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
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda and Ogawa (EP 3603959 A1, published 05 Feb. 2020, hereinafter Maeda) in view of Mito et al. (JP H04/300933 A, published 23 Oct. 1992, hereinafter Mito).
Regarding claims 1 and 4, Maeda teaches a polypropylene adhesive layer comprising 70-90% by weight of a propylene copolymer A and 3 to 30% by weight of a propylene-butene copolymer B, in which the melting point of copolymer A is 70 to 120°C and the melting point of copolymer B is 130°C or less (Abstract). Maeda teaches the butene content is 10-90 mol% (paragraph 0048). Maeda teaches the melt flow rate (MFR) of his copolymer B is 0.1 to 100 g/10 min. (230°C, load of 2.16 kg) (paragraph0051). Maeda teaches his polypropylene adhesive layer further comprises 5 wt.% of a modified isotactic polypropylene grafted with maleic anhydride (resulting in a carboxylic acid derivative) (paragraph 0124 and Table 1).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected relative amounts of the three polymers/copolymers, melting points of the two polymers/copolymers, and butene content of the copolymer from the overlapping portions of the ranges taught by Maeda because overlapping ranges have been held to be prima facie obviousness.
Maeda teaches his composition may contain other copolymers (paragraph 0072).
Maeda does not disclose the inclusion of an ethylene-based polymer in the amount claimed and with the claimed melt flow rate and density.
Mito teaches a polymer composition comprising a blend of an α-olefin copolymer modified with a carboxylic acid group, a polypropylene copolymer, and an ethylene-based resin (Abstract). Mito teaches the amount of the ethylene-based resin is 100 parts or less per 100 parts of his two propylene polymers/copolymers (claim 2). Mito teaches his ethylene resin is a random copolymer of ethylene and an α-olefin having 3 to 20 carbon atoms (paragraphs 0022-0023) and the density and MFR (190°C and 2.16 kg) of the ethylene-based resin are 0.850 to 0.900 g/cm3 and 0.1 to 50 g/10 min, respectively (paragraph 0026).
Given that Maeda and Mito are drawn to blends of two propylene-based and an α-olefin copolymer modified with a carboxylic acid group for adhering to metal layers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an ethylene-based polymer in the amount and with the density and MFR as taught by Mito in the resin composition as taught by Maeda. Since Maeda and Mito are both drawn to blends of two propylene-based and an α-olefin copolymer modified with a carboxylic acid group for adhering to metal layers, one of ordinary skill in the art would have a reasonable expectation of success in using an ethylene-based polymer in the amount and with a MFR and a density as taught by Mito in the resin composition as taught by Maeda. Further, Mito teaches that an ethylene resin with these properties improves the adhesive strength of the resin composition (paragraph 0027).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected an amount, density, and MFR for the ethylene polymer from the overlapping portions of the ranges taught by Mito because overlapping ranges have been held to be prima facie obviousness.
Response to Arguments
Applicant's arguments filed 20 Apr. 2026 and the affidavit filed 21 Apr. 2026 have been fully considered, but they were not persuasive. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claims 1 and 4 and cancelled claims 2-3.
Applicant argues that the use an ethylene-based polymer (D) having a specific MFR of the claimed composition achieves unexpected performance, which is further supported by the Rule 132 Declaration of Koya Yoshimoto, which compares an additional Comparative Example 6 with Example 4 of the present invention.
However, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the data utilizes 50-80 parts A, 0-30 parts B, 10 parts C, and 10 parts D, whereas the present claims recite 10-94.9 parts A, 0-40 parts B, 0.1 to 20 parts C, and 5-40 parts D. Further, the data utilizes only polypropylene homopolymers for A, two propylene copolymers for B (with α-olefins with carbon lengths of 2 and 4, α-olefin contents of 16 and 26 mol.%, and both with a MFR of 7 g/10min), one modified polypropylene for C, and one ethylene-propylene copolymer with a MFR of 0.6 for D, whereas the present claims recite any propylene-based polymer with a given melting point for A, any propylene-α-olefin copolymer with broad limitations on type of α-olefin (4-20 carbons), MFR (0.01 to 100 g/10 min – four orders of magnitude), and α-olefin content of 40% or less for B, any polyolefin C as long as it has any amount of a carboxylic acid group or its derivative, and ethylene homopolymer or any ethylene-α-olefin (3-20 carbons) based copolymer with a MFR in a range of 0.1 to 6 g/10 min for D.
Further, applicant presented new results for a blend containing ethylene-butylene copolymer with a MFR of 6.7 g/10 min, which did not perform as well as a blend containing ethylene-propylene copolymer with a MFR of 0.6 g/10 min. This comparison does not demonstrate that the MFR range of 0.1 to 6 g/10 min for component D is a critical range for achieving unexpected results for the broad range of compositions being claimed in claim 1 over the prior art.
Further, the data in the declaration is not persuasive given that there is not a proper side-by-side comparison between Example 4 and Comparative Example 6 given that Example 4 uses EPR, while Comparative Example 6 uses EBR. Therefore, it is not clear if the differences between the examples are due to the difference in the two melt flow rates or the differences in the composition of the two ethylene-based polymers.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. 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.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787
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