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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-8 and 16-20 in the reply filed on 6/1/2026 is acknowledged. Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-8 and 16-20 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention because:
Claim 1 sets forth an intrinsic viscosity that is unitless. For purposes of examination the intrinsic viscosity range will be interpreted as at least 2.5 dl/g as set forth in instant specification [0039].
Claims 2-8 and 16-20 are rejected as being dependent on a rejected claim.
Claim Rejections - 35 USC § 102/103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 and 35 U.S.C. 103 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-8 and 16-20 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP2729529 to Hafner et al.
Regarding Claim(s) 1-7 and 17-19, Hafner teaches heterophasic polypropylene resin comprising more than 50 wt% [0042] of a crystalline or semi-crystalline propylene homopolymer component (A) [0027] (reading on all components of (A) in claims 1, 5, 6, and 18) and at least 20 wt% [0044] (reading on at least 10 wt% and at least 20 wt% of claims 7 and 19) of an amorphous ethylene propylene rubber component (B) that is dispersed in (A) [0027]. The xylene soluble fraction corresponds to component (B) [0048] and the intrinsic viscosity of the xylene soluble fraction is preferably in the range of 0.1-5 dl/g [0051] (reading on at least 2.5 dl/g and at least 3.0 of claim 4) when measured in decalin at 135°C [0190]. Polymer (B) further has an ethylene content of 21-49 wt% [0045] (reading on at least 15 wt% of claim 3 and at least 20 wt% of claim 17)
Hafner does not particularly teach the properties of more than 1 internal vinylidene unsaturation per chain or more than 2 long chain branches per chain.
However, the structural properties of internal vinylidene unsaturation and long chain branches are functions of the copolymer. Hafner teaches the same composition comprising polypropylene component (A) and ethylene-propylene copolymer (B) in the same amounts, with the same intrinsic viscosity, ethylene content, and MFR set forth in the rejection above. Moreover the product is made in a substantially similar process using a metallocene catalysts [abstract] in a multistage process [0160] comprising a gas phase for component (B) [0162] at temperatures in the range of 60-110°C [0163] wherein instant specification also uses a metallocene catalyst in a multistage polymerization process by using a gas phase reactor, and operating at a particular temperature [Instant specification [0001]] of at least 80°C [Instant specification 0085]. Therefore, the structural properties of more than 1 internal vinylidene unsaturation and more than 2 long chain branches per chain in the heterophasic polypropylene resin of Hafner will be the same structural properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claim(s) 8 and 20, Hafner teaches the heterophasic polypropylene resin of claim 5, having a MFR2 of 0.01 to 50 g/10min [0019].
Though the prior art range is not identical to the claimed range of 0.1 to 200g/10min and 0.1-100 g/10min, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim(s) 16, Hafner teaches the heterophasic polypropylene resin of claim 1, to make an article [0001].
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 5-8, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over US20100168267 to Dang et al. (as found on the IDS dated 12/5/2025).
Regarding Claims 1, 3-7, 17-19 Dang teaches an olefin polymer composition [0026] comprising 10 to 60 parts crystalline propylene homopolymer [0027] reading on (A); and about 10-80 parts by weight an ethylene-propylene elastomeric copolymer with an intrinsic viscosity of about 1.5 to about 4.0 dl/g [0029] wherein the elastomeric copolymer comprises 0.5% to about 10% diene [0029] with an ethylene content of less than 70 wt% [0029] reading on (B) with more than 1 internal vinylidene unsaturation per chain.
Though the prior art range is not identical to the claimed range (at least 2.5 of claim 1 and at least 3 dl/g of claim 4), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 2, Dang teaches the heterophasic polypropylene resin of claim 1, comprising a significant amount of long chain branches [0079] thereby reasonably reading on more than 2 long chain branches.
Regarding Claims 8 and 20, Dang teaches the heterophasic polypropylene resin of claim 5, with a melt flow rate of 0.1-100 g/10min [0037].
Regarding Claims 16, Dang teaches the heterophasic polypropylene resin of claim 1 wherein the composition is formed into a product [0014].
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 1-8 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-15 of copending Application No. 18/283,952 (hereinafter 952’). Although the claims at issue are not identical, they are not patentably distinct from each other because the intrinsic viscosity range of at least 3.5 dl/g and the LCB per copolymer range of at least 4 of application 952’ differ from instant application ranges of at least 2.5 dl/g and more than 2 long chain branches.
However, although the prior art range is not identical to the claimed range, it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764
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