DETAILED ACTION
Response to Amendment
The amendment and response filed on May 28, 2026 has been entered. Claims 1-15 and 17-21 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 and 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/277,806. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap and vary slightly in scope to the claims in US ‘806. For example, with respect to claim 1, the present claims are directed to a generic version of claim 6 of US ‘806. Specifically, claim 6 of US ‘806 recite all of the limitations of instant claim 1 and further requires a melt flow rate range and an amount of high melt strength polypropylene in the foam. These additional melt flow rate claim limitations are separately claimed in instant dependent claims 4 and 6, respectively. Likewise, present method claims, i.e., claims 15 and 16, are anticipated by method claims of US ‘806 (see claims 13 and 14).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/277,798. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap and vary slightly in scope to the claims in US ‘798. For example, with respect to claim 1, the present claims require a melt strength of at least 45 cN, whereas the claims of US ‘798 require a melt flow strength of at least 65 cN (claims 1 and 7). Likewise, the present method claims are anticipated by method claims of US ‘798 (see claims 14 and 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/277,649. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap in scope to the claims in US ‘649. For example, with respect to claim 1, the present claims require a melt strength of at least 45 cN, whereas the claims of US ‘649 require a melt flow strength of at least 10 cN and no greater than 100 cN (claims 1 and 12). Likewise, the present article, i.e., foam, claims are anticipated by the article, i.e., foam, claims of US ‘649 (see claims 12-14). Regarding method claim 15, the method of claim 15 of US ‘649 does not recite the amount of blowing agent or an extrusion step. However, it would have been within the level of ordinary skill in the art to have used a blowing agent within the claimed amount motivated by the desire to obtain a foam having desired porosity properties. Additionally, it would have been obvious to have extruded the foam composition, as specifically disclosed in US ‘649, in order to obtain an insulation article as claimed in US ‘649 (see claim 19).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/275,114. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap in scope to the claims in US ‘114. For example, with respect to claim 1, the present claims require a melt strength of at least 45 cN, whereas the claims of US ‘114 require a melt flow strength of at least 10 cN and no greater than 100 cN (claim 5). Regarding method claim 15, the method of claim 15 of US ‘114 does not recite the amount of blowing agent. However, it would have been within the level of ordinary skill in the art to have used a blowing agent within the claimed amount motivated by the desire to obtain a foam having desired porosity properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
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 1-15 and 17-21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over McLoughlin et al. (US Pub 2019/0276653).
Regarding claims 1 and 2, US ‘653 discloses a foam formed from a composition comprising a high melt strength polypropylene having a melt strength of between 20-100 cN (claim 1). While both the present invention and US ‘653 use the ISO 16790:2005 test to determine the melt strength, the present claims state that the melt strength is measured at 200ᵒC, whereas US ‘653 measures the melt strength at 190ᵒC. Since US ‘653 discloses a composition that contains the same components and exhibits a melt strength within the claimed range at a temperature close to the measurement temperature of claim 1, it is reasonable to conclude that the composition of US ‘653 that would exhibit a melt strength within the presently claimed range at a temperature of 200ᵒC absent some showing on the record that there is some criticality to measuring the melt strength at 200ᵒC versus 190ᵒC. Further, MPEP 2112 states “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
With regard to claim 3, Comparative Example 1 is an example where the high melt polypropylene is a homopolymer [0075].
With regard to claim 4, US ‘653 discloses that the high melt polypropylene can have a melt flow rate of about 1 g/10 min or less [0019].
With regard to claim 5, US ‘653 would yield a composition that would have the same properties as the composition prepared by the process set forth in the product-by-process of claim 6. See MPEP 2113. Specifically, US ‘653 discloses using a high melt strength polypropylene that includes a non-phenolic stabilizer, such as a hindered amine, wherein the propylene-based polymer is made up of a branched polymer [0020].
With regard to claim 6, US ‘653 discloses a foam comprising the high melt strength polypropylene comprising which is present in an amount within the claimed range (claim 1).
With regard to claim 7, US ‘653 discloses that the foamable composition can comprise a further polypropylene component (claim 1, [0030]).
Regarding claim 8, US ‘653 discloses that a nucleating agent can be included in the composition ([0038], [0040]).
Regarding claim 9, US ‘653 discloses the use of various additives ([0040], [0041], [0065]), including a chemical blowing agent which is exemplified as being present in an amount from 0-10 wt% [0065].
Regarding claim 10, US ‘653 discloses that the composition of claim 1 is used to form the foam of claim 15. That is, the foamable composition of US ‘653 forms 100% of the resulting foam.
Regarding claim 11, US ‘653 discloses that the density of the foam can be 10-200 kg/m3 [0045].
Regarding claim 12, US ‘653 discloses that the foam is produced via an extrusion process [0042].
Regarding claims 13 and 17-21, Comparative Example 1 is an example where the high melt polypropylene is present in an amount of 100 wt% of the polymer composition.
Regarding claims 14 and 16, US ‘653 discloses that the composition is used to form a foamed article, such as a foamed sheet [0053].
Regarding claim 15, US ‘653 discloses the claimed process wherein a blowing agent is used in an amount of up to 1 wt% [0046].
Claim Rejections - 35 USC § 103
Claims 1-15 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over SABIC® PP-UMS in view of either McLoughlin et al. (US Pub 2019/0276653) or KR 2018-0099562. KR ‘562 was cited in the IDS of May 19, 2026. The translation provided in the IDS is relied upon in the below rejection.
The present specification discloses that SABIC® PP-UMS 561P was available as of 18 February 2021. The attached Product Brochure SABIC® PP-UMS-EN document was downloaded at www.sabic.com/en/products/polymers/polypropylene-pp/sabic-pp-ums which states a publication date of 6/11/20191. Also, attached is the SABIC® PP-UMS 561P product brochure. Given the above facts, it is deemed that SABIC® PP-UMS 561P is prior art under 35 U.S.C. 102(a)(1).
Regarding claims 1-3 and 10, Sabic discloses a foamable ultra-high melt strength polypropylene homopolymer having a melt strength of more than 65 cN. Sabic does not specifically disclose that the composition is formed into a foamed sheet. However, this is suggested in the various cross-industry PP foam solution disclosed on page 1 of the PP-UMS-EN document. Moreover, as detailed above McLoughlin discloses a composition comprising a high melt strength polypropylene that is formed into a foamed sheet. Additionally, KR ‘562 discloses a composition containing a high melt strength polypropylene ([0022], [0024]) that is formed into a foamed sheet. It would have been obvious to one of ordinary skill in the art to have formed the foamable composition of Sabic into a foam sheet, as suggested by Sabic and taught by both McLoughlin and KR ‘562, motivated by the desire to obtain a foam sheet having enhanced mechanical properties, such as tensile strength and hardness (KR ‘056: [0018]).
Regarding claim 4, Sabic discloses that the polypropylene has a melt flow rate of 2.5 dg/min.
Regarding claim 5, while Sabic is silent as to the process of preparing the composition, the composition contains the same materials having the same melt strength properties. MPEP 2113 states "[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). Further, Sabic suggests that use of the composition may require the addition of a stabilization package.
Regarding claims 6, 13, and 17-21, while Sabic suggests that the high melt strength polypropylene can be blended with other blending partners, i.e., polymers, to allow for design freedom, it does not require that a blend be formed. Further, McLoughlin discloses, in Comparative Example 1, an example where the high melt polypropylene is present in an amount of 100 wt% of the polymer composition. Additionally, KR ‘562 discloses that the amount of high melt strength propylene homopolymer included is a result effective variable based on the desired foaming ratio and hardness of the formed foam article [0032]. MPEP 2144.05 states "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it would have been obvious to the skilled article have discovered the amount of high melt strength polypropylene through routine experimentation, based on the desire to obtain a foam having desired foaming ratio and hardness.
Regarding claim 7, Sabic does not disclose using the high melt strength polypropylene with a second polypropylene component. KR ‘056 discloses that it is known to combine high melt strength polypropylene compositions with other polypropylene components to form a polymer mixture ([0013], [0022], [0028]). KR ‘056 discloses that such polymer mixtures result in compositions having excellent foaming quality and enhanced mechanical properties, such as tensile strength and hardness [0018]. It would have been obvious to one of ordinary skill in the art to have blended the high melt strength polypropylene of Sabic with another polypropylene component, as taught in KR ‘056, motivated by the desire to prepare a composition that has excellent foaming quality and enhanced mechanical properties.
Regarding claims 8 and 9, Sabic does not disclose the use of 0.001-5.0 wt% additives in the high melt polypropylene composition. KR ‘056 discloses a composition containing a high melt strength polypropylene ([0022], [0024]). KR ‘056 discloses that it is known in this art to add various additives within the claimed amounts ([0053], [0054]) to the high melt polypropylene containing composition, such as antioxidants, stabilizers, nucleating agents, pigments. It would have been obvious to one of ordinary skill in the art to add the conventionally known additives in effective amounts to the high melt polypropylene composition of Sabic, motivated by the desire to impart the properties associated with the use of such additives to the composition, e.g., pigment for coloration.
Regarding claim 11, Sabic discloses a foam having a density of 905 kg/m3. Additionally, US ‘653 discloses that the density of the foam can be 10-200 kg/m3 [0045].
Regarding claim 12, Sabic discloses that the polypropylene can be processed by extrusion.
Regarding claim 14, Sabic discloses articles within the scope of the Markush group of claim 14.
Regarding claim 15, Sabic is silent as to the process of preparing a foam from the composition. As disclosed in both US ‘653 and KR ‘056, it is conventional in the polypropylene art to produce a foam from a composition containing a high melt strength polypropylene composition by adding a blowing agent within the claimed amounts and subjecting the composition to a foaming process.
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
The claim objections and rejections under 35 U.S.C. 112(b) have been overcome by the present amendment.
The argument that McLoughlin is a non-enabling disclosure is acknowledged. MPEP 716.01(c)(II) states “Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include…inoperability of the prior art…”.Thus, the present arguments are not considered to be persuasive because they are not in the form of evidence, i.e., affidavit/declaration.
The arguments that McLoughlin does not disclose that the high melt strength polypropylene is a homopolymer (claim 3) and that the high melt polypropylene composition comprises the high melt polypropylene in an amount of ≥25 wt% (claims 1 and 17-21) is not persuasive, because Comparative Example 1 discloses an embodiment which meets these claim limitations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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