DETAILED ACTION
Pending Claims
Claims 1-12 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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 9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9, claim 9 recites the limitation "the mineral oil (D)" in the thermoplastic resin composition according to claim 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of the prior art search, claim 9 has been interpreted as: (9) wherein a content of (C) is 0.1% by mass or more and 10% by mass or less with respect to 100% by mass of a total amount of the propylene resin (A), the ethylene-based copolymer rubber (B), and the copolymer (B').
Claim Rejections - 35 USC § 102
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.
Claims 1 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yutaka (JP 2000-272063 A).
Regarding claims 1 and 9-11, Yutaka discloses: (1) a thermoplastic resin composition (paragraphs 0006 & 0008; Examples 1, 2, 4 & 5) comprising:
5 to 95 parts by mass of a propylene resin (A) (paragraphs 0017-0019 & 0033; component “(d)” in Examples 1, 2, 4 & 5);
5 to 95 parts by mass of at least one selected from the group consisting of an ethylene- based copolymer rubber (B) and a copolymer (B') containing a monomer unit derived from an aromatic vinyl compound and a monomer unit derived from a conjugated diene compound (paragraphs 0009-0011 & 0033; component “(a)” in Examples 1, 2, 4 & 5), provided that a total amount of the propylene resin (A), the ethylene-based copolymer rubber (B), and the copolymer (B') is 100 parts by mass (Examples 1 & 2 convert to 54/46; Examples 4 & 5 convert to 60/40); and
a glycerol fatty acid ester (C) (paragraph 0034; see also paragraph 0021), wherein (C) is an ester of a fatty acid having 8 to 14 carbon atoms (paragraph 0034: lauric acid is C12);
(9) wherein a content of (C) is 0.1% by mass or more and 10% by mass or less with respect to 100% by mass of a total amount of the propylene resin (A), the ethylene-based copolymer rubber (B), and the copolymer (B') (paragraph 0034; see also Examples 1, 2, 4 & 5: converts to approximately 3%, 3%, 2% and 4%);
(10) wherein (C) is a diglycerol fatty acid ester (paragraph 0034: diglycerin monolaurate); and (11) wherein (C) is a diglycerol monofatty acid ester (paragraph 0034: diglycerin monolaurate).
Claim Rejections - 35 USC § 102/103
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.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yutaka (JP 2000-272063 A).
Regarding claim 12, the teachings of Yutaka are as set forth above and incorporated herein. The composition of Yutaka is shaped into a film. He fails to explicitly disclose: (12) a molded article; however, this is a product-by-process limitation. It has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the claimed product-by-process appears to be the same as or obvious from the shaped product of the prior art, regardless of how the shaped product of the prior art is made.
Claim Rejections - 35 USC § 103
Claims 2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yutaka (JP 2000-272063 A).
Regarding claim 2, the teachings of Yutaka are as set forth above and incorporated herein. Yutaka discloses: (2) wherein the propylene resin (A) is at least one selected from the group consisting of a propylene homopolymer, a heterophasic polymerization material, and a propylene random copolymer (paragraphs 0017-0019 & 0033; component “(d)” in Examples 1, 2, 4 & 5). The exemplary embodiments of Yutaka et al. feature an excess of polypropylene relative to the ethylene-based copolymer rubber. Accordingly, these embodiments fail to satisfy: (2) (B+ B')/(A1+A2+B+ B') is 0.51 to 1.0 (when a content of the propylene resin (A) is A parts by mass, a content of the ethylene-based copolymer rubber (B) is B parts by mass, a content of the copolymer (B') is B' parts by mass, a content of the propylene homopolymer is A1 parts by mass, a content of the heterophasic polymerization material is A2 parts by mass, and A + B + B' is 100 parts by mass). Turning to the general teachings of Yutaka, he contemplates an amount of polypropylene of 5 to 30% by weight (see paragraph 0017) and an amount of ethylene-based copolymer rubber of 7 to 30% by weight (see paragraph 0011). These ranges obviously embrace embodiments satisfying the instantly claimed ratio (with excess ethylene-based copolymer rubber).
Therefore, the teachings of Yutaka et al. would have obviously embraced embodiments satisfying the instantly claimed ratio ((B+ B')/(A1+A2+B+ B') is 0.51 to 1.0) because: (a) the general teachings of Yutaka contemplate an amount of polypropylene of 5 to 30% by weight; (b) the general teachings of Yutaka contemplate an amount of ethylene-based copolymer rubber of 7 to 30% by weight; and (c) these ranges of Yutaka obviously embrace embodiments satisfying the instantly claimed ratio (with excess ethylene-based copolymer rubber).
Regarding claims 5-7 the teachings of Yutaka are as set forth above and incorporated herein. The exemplary embodiments of Yutaka fail to disclose embodiments: (5) further comprising an antioxidant (G); (6) further comprising a crosslinking agent (E); and (7) further comprising a lubricant (F). However, the general teachings of Yutaka contemplate the use of these materials as optional additives (see paragraph 0021).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Yutaka with the instantly claimed antioxidant (G), crosslinking agent (E), and lubricant (F) because: the general teachings of Yutaka contemplate the use of antioxidants, crosslinking agents, and lubricants as optional additives.
Claims 3, 4, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yutaka (JP 2000-272063 A) in view of Yoshimura et al. (US Pat. No. 5,300,353).
Regarding claims 3 and 4, the teachings of Yutaka are as set forth above and incorporated herein. The polyolefin composition of Yutaka is used as a resin layer for a multi-layered stretched film (see Abstract). Yutaka contemplates the use of various additives, including plasticizers (see paragraph 0021). However, he fails to explicitly disclose: (3) a mineral oil (D); (4) wherein a content of (D) is 0.1% by mass or more and 60% by mass or less with respect to 100% by mass of a total amount of the propylene resin (A), the ethylene-based copolymer rubber (B), the copolymer (B'), and the mineral oil (D).
Yoshimura et al. disclose a similar polyolefin composition used as a resin layer for a multi-layered stretched film (see Abstract). Similar to Yutaka, they contemplate the use of various additives (see column 21, lines 19-59) and demonstrate that mineral oil is recognized in the art as a suitable additive for this type of composition. Specifically, it is used in concert with a plasticizer, in amounts ranging from 0.5 to 5% by weight (see column 21, lines 44-47). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Yutaka with the instantly claimed mineral oil additive (and amount thereof) because: (a) the polyolefin composition of Yutaka is used as a resin layer for a multi-layered stretched film; (b) Yutaka contemplates the use of various additives, including plasticizers; (c) Yoshimura et al. disclose a similar polyolefin composition used as a resin layer for a multi-layered stretched film; (d) similar to Yutaka, Yoshimura et al. contemplate the use of various additives and demonstrate that mineral oil is recognized in the art as a suitable additive for this type of composition; (e) specifically, the mineral oil of Yoshimura et al. is used in concert with a plasticizer, in amounts ranging from 0.5 to 5% by weight; and (f) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 8, the teachings of Yutaka are as set forth above and incorporated herein. The polyolefin composition of Yutaka is used as a resin layer for a multi-layered stretched film (see Abstract). Yutaka contemplates the use of various additives, including lubricants (slip agents) (see paragraph 0021). He fails to explicitly disclose that his lubricant: (8) is a fatty acid amide.
Yoshimura et al. disclose a similar polyolefin composition used as a resin layer for a multi-layered stretched film (see Abstract). Similar to Yutaka, they contemplate the use of various additives, including lubricants (slip agents) (see column 21, lines 19-59). Yoshimura et al. demonstrate that fatty acid amides are recognized in the art as suitable lubricants (slip agents) for this type of polyolefin composition (see column 21, lines 22-24). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Yutaka with the instantly claimed fatty acid amide lubricant because: (a) the polyolefin composition of Yutaka is used as a resin layer for a multi-layered stretched film; (b) Yutaka contemplates the use of various additives, including lubricants (slip agents); (c) Yoshimura et al. disclose a similar polyolefin composition used as a resin layer for a multi-layered stretched film; (d) similar to Yutaka, Yoshimura et al. contemplate the use of various additives, including lubricants (slip agents); (e) Yoshimura et al. demonstrate that fatty acid amides are recognized in the art as suitable lubricants (slip agents) for this type of polyolefin composition; and (f) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
March 23, 2026
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