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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Considering Claim 4: Claim 4 contains a broader range for the melt index of the functionalized ethylene-based polymer than recited in claim 1, from which claim 4 depends.
Considering Claim 7: Claim 7 contains a broader range for the melt index of the functionalized ethylene-based polymer than recited in claim 1, from which claim 4 depends. Claim 7 also recites a C3-C8 alpha-olefin, while the claim 1 recites a C4-C8 alpha-olefin.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 6, 9, 15-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Datta et al. (US Pat. 4,999,403) in view of Jerabek et al. (US 2020/0277479).
Considering Claims 1, 5, and 8: Datta et al. teaches a composition comprising 180 parts/72 weight percent of a non-functional polypropylene, 45 parts/18 weight percent of a non-functional polyethylene 20 parts/8 weight percent of a maleated polypropylene, 5 parts/2 weight percent of an amine functionalized polyethylene (Table III, Example 10). Datta et al. teaches the non-functionalized ethylene based polymer as being an ethylene/C3-C16 alpha-olein polymer, with 1-butene, 1-pentene, 1-hexene, and 1-octene being specifically named (6:61-68). Datta et al. teaches the amount of maleated polypropylene as being 2 to 10 weight percent (22:40-53).
Datta et al. does not teach the density and melt flow rate of the non-functionalized ethylene polymer. However, Jerabek et al. teaches an ethylene/alpha olefin polymer having a density of 0.845 to 0.890 (¶0250) and a melt flow rate of 25 to 50 g/10 min (¶0251) for mixing with a polypropylene composition. It would have been obvious to a person of ordinary skill in the art to have used an ethylene polymer with the melt flow rate and density of Jerabek et al. in the composition of Datta et al., and the motivation to do so would have been, as Jerabek et al. suggests, to provide a balance of stiffness and impact behavior (¶0356).
Considering Claim 6: Datta et al. teaches the maleated polypropylene as having a melt flow rate of 9.2 g/10 min and a maleic anhydride content of 0.22 weight percent (Example 10).
Considering Claim 9: Datta et al. teaches the non-functionalized ethylene based polymer as being an ethylene/octene polymer (6:61-68).
Datta et al. does not teach the density and melt flow rate of the non-functionalized ethylene polymer. However, Jerabek et al. teaches an ethylene/alpha olefin polymer having a density of 0.845 to 0.890 (¶0250) and a melt flow rate of 25 to 50 g/10 min (¶0251) for mixing with a polypropylene composition. It would have been obvious to a person of ordinary skill in the art to have used an ethylene polymer with the melt flow rate and density of Jerabek et al. in the composition of Datta et al., and the motivation to do so would have been, as Jerabek et al. suggests, to provide a balance of stiffness and impact behavior (¶0356).
Considering Claim 15: Datta et al. teaches an example where the melt flow rate of the maleated polypropylene is 110 g/10 min (Example 2).
Considering Claims 16-19: 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 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 20: Datta et al. teaches the composition as comprising a filler (23:21-30).
Considering Claim 23: Datta et al. teaches the functionalized and non-functionalized polyethylene polymer as being the same base polymer (Examples).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Datta et al. (US Pat. 4,999,403) as applied to claim 8 above, and further in view of Sugita et al. (US Pat. 5,552,480).
Considering Claim 3: Datta et al. teaches the composition of claim 1 as shown above. Datta et al. teaches the maleated polypropylene as having a melt flow rate of 9.2 g/10 min and a maleic anhydride content of 0.22 weight percent (Example 10).
Datta et al. does not teach the functionalized polyethylene as having an amine group and the polypropylene having a maleic anhydride group. However, Sugita et al. teaches that either poly propylene maleic anhydride copolymers or ethylene propylene maleic anhydride polymers can be modified by reaction with N-ethylethylenediamine (12:14-24; 13:48-54). Datta et al. and Sugita et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene compositions. As Sugita et al. teaches that both the propylene and ethylene/propylene copolymers can be modified with the amine functionality, it would have been obvious to a person of ordinary skill in the art to modify the maleic anhydride of the polypropylene to add the amine group, rather than the ethylene/propylene polymer, and the motivation to do so would have been, the final reacted products would be functionally equivalent.
Considering Claim 4: Datta et al. teaches the composition of claim 1 as shown above. Datta et al. teaches the maleated polypropylene as having a melt flow rate of 9.2 g/10 min and a maleic anhydride content of 0.22 weight percent (Example 10).
Datta et al. does not teach the functionalized polyethylene as having an amine group and the polypropylene having a maleic anhydride group. However, Sugita et al. teaches that either poly propylene maleic anhydride copolymers or ethylene propylene maleic anhydride polymers can be modified by reaction with N-ethylethylenediamine (12:14-24; 13:48-54). Datta et al. and Sugita et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene compositions. As Sugita et al. teaches that both the propylene and ethylene/propylene copolymers can be modified with the amine functionality, it would have been obvious to a person of ordinary skill in the art to modify the maleic anhydride of the polypropylene to add the amine group, rather than the ethylene/propylene polymer, and the motivation to do so would have been, the final reacted products would be functionally equivalent.
Datta et al. does not teach the density and melt flow rate of the non-functionalized ethylene polymer. However, Jerabek et al. teaches an ethylene/alpha olefin polymer having a density of 0.845 to 0.890 (¶0250) and a melt flow rate of 25 to 50 g/10 min (¶0251) for mixing with a polypropylene composition. It would have been obvious to a person of ordinary skill in the art to have used an ethylene polymer with the melt flow rate and density of Jerabek et al. in the composition of Datta et al., and the motivation to do so would have been, as Jerabek et al. suggests, to provide a balance of stiffness and impact behavior (¶0356).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Datta et al. (US Pat. 4,999,403) as applied to claim 5 above, and further in view of Bawiskar et al. (WO 2018/071507).
Considering Claim 7: Datta et al. teaches the composition of claim 1 as shown above. Datta et al. teaches the amine functional polyethylene as being an ethylene/propylene copolymer.
Datta et al. is silent towards the properties of the amine functional polyethylene copolymer. However, Bawiskar et al. teaches a functionalized polyethylene/alpha olefin copolymer (6:32-7:2) having a melt flow rate of 300 to 1500 g/10 min (12:31-13:10), an amine that is preferably N-ethylethylenediamine (19:1-7) and a density of less than 0.900 g/mol (6:12-15). Datta et al. and Bawiskar et al. are analogous art as they are concerned with the same field of endeavor, namely functionalized polyethylene. It would have been obvious to a person of ordinary skill in the art to have used the functionalized ethylene of Bawiskar et al. in the composition of Datta et al., and the motivation to do so would have been, as Bawiskar et al. suggests, it can be produced at a high production rate (1:28-2:3).
Claims 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Datta et al. (US Pat. 4,999,403) in view of Jerabek et al. (US 2020/0277479) as applied to claim 8 above, and further in view of Sugita et al. (US Pat. 5,552,480).
Considering Claim 10: Datta et al. teaches the composition of claim 1 as shown above. Datta et al. teaches the non-functionalized ethylene based polymer as being an ethylene/alpha-olefin polymer (Example 1).
Datta et al. does not teach the density and melt flow rate of the non-functionalized ethylene polymer. However, Jerabek et al. teaches an ethylene/alpha olefin polymer having a density of 0.845 to 0.890 (¶0250) and a melt flow rate of 25 to 50 g/10 min (¶0251) for mixing with a polypropylene composition. It would have been obvious to a person of ordinary skill in the art to have used an ethylene polymer with the melt flow rate and density of Jerabek et al. in the composition of Datta et al., and the motivation to do so would have been, as Jerabek et al. suggests, to provide a balance of stiffness and impact behavior (¶0356).
Datta et al. does not teach the functionalized polyethylene as having an amine group and the polypropylene having a maleic anhydride group. However, Sugita et al. teaches that either poly propylene maleic anhydride copolymers or ethylene propylene maleic anhydride polymers can be modified by reaction with N-ethylethylenediamine (12:14-24; 13:48-54). Datta et al. and Sugita et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene compositions. As Sugita et al. teaches that both the propylene and ethylene/propylene copolymers can be modified with the amine functionality, it would have been obvious to a person of ordinary skill in the art to modify the maleic anhydride of the polypropylene to add the amine group, rather than the ethylene/propylene polymer, and the motivation to do so would have been, the final reacted products would be functionally equivalent.
Considering Claims 11-14: 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 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 September 21, 2026 have been fully considered but they are not persuasive, because:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
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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.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767
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