DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed by Applicant on April 27, 2026 has been fully considered. All previous rejections are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. Claims 1, 4-5, 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al (US 2017/0271048).
4. The rejection is adequately set forth on pages 2-5 of an Office action mailed on January 27, 2026 and is incorporated here by reference.
5. Claims 1-5, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al (US 2017/0271048) in view of Lee et al (US 2019/0169325).
6. The rejection is adequately set forth on pages 5-9 of an Office action mailed on January 27, 2026 and is incorporated here by reference.
7. Claims 1-3, 5-6, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (US 2012/0009387) in view of Lee et al (US 2019/0169325).
8. The rejection is adequately set forth on pages 9-13 of an Office action mailed on January 27, 2026 and is incorporated here by reference.
9. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al (US 2017/0271048) in view of Lee et al (US 2019/0169325) and Wang et al (US 2012/0009387).
10. The rejection is adequately set forth on pages 13-17 of an Office action mailed on January 27, 2026 and is incorporated here by reference.
11. Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nishida et al (US 2017/0271048) in view of Lee et al (US 2019/0169325), Wang et al (US 2012/0009387), and in further view of Heinz et al (US 2003/0181563).
12. The rejection is adequately set forth on pages 17-18 of an Office action mailed on January 27, 2026 and is incorporated here by reference.
Response to Arguments
13. Applicant's arguments filed on April 27, 2026 have been fully considered.
14. With respect to Applicant’s arguments regarding the teachings of Nishida et al (US 2017/0271048), it is noted that:
1) Instant claim 1 is related to a resin composition comprising a HDPE, calcium carbonate and a modified polyethylene resin; instant claims 1-8 are silent with respect to the composition “preventing underwater structures from floating …while maintaining superior mechanical properties”, as argued by Applicant. It is not clear what are the “superior mechanical properties” that are maintained.
2) Though Nishida et al discloses the composition comprising LDPE, the LDPE of Nishida et al is having density of 0.925 g/cc ([0023]), wherein the HDPE claimed in instant invention is having density of 0.930 g/cc (instant claim 3); it is examiner’s position that the values of density of 0.925 g/cc is very close to the value of 0.930 g/cc, so that the presence of LDPE with such density of Nishida et al would not significantly alter the properties of the composition. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and 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. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Further, by using “comprising” transition phrase, instant claims are opened to the presence of additional components.
3) Further, taking into account that i) the density of LDPE component B) of Nishida et al is 0.925 g/cc, which value is very close to the claimed value for density of HDPE of 0.930 g/cc (instant claim 3), and is used in a minor amount; ii) the composition of Nishida et al is substantially the same as that claimed in instant invention, i.e. comprising substantially the same HDPE with substantially the same density value as that claimed in instant invention used in substantially the same amount as that claimed in instant invention, and comprising calcium carbonate having the same particle size and used in substantially the same amount, as claimed in instant invention, therefore, the composition of Nishida et al will intrinsically and necessarily have, or would be reasonably expected to have density values that are either the same as those claimed in instant invention, i.e. in the range of 1.0-1.2 g/cc, or in a range overlapping with that as claimed in instant invention as well (as to instant claim 1). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
15. With respect to Applicant’s arguments regarding the teachings of Wang et al (US 2012/0009387) as part of the rejections over Wang et al (US 2012/0009387) in view of Lee et al (US 2019/0169325), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Since the composition of Wang et al in view of Lee et al is substantially the same as that claimed in instant invention, i.e. comprising the same HDPE with substantially the same density, melt index and MFR as that claimed in instant invention used in substantially the same amount as that claimed in instant invention, comprising calcium carbonate used in substantially the same amount as claimed in instant invention, therefore, the composition and further the film made from said composition of Wang et al in view of Lee et al will intrinsically and necessarily have, or would be reasonably expected to have the properties, including density, melt index and MFR, and for said films- tensile strength and elongation, that are either the same as those claimed in instant invention, or having properties overlapping with those as claimed in instant invention as well (as to instant claims 1-2, 9). It is further noted that though the composition of Wang et al in view of Lee et al comprises about 5%wt of thermoplastic starch, since starch is having density of about 1.5 g/cc, which value is very close to the value of 1.2 g/cc of the overall claimed composition, therefore, it would be reasonably expected that the presence of as low as about 5%wt of said starch would still lead to producing the composition having overall density of 1.2 g/cc. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Conclusion
THIS ACTION IS MADE FINAL. 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights