DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment.
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 1-7, 9-19 are pending.
Terminal Disclaimer
The terminal disclaimer filed on 4/3/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted from US Application 18/267,926 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claims 1-7, 9-19 are objected to because of the following informalities:
Claim 1 recites a molecular weight distribution (Mw/Mn). However, Mw/Mn is not simply an abbreviation for a molecular weight distribution, but rather a specific calculation of Mw/Mn. Hence, it appears the parenthesis should not be recited, i.e. a molecular weight distribution [[(]]Mw/Mn[[)]].
Claim 1 recites a melt index (MI2.16 measured according to the ASTM D 1238 at 230 ˚C under a load of 2.16 kg). However, this is not simply an abbreviation for any melt index, but rather a specific melt index of MI2.16 measured according to the ASTM D 1238 at 230 ˚C under a load of 2.16 kg. Hence, it appears the parenthesis should not be recited, i.e. [[(]]MI2.16 measured according to the ASTM D 1238 at 230 ˚C under a load of 2.16 kg[[)]].
Claims 2-7, 9-19 are subsumed by this objection because of their dependence.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1-5, 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Burkhardt et al. (US 6,492,465).
Regarding claim 1: Burkhardt is directed to a propylene resin composition having:
A molecular weight (Mw/Mn) of less than 4.0 (col. 3 ll. 42-49)
A xylene (X.S.) of 4.5% by weight to 8.0% by weight (Table 3)
A content of ethylene of 10% by weight or less (col. 2 ll. 45-54)
A melt index measured by ASTM 1238 is preferably higher than 50 dg/min (50 dg/10 min) (equivalent to a melt index MI2.16 measured according to the ASTM D 1238 at 230 ˚C under a load of 2.16).
A crystallization temperature are not mentioned.
However, the melting point of the polypropylene homopolymer is at least 155 ˚C, and therefore it can be determined the crystallization temperature must be less than at least 155 ˚C. Further, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, i.e. a metallocene polymerized polypropylene homopolymer with the same molecular weight distribution.
Case law holds that 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).
Hence, Burkhardt suggests a composition having a crystallization temperature within the scope of the claims. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 2: Burkhardt doesn't specifically recite an elongation. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having an elongation measured according to ASTM D 638 of 500% or more. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 3: Burkhardt doesn't specifically recite a haze value. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having haze value measured according to ASTM D 1003 of 60% or less. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 4: The melting point is melting point of at least 155 ˚C.
Regarding claim 5: The composition comprises a propylene homopolymer and a propylene copolymer, wherein the propylene copolymer B is produced in the presence of the propylene homopolymer (A) (equivalent to the ethylene propylene copolymer dispersed in the propylene homopolymer).
Regarding claim 15: Burkhardt doesn't specifically recite a tensile strength. However, the composition produced in Burkhardt is substantially identical to the composition produced in the instant invention, as discussed above.
Case law holds that 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).
Hence, Burkhardt suggests a composition having tensile strength of 250 kg/cm2 and 500 kg/cm2 or less as measured according to ASTM D 638 method. 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.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 16: The compositions have improved notched Izod values, although a Izod impact values are not mentioned.
Allowable Subject Matter
Claims 6-7, 9-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Specifically, Burkhardt does not suggest alone, or in combination, the claimed Formula 1 of claim 6, wherein R1 and R5 are phenyl substituted with C3-6 branched alkyl.
Response to Arguments
Applicant's arguments filed 4/3/2026 (herein “Remarks”) have been fully and are considered persuasive in part.
Applicant argues (p. 6-7 Remarks) Burkhardt is silent with regards to the crystallization temperature, wherein the present invention is distinguished from Burkhardt from its xylene soluble fraction and specific crystallization temperature. As explained in the specification, the xylene soluble fraction indicates atactic components in the polymer, and decreasing atactic portion results in enhanced crystallinity (p. 12 specification). Consequently, the claimed composition exhibits the claimed Tg while achieving both high transparency and excellent elongation (p. 11-12 specification).
This argument is not found persuasive since the working examples all demonstrate a X.S. in Table 2 within the scope of Burkhardt, and also having the claimed Tc. Comparative Example 5 has a much higher X.S. than the claimed 4.5-7.5% by weight. Hence, it appears Comparative Example 5, while having a higher Tg, is not representative of the polypropylene composition of Burkhardt’s polypropylene which has a Tm and X.S. values within the claimed ranges.
Applicant argues (p. 7-8 Remarks) R1 and R5 in the catalyst are without substitutions, and therefore the two structures are not similar.
This argument is found persuasive. The rejection over claim 6 and dependent claims has been withdrawn.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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, 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.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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