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 .
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.
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.
Claims 1-6 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Klimke et al. (US 2014/0356565).
Considering Claims 1 and 10: Klimke et al. teaches a propylene copolymer composition comprising a copolymer of propylene and ethylene and/or a C4-C12 alpha olefin (¶0015-17), where the comonomer content is 7.5 to 12 weight percent (¶0019); the copolymer composition having a xylene cold soluble fraction of 30 to 40 weight percent (¶0010), with the amount of comonomer in the xylene soluble fraction as being 16 to 28 weight percent (¶0020); the melt flow rate being from 0.5 to 2.5 g/10 min (¶0009); and the flexural modulus being 300 to 600 MPa (¶0037). Klimke et al. teaches nucleating agents as being optional (¶0060).
Klimke et al. teaches overlapping values for the comonomer content in the polymer and the in the xylene cold soluble fraction. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected comonomer contents in the overlapping portion of the claimed range, and the motivation to do so would have been, as Klimke et al. suggests, to provide softness and good optical properties to the composition (¶0019).
Klimke et al. teaches an overlapping range for the flexural modulus. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected a flexural modulus in the overlapping portion of the claimed range, and the motivation to do so would have been, as Klimke et al. suggests, to provide flexibility to the formed articles.
Klimke et al. teaches the intrinsic viscosity of the xylene cold insoluble fraction as being 2.0 to 3.0 dl/g (¶0012) and teaches the intrinsic viscosity of the xylene cold soluble fraction as being from 1.9 to 3.2 dl/g (¶0025). Klimke et al. teaches an example with a XCI(IV) of 2.4 and an XCS(IV) of 3.0 (Table 1-2), or a ratio of 0.8. Based on the disclosed ranges of Klimke et al., the ratio the intrinsic viscocity of XCI fraction to XCS fraction is from 0.625 to 1.5. Klimke et al. teaches that the polymer provides low flexural modulus, high melting temperature and good optical properties (¶0013). "[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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the intrinsic viscosity of the XCI to XCS through routine experimentation, and the motivation to do so would have been, to control the flexural modulus, melting temperature and optical properties.
Considering Claim 2: Klimke et al. teaches the intrinsic viscosity of the xylene cold solubles as being 180 to 350 cm3/g (¶0025).
Considering Claim 3: Klimke et al. teaches the comonomer content of the xylene cold insoluble fraction as being 1.5 to 6.0 weight percent (¶0028).
Considering Claim 4: Klimke et al. teaches the polymer as being heterophasic with two glass transition temperatures (¶0039).
Klimke et al. does not measure the glass transition temperature. However, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Considering Claim 5: Klimke et al. teaches the composition as having a melt temperature of 150-152 ºC (Table 1).
Considering Claim 6: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the Charpy notched impact strength, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 11: Klimke et al. does not teach the composition as being subjected to vis-breaking.
Considering Claim 12: Klimke et al. does not teach the composition as comprising dielectric fluid.
Considering Claim 13: Klimke et al. teaches an article made from the composition (¶0061).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Klimke et al. (US 2014/0356565) as applied to claim 1 above, and further in view of Sandholzer et al. (US 2017/0341267).
Considering Claim 7: Klimke et al. teaches the composition of claim 1 as shown above.
Klimke et al. does not teach adding an acid scavenger to the composition. However, Sandholzer et al. teaches adding less than 1 weight percent of an acid scavenger (¶0073). Klimke et al. and Sandholzer et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene heterophasic polymers. It would have been obvious to a person of ordinary skill in the art to have added the acid scavenger of Sandholzer et al. to the composition of Klimke et al., and the motivation to do so would have been, to remove acidic compounds that would degrade the polypropylene polymer.
Klimke et al. teaches overlapping values for the comonomer content in the polymer and the in the xylene cold soluble fraction. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected comonomer contents in the overlapping portion of the claimed range, and the motivation to do so would have been, as Klimke et al. suggests, to provide softness and good optical properties to the composition (¶0019).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Klimke et al. (US 2014/0356565) as applied to claim 1 above, and further in view of Wolfschwenger et al. (US 2017/0341267).
Considering Claim 8: Klimke et al. teaches the composition of claim 1 as shown above.
Klimke et al. does not teach adding an beta nucleating agent to the composition. However, Wolfschwenger et al. teaches adding a beta nucleating agent to a polypropylene composition (1:44-50). Klimke et al. and Wolfschwenger et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene polymer compositions. It would have been obvious to a person of ordinary skill in the art to have added the beta nucleating agent of Wolfschwenger et al. to the composition of Klimke et al., and the motivation to do so would have been, to increase the impact strength of the composition (1:8-13).
Klimke et al. teaches overlapping values for the comonomer content in the polymer and the in the xylene cold soluble fraction. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected comonomer contents in the overlapping portion of the claimed range, and the motivation to do so would have been, as Klimke et al. suggests, to provide softness and good optical properties to the composition (¶0019).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Klimke et al. (US 2014/0356565) as applied to claim 1 above, and further in view of Herklots (US 2015/0232652).
Considering Claim 9: Klimke et al. teaches the composition of claim 1 as shown above.
Klimke et al. does not teach adding an beta nucleating agent to the composition. However, Herklots teaches adding a maleated polypropylene to a polypropylene composition (¶0102). Klimke et al. and Herklots are analogous art as they are concerned with the same field of endeavor, namely polypropylene polymer compositions. It would have been obvious to a person of ordinary skill in the art to have added the maleated polypropylene of Herklots to the composition of Klimke et al., and the motivation to do so would have been, to increase the interfacial bonding of the polypropylene with fillers (1:8-13).
Klimke et al. teaches overlapping values for the comonomer content in the polymer and the in the xylene cold soluble fraction. In the case where the claimed ranges "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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have selected comonomer contents in the overlapping portion of the claimed range, and the motivation to do so would have been, as Klimke et al. suggests, to provide softness and good optical properties to the composition (¶0019).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Klimke et al. (US 2014/0356565) as applied to claim 13 above, and further in view of Klimke et al. 2012 (US 2012/0220727).
Considering Claims 14 and 15: Klimke et al. teaches the article of claim 1 as shown above.
Klimke et al. does not teach the article as being a cable. However, Klimke et al. 2012 teaches using a heterophasic polypropylene in power cables as an insulation layer (¶0002; 0005). Klimke et al. and Klimke et al. 2012 are analogous art as they are concerned with the same field of endeavor, namely heterophasic polypropylene compositions. It would have been obvious to a person of ordinary skill in the art to have used the composition of Klimke et al. in a cable insulation layer, as Klimke et al. 2012, and the motivation to do so would have been, it is a known use for heterophasic polypropylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the Weibull values, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant's arguments filed August 18, 2026 have been fully considered but they are not persuasive, because:
The applicant’s argument that Klimke et al. does not teach the claimed ratio of the intrinsic viscosity of the xylene cold insoluble fraction and xylene cold soluble fraction is not persuasive. Klimke et al. teaches the intrinsic viscosity of the xylene cold insoluble fraction as being 2.0 to 3.0 dl/g (¶0012) and teaches the intrinsic viscosity of the xylene cold soluble fraction as being from 1.9 to 3.2 dl/g (¶0025). Klimke et al. teaches an example with a XCI(IV) of 2.4 and an XCS(IV) of 3.0 (Table 1-2), or a ratio of 0.8. Based on the disclosed ranges of Klimke et al., the ratio the intrinsic viscocity of XCI fraction to XCS fraction is from 0.625 to 1.5. Klimke et al. teaches that the polymer provides low flexural modulus, high melting temperature and good optical properties (¶0013). "[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). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the intrinsic viscosity of the XCI to XCS through routine experimentation, and the motivation to do so would have been, to control the flexural modulus, melting temperature and optical properties.
Terminal Disclaimer
The terminal disclaimer filed on August 18, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Applications 19/113,968, 19/114,033, and 19/113,979 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767
