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
Election/Restrictions
Applicant’s election of Group A, claims 1-4 without traverse in the reply filed on 26 Dec. 2025 is acknowledged.
Claims 5-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 Dec. 2025.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda and Ogawa (EP 3603959 A1, published 05 Feb. 2020, hereinafter Maeda).
Regarding claims 1-2, 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.
In light of the overlap between the resin composition that disclosed by Maeda, it would have been obvious to one of ordinary skill in the art to use a resin composition that is both disclosed by Maeda and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 3-4 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 3-4, Maeda teaches the elements of claim 1, and 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 of the ethylene-based resin is 0.850 to 0.900 g/cm3 (paragraph 0026).
Given that Iwashita and Mito are drawn to blends of two propylene-based and 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 Iwashita. Since Iwashita 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 Iwashita. 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Iwashita et al. (WO 2019/176403 A1, published 19 Sep. 2019, hereinafter Iwashita).
Regarding claims 1-3, Iwashita teaches resin composition according to the present invention contains 35-59.9 parts of a propylene polymer (A) satisfying (a), 25-40 parts by mass of a flexible propylene copolymer (B) satisfying (b), 0.1-10 parts by mass of a polyolefin (C) containing a structural unit derived from an unsaturated carboxylic acid and/or a derivative thereof, and 15-30 parts by mass of an ethylene polymer (D) satisfying (d), wherein:
(a) having a melting point (Tm) of 120°C or higher,
(b) having an MFR in the range of 0.01-100 g/10 min as measured at 230°C and a load of 2.16 kg, and satisfying requirements (b-1) and (b-2):
(b-1) having a melting point (Tm) of 110°C or lower or not having a melting point observed;
(b-2): having a constituent unit derived from propylene and a constituent unit derived from ethylene and at least one olefin selected from α-olefins having 4-20 carbon atoms; the contained amount of the constituent unit derived from ethylene and at least one α-olefin selected from 4-20 carbon atoms being 30 mol% or less;
(d) being an ethylene homopolymer or a copolymer of ethylene and at least one α-olefin selected from α-olefins having 3-20 carbon atoms, and having an MFR in the range of 0.1-10 g/10 min as measured at 190°C and a load of 2.16 kg (Abstract).
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 four polymers/copolymers, melting point of polymer/copolymer B, and α-olefin content of the copolymer from the overlapping portions of the ranges taught by Iwashita because overlapping ranges have been held to be prima facie obviousness.
The only deficiency of Iwashita is that Iwashita disclose the use of propylene polymer (A) with melting point of 120°C or higher, while the present claims require propylene polymer (A) with melting point of lower than 120°C.
It is apparent, however, that the instantly claimed melting point and that taught by Iwashita are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the point disclosed by Iwashita and the melting point disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the melting point disclosed in the present claims is but an obvious variant of the melting point disclosed in Iwashita, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
In light of the overlap between the resin composition that disclosed by Iwashita, it would have been obvious to one of ordinary skill in the art to use a resin composition that is both disclosed by Iwashita and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Iwashita et al. (WO 2019/176403 A1, published 19 Sep. 2019, hereinafter Iwashita) in view of Mito et al. (JP H04/300933 A, published 23 Oct. 1992, hereinafter Mito).
Regarding claim 4, Iwashita teaches the elements of claim 3.
Iwashita does not disclose the density of his ethylene polymer (D).
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 density of the ethylene-based resin is 0.850 to 0.900 g/cm3 (paragraph 0026).
Given that Iwashita and Mito are drawn to blends of a propylene-based, an ethylene-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 with a density as taught by Mito in the resin composition as taught by Iwashita. Since Iwashita and Mito are both drawn to blends of propylene-based, an ethylene-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 with a density as taught by Mito in the resin composition as taught by Iwashita. Further, Mito teaches that an ethylene resin with this density 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 a density for the ethylene polymer from the overlapping portion of the range taught by Mito because overlapping ranges have been held to be prima facie obviousness.
Conclusion
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787