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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered.
The most pertinent of these references have been applied below.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-2, is acknowledged. The traversal is on the ground that the restriction is only proper if the claims are independent or distinct and there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41, which is for national applications, but it is not used for PCT national stage (371) applications. For PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner. The special technical feature of, the copolymer of claim 1, is met by prior art. See below rejection. Thus, the examiner asserts the lack for unity.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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.
Claim(s) 1-2 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Musacchi et al. (US 20130202836 listed on IDS and ISR) and evidenced by Pellegatti et al. (US 20100137543/WO 2009000637).
As to claims 1-2, Musacchi (claims, abs., examples, Table, 25, 0110, 0121) discloses a 1-butene/ethylene copolymer PB4 having a melt flow rate (MFR,190° C/ 2.16 kg) of 1 g/10 min; an intrinsic viscosity [η] of 1.95 measured in decalin at 135° C, and an isotactic pentad fraction (mmmm%) 80 to 100%, a range that sufficiently specific to anticipate the instant claimed range (80-99.9%). Should the overlapping unsatisfying would render prima facie case of non-obviousness. As evidenced by Pellegatti (abs., claims, examples, tables), PB4 comprises 15.1-18 mol % of ethylene and 82-84.9mol % of 1-butene.
Musacchi is silent on the claimed properties of Mw, Shore A and D hardness measured by the method of claim 2, and absence of melt peak via the DSC method of claim 1.
One of ordinary skill in the art would at once envisage that intrinsic viscosity correlates to Mw, the mol% and isotactic pentad fraction determines the crystallinity and types of PB4, and molecular weight, copolymer structure (mol%), and crystallinity determines Shore A and D hardness. In light of these, Musacchi’s PB4 would inherently exhibit the aforementioned properties, because in view of the substantially identical composition (in this case, the disclosed copolymer mol%, MFR, intrinsic viscosity), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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