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 .
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.
Priority
3. This application is a 371 of PCT/EP2022/057846 03/24/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 21164551.0 03/24/2021 filed on 09/25/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed 12/29/23, 02/12/26, and 05/26/26 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 8-14, 16, 20 and species rac-anti-dimethylsilanediyl[2-methyl-4,8-bis(3',5'-dimethylphenyl)-1,5,6,7-tetrahydro-s-indacen-l-yl][2-methyl-4-(3',5'-dimethylphenyl)-5-methoxy-6-fert-butylinden-1-yl]zirconium dichloride without traverse in the reply filed on 05/26/26 is acknowledged.
Claims 1-14, 16-20 are pending. Claims 1-7, 17-19 are directed to a non-elected invention. Accordingly, claims 1-7, 17-19 are withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-election invention. Claims 8-14, 16, 20 are examined in this Office action.
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 8, 10-14, 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 16 of copending Application No. 18/283915. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed inventions and the copending claimed inventions are directed to an article comprising heterophasic polypropylene resin comprising a polypropylene matrix phase (A) and an ethylene-propylene copolymer phase (B) dispersed within said polypropylene matrix phase, wherein the ethylene-propylene copolymer phase (B) is an amorphous ethylene-propylene copolymer, wherein regarding instant claims 8, 10, the copending claim 1 discloses intrinsic viscosity (iv) measured in decalin at 135°C is at least 2.5 dl/g encompassing claimed amount of at least 3.5 or 4.0 dl/g, and more than 2 long chain branches per chain, encompassing claim 8 amount of at least 4 long chain branches per chain.
A prima facie case of obviousness exists for the heterophasic polypropylene, wherein copending claims discloses intrinsic viscosity (iv) measured in decalin at 135°C is at least 2.5 dl/g and more than 2 long chain branches per chain, encompassing the requirement of claims 8, 10. It is well-settled that where 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, 267 (CCPA 1976).
Regarding instant claim 11, copending claims do not expressly teach long chain branches constituted of ethylene and propylene and do not contain crystallisable propylene sequences.
However, the composition is obvious over copending claims. Further, the product is made in a substantially similar process using a metallocene catalysts in a multistage process comprising a gas phase for component (B) at temperatures in the range of 85-120°C (copending claims 9-13), 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 (specification, page 1, 13) of at least 80°C. Therefore, the structural properties, e.g., at least 4 long chain branches (LCB), wherein LCB constituted of ethylene and propylene and do not contain crystallisable propylene sequences would necessarily be the same as claimed. If there is any difference between the product of Hafner and the product of the instant claims, the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Instant dependent claims 12-14, 16 are same as copending claims 6-8, 16.
Claims 9, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 16 of copending Application No. 18/283915 as applied to above and further in view of Nenseth (US 2010/ 0280166).
Regarding claims 9, 20, copending claims does not disclose the amorphous ethylene propylene copolymer has an Mw of at least 300,000 Da or at least 350,000 Da.
However, Nenseth discloses an article comprising heterophasic polypropylene resin comprising a polypropylene matrix phase (A) and an ethylene-propylene copolymer phase (B) dispersed within said polypropylene matrix phase (para [0019]), wherein the ethylene-propylene copolymer phase (B) is an amorphous ethylene-propylene copolymer (para [0001], claim 1]), wherein amorphous ethylene-propylene copolymer has an Mw in the range of 350 to 500 kg/mol (para [0016], [0027]), fall into claimed range of at least 300,000 Da or at least 350,000 Da, wherein the heterophasic polypropylene resin shows excellent low temperature impact properties (para [0006).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify copending claims with amorphous ethylene-propylene copolymer has an Mw in the range of 350 to 500 kg/mol, as taught by Nenseth. The rationale to do so would have been motivation provided by of Nenseth that to do so would provide excellent low temperature impact properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 8-14, 16, 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
In claims 8, 9, 12-13, 20, the upper limit of the intrinsic viscosity, ethylene content, Mw, polypropylene matrix phase (A), and ethylene-propylene copolymer phase (B) are not defined. Applicants specification either provide several ranges or in some instances do not define upper limit, for example, Mw upper limit is missing in specification. Accordingly, the metes and bounds of the invention cannot be ascertained and the instant claims are rejected as failing to particularly point out and distinctly claim the invention.
Claims 9-14, 16, 20 depends from rejected claim 8.
Appropriate correction is required.
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.
The factual inquiries 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 8, 10-14, 16, are rejected under 35 U.S.C. 103 as being unpatentable over Hafner (US 2014/0206819).
Regarding claims 8, 10-11, 16, Hafner discloses an article comprising heterophasic polypropylene resin comprising a polypropylene matrix phase (A) and an ethylene-propylene copolymer phase (B) dispersed within said polypropylene matrix phase (para [0019]), wherein the ethylene-propylene copolymer phase (B) is an amorphous ethylene-propylene copolymer (para [0073]) with an intrinsic viscosity (iv) measured in decalin at 135°C in the range of 0.1 to 5 dl/g (para [0096]-[0097], [0288]), overlapping claim 8 range of at least 3.5 dl/g or claim 10 range of at least 4.0 dl/g, and an ethylene content of at least 20 wt% and less than 50 wt% (para [0034]), fall into claim 8 range of at least 15 wt% of the total weight to the ethylene-propylene copolymer, wherein the heterophasic polypropylene resin shows excellent low temperature impact properties (para [0001]).
A prima facie case of obviousness exists for the heterophasic polypropylene, wherein Hafner discloses intrinsic viscosity measured in decalin at 135°C in the range of 0.1 to 5 dl/g, overlapping the requirement of claims 8, 10. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Hafner does not expressly teaches at least 4 long chain branches (LCB), wherein LCB constituted of ethylene and propylene and do not contain crystallisable propylene sequences.
However, the composition is obvious over Hafner. Further, the product is made in a
substantially similar process using a metallocene catalysts in a multistage process comprising a gas phase for component (B) at temperatures in the range of 60-110°C (para [0113], [0251]-[0255]), 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 (specification, page 1, 13) of at least 80°C. Therefore, the structural properties, e.g., at least 4 long chain branches (LCB), wherein LCB constituted of ethylene and propylene and do not contain crystallisable propylene sequences would necessarily be the same as claimed. If there is any difference between the product of Hafner and the product of the instant claims, the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 12, Hafner discloses 50 wt% of polypropylene matrix (A) (para [0088]), fall into claimed range of at least 40 wt%.
Regarding claim 13, Hafner discloses 21 to 49 wt% of ethylene-propylene phase (B) (para [0090]), fall into claimed range of at least 10 wt%.
Regarding claim 14, Hafner discloses MRF2 value 13.7 g/10 min (table 4), fall into claimed range of 0.1 to 200 g/10 min.
Claims 9, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hafner as applied to claim 8 above, and further in view of Nenseth (US 2010/ 0280166).
Hafner includes the features of claim 8 above.
Regarding claims 9, 20, Hafner does not disclose the amorphous ethylene propylene copolymer has an Mw of at least 300,000 Da or at least 350,000 Da.
However, Nenseth discloses an article comprising heterophasic polypropylene resin comprising a polypropylene matrix phase (A) and an ethylene-propylene copolymer phase (B) dispersed within said polypropylene matrix phase (para [0019]), wherein the ethylene-propylene copolymer phase (B) is an amorphous ethylene-propylene copolymer (para [0001], claim 1]), wherein amorphous ethylene-propylene copolymer has an Mw in the range of 350 to 500 kg/mol (para [0016], [0027]), fall into claimed range of at least 300,000 Da or at least 350,000 Da, wherein the heterophasic polypropylene resin shows excellent low temperature impact properties (para [0006). Hafner and Nenseth are pertinent to the heterophasic polypropylene resin comprising a polypropylene matrix phase (A) and an ethylene-propylene copolymer phase (B) dispersed within said polypropylene matrix phase (para [0019]), wherein the ethylene-propylene copolymer phase (B) is an amorphous ethylene-propylene copolymer, wherein the heterophasic polypropylene resin shows excellent low temperature impact properties.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the Mw of amorphous ethylene-propylene copolymer disclosed by Hafner over the same range as Nenseth’s amorphous ethylene-propylene copolymer, given that both are being used in a similar context for the same purpose, e.g. excellent low temperature impact properties of the produced article.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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