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 .
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.
Claim Objections
Claims 1, 2, 4, 9, 10, and 12 are objected to because of the following informalities.
Claims 1, 2, 4, 9, 10, and 12 all recite the phrase “(as described in the experimental part)”. Wherever possible, claims are to be complete in themselves, with references to the disclosure limited to circumstances wherein there is no practical way to define the invention in words (MPEP § 2173.05(s). If applicant wishes the claim to recite a limitation of a method of measuring the regioinversions, the independent claim(s) should be amended to positively recite the required methodology rather than include a reference to the specification.
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.
Claims 1-15 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 claim 1: Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences can lead to confusion over the intended scope of a claim (MPEP § 2173.05(d)). As written, claim 1 recites limitations stating that the claimed invention is “preferably” characterized by properties (e) total amount of ethylene and butene, (f) ratio of butene to ethylene, (j) xylene solubility, and (n) that the melt flow rate (MFR) of the upgrading resin is higher than that of the base resin. As written, the use of the word “preferably” in these limitations renders the claim scope indefinite as it is unclear which, if any, of these properties are required.
Additionally, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of a ratio of butene units to ethylene units in the range of 3.0 to 16.0, and the claim also recites the limitation “more preferably 3.0 to 8.0” which is the narrower statement of the range/limitation (see parameter (f)). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims depend from claim 1 and do not correct these deficiencies. The claims are therefore indefinite per the same rationale as claim 1.
Regarding claim 2: Claim 2 states that the invention “preferably” has a xylene content of 5.0 to 25.0 wt% (see parameter (j)), and that the “preferably” the upgrading resin’s MFR is higher than that of the base resin (see parameter (n)). The use of the word “preferably” renders the claim unclear as to whether these are required properties of the claimed invention (MPEP § 2173.05(d)).
Additionally, the recitation of the broad range of a xylene soluble content of 5.0 to 25.0 wt% in combination with the narrower range “more preferably 15.0 to 19.0 wt%” renders claim 2 indefinite because it is unclear whether the narrow range is required or merely exemplary (MPEP § 2173.05(c)).
Regarding claim 3: Claim 3 states that the composition “has one or more, preferably all of the following properties”. The use of the word “preferably” renders the claim scope indefinite as it is unclear whether the claimed invention is required to meet all of the recited properties (MPEP § 2173.05(d)).
Regarding claim 9: As written, claim 9 recites limitations stating that the claimed invention is “preferably” characterized by properties (e) total amount of ethylene and butene, (f) ratio of butene to ethylene, and (j) xylene solubility. The use of the word “preferably” renders the claim scope indefinite as it is unclear whether the claimed invention is required to meet all of the recited properties (MPEP § 2173.05(d)).
Claims 10-15 depend from claim 9 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 9.
Regarding claim 10: Claim 10 recites the limitations “ and preferably (j) a xylene soluble content”, and that the “preferably” the upgrading resin’s MFR is higher than that of the base resin (see parameter (n)). The use of the word “preferably” renders the claim unclear as to whether these are required properties of the claimed invention (MPEP § 2173.05(d)).
Regarding claim 11: Claim 11 states that the composition “has one or more, preferably all of the following properties”. The use of the word “preferably” renders the claim scope indefinite as it is unclear whether the claimed invention is required to meet all of the recited properties (MPEP § 2173.05(d)).
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 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.
Claims 1-6 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Miyaguchi et al, US2009/0292076.
Miyaguchi discloses a propylene-based resin composition, corresponding to the claimed blend (for claims 1, 9), comprising copolymer (X) and copolymer (Z) (abstract). The prior art composition is used in the production of films (for claim 1) (¶0001), with sealing temperatures in the range of 94 to 100 °C and haze in the range of 1.1 to 1.7% (for claim 6) being exemplified (for claim 1) (Table 1).
Regarding the claimed ethylene/propylene/butene base resin: The prior art copolymer (X) may be a propylene/ethylene/butene terpolymer having an ethylene content in the range of 1 to 13 wt%, overlapping the range of claimed parameter (a) (for claims 1, 2, 9, 10); a propylene content of 86 to 97 wt%, overlapping the range of claimed parameter (b) (for claims 1, 2, 9, 10); a butene content of 1 to 13 wt%, overlapping the range of claimed parameter (c) (for claims 1, 2, 9, 10); a melt flow rate (MFR) at 230 C and 21.18 N (i.e., 2.16 kg) of 1 to 20 g/10 min, overlapping the range of claimed parameter (h) (for claims 1, 2, 9, 10); and a melting temperature (Tm) of 120 to 150 °C, overlapping the range of claimed parameter (i) (for claims 1, 2, 9) (¶0010-0012). Note that the prior art propylene/ethylene/butene is not required to contain a fourth comonomer; the sum of the amounts of ethylene, propylene, and butene would therefore add up to 100 wt%, corresponding to claimed parameter (d) (for claims 1, 2, 9).
Based on the amounts of ethylene and butene, the sum of the amounts of ethylene and butene in the prior art copolymer (X) may be in the range of 2 to 26 wt%, overlapping the range in claimed parameter (e) (for claims 1, 2) and the ratio of butene to ethylene can be 1:13 to 13:1- i.e., 0.8 to 13, overlapping the range for claimed parameter (f) (for claims 1, 2).
Miyaguchi is silent regarding the content of regioinversions and xylene soluble fraction in the prior art propylene/ethylene/butene copolymer (X); however, it is reasonably expected that these properties would be present in the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art copolymer (X) comprises the same monomers combined in the same ratios, and is characterized by the same melting point- which is indicative of having the same crystallinity- and the same MFR-which is indicative of having similar properties such as molecular weight, branching degree-as the claimed base resin. Additionally, Miyaguchi teaches that the copolymer (X) is made using metallocene catalysts (¶0015). Note that the metallocene catalyst referenced by Miyaguchi are bis-indenyl metallocene catalysts that are similar to that disclosed by applicant for the production of the claimed base resin. As the prior art copolymer (X) is made using the same type of catalyst and has the same properties of (co)monomer content, melting point, crystallinity, etc. as the claimed base resin, it is reasonably expected that it would have a regio-inversion (for claims 1, 2, 4, 9, 10, 12) and xylene soluble content (for claims 1, 2, 8-10) within the required ranges. The burden is therefore shifted to the applicant to provide evidence the prior art copolymer (X) would not have the required regioinversion content and xylene soluble content. The prior art copolymer (X) therefore corresponds to the claimed base resin (for claims 1, 9).
Regarding the claimed propylene/butene upgrading resin: The prior art copolymer (Z) is a copolymer of propylene and an olefin comonomer having ≥ 4 carbon atoms and is characterized by a Tm less than 115 °C, overlapping the range of claimed parameters (k) (for claims 1, 2, 9, 10) and (s) (for claims 3, 11); an olefin comonomer content in the range of 30 to 40 wt%, overlapping the range of claimed parameter (l) (for claims 1, 2, 9, 10); and a MFR at 230 °C and 21.18 N (i.e., 2.16 kg) in the range of 1 to 20 g/10 min, overlapping the range of claimed parameter (n) (for claims 1, 2 9, 10) (¶0021, 0050) Furthermore, Miyaguchi specifically discloses the use of a propylene/butene copolymer as copolymer (Z) (¶0060). An ordinary artisan would therefore recognize that copolymer (Z) may be a propylene/butene copolymer having a butene content in the range of 30 to 40 wt%, Tm less than 115 °C, and MFR of 1 to 20 g/10 min. As no other comonomers are required, the sum of the amounts of propylene and butene would be 100%, corresponding to claimed parameter (m) (for claims 1, 2, 9, 10). The prior art copolymer (Z) therefore corresponds to the claimed upgrading resin (for claims 1, 9).
Regarding claims 5, 13, 14: The prior art composition comprises 61 to 85 wt% of copolymer (X), overlapping the claimed range for the amount of base resin (for claims 5, 13, 14); copolymer (Y); and 1 to 38 wt% copolymer (Z), overlapping the claimed range (for claims 5, 13, 14) (¶0006). Further note Miyaguchi teaches that (1) the sum of the amounts of copolymers (X), (Y), and (Z) is 100 wt% and (2) copolymer (Y) can be present in an amount as small as 1 wt% (¶0006). Based on this disclosure, an ordinary artisan will recognize that the sum of the amounts of copolymers (X) and (Z) can be as high as 99 wt%, overlapping the claimed range (for claims 5, 13).
Miyaguchi does not specifically disclose a composition wherein copolymers (X) and (Z) have monomer contents MFR, and Tm values in the required ranges.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges overlap the ranges recited in the instant claims. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition/film wherein the copolymers (X) and (Z) had the required properties in view of the teachings of Miyaguchi (for claims 1, 9).
Allowable Subject Matter
Claims 7 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Miyaguchi et al, US2009/0292076, discussed earlier in this Action.
As noted above, the composition of Miyaguchi comprises a copolymer (X) which can be a propylene/ethylene/butene copolymer having the same properties of propylene content, ethylene content, butene content, Tm, MFR, and regioerrors as the base resin disclosed by applicant. Miyaguchi does not, however, disclose any explicit teachings that the copolymer (X) is bimodal or multimodal. Additionally, there is no teaching that the prior art copolymer (X) is prepared via any method that would be expected to result in a polymer that is bimodal with respect to C4 content and/or molecular weight. As such, the evidence in the record does not provide a reasonable basis for expecting the prior art copolymer (X) to meet this requirement.
Finally, no reference has been found that would provide an ordinary artisan with a motivation to modify copolymer (X) of Miyaguchi to be bimodal with regards to its C4 content and/or molecular weight while at the same time meeting the requirements stated in claimed parameters (a)-(d) and (g)-(i). The claims are therefore allowable in view of the requirement of using an ethylene-propylene-butene terpolymer base resin that is bimodal and meets all of the claimed properties (a)-(d) and (g)-(i).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765