasic propylene copolymer of ‘188 would have the xylene soluble part in the scope as presently claimed, in absence of an objective showing to the contrary (See MPEP 2112). ‘188 does not specifically exemplify an embodiment having the amount of ethylene based elastomer falling within the presently claimed range to render the present claims being anticipated, however, it is well-known in the art that the ethylene based elastomer is an impact resistance promoter which can be used to improve impact resistance of a polymer composition, and its amount used in the polymer composition is an effective variable in terms of impact strength of the polymer composition. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the amount of the ethylene based elastomer within the scope of the present claims so as to produce desired impact resistance of the polymer composition.
Regarding claims 6 and 7, ‘188 discloses that the MFI of the ethylene based elastomer is in an range from 0.10 to 10 g/min, and the ethylene based elastomer is preferably an ethylene-butene or/and ethylene-octene copolymer ([0103]).
Regarding claim 8, ‘188 discloses that the polymer composition has MFI in a preferred range from 5 to 20 g/min ([0105]).
Regarding claims 9-10, ‘188 discloses the polymer composition further comprises an inorganic filler being talc (Examples), wherein the amount of the inorganic filler is in an preferred range of 5 to 15 wt% ([0102]), based on the total amount of the polymer composition.
Regarding claim 11, ‘188 also discloses that the polymer composition further comprises additives, wherein the total amount of the first heterophasic propylene copolymer (a), the second heterophasic propylene copolymer (b), ethylene based elastomer, an inorganic filler and the additives is100 wt%, based on the total amount of the polymer composition ([0159] and Examples).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782