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 amendment submitted on 6/9/2026 applicants amended independent claim 1 to recite that the vinyl ester containing polymer comprises ethylene and one or more branched vinyl ester monomers, and wherein vinyl ester containing copolymer is in domains dispersed through polypropylene based polymer.
Applicants further added new claims 32-35 directed to the properties of the composition of claim 1.
Claims 5, 8-10, 12-23 and 25 have been cancelled. Claims 1-4, 6, 7, 11-13, 24, 26-35 are pending.
Response to Arguments
In their arguments dated 6/9/2026 argued following:
Bassett is silent as to how the EVA is distributed in the polypropylene. Further Bassett does not teach or suggest any branched vinyl ester monomer.
Response:
Bassett discloses composition of propylene based resin and ethylene/vinyl ester copolymers (see Title). In a generic manner term vinyl esters include both branched and unbranched vinyl esters.
Hanford does not teach or suggest polypropylene polymers with ethylene vinyl ester copolymers, let along domains of ethylene-co-branched vinyl ester dispersed throughout polypropylene based polymer. Consequently Hanford was utilized to supplement the recitation of the specific vinyl esters of claims 6 and 7. This rejection will be restated better in order to reflect amendments to the claims.
With respect to the morphology of the polymer composition and forming domains often referred to as islands, such morphology is a results of having a polymer with differing properties. As evidenced in CA 2669441 to Swabey, where vinyl ester polymers will form domain within the polyolefin matrix. Swabey teaches that such non-homogeneous morphology may be obtained by thermal mixing process where temperature is high enough to melt one polymer but not the other. The polyolefin B which has lower molecular weight includes atactic polypropylene. Another analysis of EVA and polyolefin blends (see attached publication by Eureka by PatSnap) which is also an evidence of the claimed morphology teaches that polyolefin blends such as PP and PE with EVA in a blend will form a system that is fundamentally heterogeneous polymer alloys, where EVA is co-dispersed or co-continuous within polymer matric. EVA based polymers with low EVA content exhibits semi-crystalline behavior rendering it compatible with polyethylene, however at higher content of VA polymer becomes increasingly amorphous and elastomeric. The composition can be compatibilized by utilizing polyolefin based compatibilizers and even in their presence the resulting morphology will form domains. Without compatibilizers, PP/EVA blends are immiscible and show macroscopic phase separation. Alternative manner, is including in a compositions of block copolymers which are enabled by Bassett. These block copolymers provide a non-reactive compatibilization because they self-assemble at the PP-EVA interface due to their amphiphilic architecture.
Consequently as it is shown in the evidentiary references combination of propylene based polymer and ethylene-vinyl ester will inherently form heterophasic composition having vinyl ester domains due to their nature and properties flowing from the chemical structure.
Applicants further argues that Hanford does not teach polypropylene with ethylene and vinyl ester, let along teachings domains comprising ethylene and a branched vinyl ester.
Response:
With respect to teachings of Hanford, this reference was utilized to teach branched vinyl ester polymers. Consequently applicant’s fail to argue examiner’s grounds of rejection, which is using ethylene vinyl ester polymers of Hanford in the teachings of Bassett.
With respect to the formation of the domains, this response was provided in the first argument, and will not be repeated.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
CLAIMS
Claims 32-35 are dependent on instant claim 1 which recite following composition:
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174
662
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Claims 32-35 are directed to properties which include following
Claim 32, composition exhibits a percent increase in instrumented dart impact puncture compared to composition without vinyl ester copolymer
Claim 33, flexural secant at 1% of at least 3.5% relative to flexural secant at 1% compared to propylene polymer having no vinyl ester containing copolymer.
Claim 34, composition exhibits decrease in a Rockwell hardness of at least 47% compared to composition without vinyl ester copolymer.
Claim 35, a composition exhibits an increase in break strain of at least 64% compared to composition without vinyl ester copolymer.
SPECIFICATION
For the content of polypropylene based polymer:
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114
646
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For the content of ethylene vinyl ester polymer:
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120
642
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For the definition of polypropylene based polymer:
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514
678
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208
656
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In [0020] preferred rubber phase comprises polyethylene.
Additional form paragraphs that disclose all possible propylene based copolymers are [0022-0024].
For definition of vinyl ester:
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226
672
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206
694
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Specific monomers, which are both branched and unbranched are disclosed in [0034]:
Examples
Propylene based polymer is defined as ICP1 and ICP2 as heterophasic polypropylene copolymers [0085]:
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124
418
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Vinyl esters are DV001A and DV002B are defined as follows:
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162
586
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The composition of Examples included 10 wt.% vinyl ester, 10 wt.% of talc, B225 antioxidant balance of propylene copolymer as follows:
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242
582
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Based on description of the examples in [0088-0093] applicants varied content and type of propylene polymer and vinyl ester. Talc and antioxidant were utilized in all.
ANALYSIS
Claim 32-35 are rejected under 35 U.S.C. 112, first paragraph, because the specification,
while being enabling for any type of a very specific copolymer that includes 5% of VeoVA, 19% VA with balance being ethylene (DV001A) and 9% VeoVA, 23% of VA and balance being ethylene). Specification further enables a specific polypropylene co-polymers that applicants refer to as ICP1 and ICP2 having very specific melt flow rate and without indicating what the copolymers are . Specification does not reasonably provide enablement for any polypropylene-based resin utilized in any amounts, any ethylene-branched vinyl ester copolymer in any amount and any content of each monomer. In fact the recitation of Vinyl acetate (VA) was removed from in efforts of overcoming the rejection further broadening the scope of the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with this claim.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered while determining, whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It should be noted that while all Wands factors have to be considered, not all Wands factors need to be addressed in every case (MPEP 2164). The analysis is fact-dependent, and the decision to reject a claim based on scope of the claim relative to the scope of enablement must identify the claimed subject matter for which the specification is not enabling. Consistent with the MPEP 2164 all Wands factors have been considered.
All Wands factors have been considered.
Applying these factors to claims 32-35, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for the composition of claim 1 on which claims 32-35 depend and where composition of claim 1 as presented on 6/9/2026 can achieve properties of claims 32-25.
Thus, the only portions of the specification that describe the polymer recited in claim 1 are generic disclosures as depicted in the form paragraphs [0017-0024] and these paragraphs name any propylene polymer that basically exists, including propylene rubbers. Additionally, examples utilize a polypropylene with very specific melt flow rate, wherein the type of the polypropylene has not been disclosed.
The second issue is with the type of ethylene and branched vinyl ester copolymer. Instant claim 1 is open to any ethylene vinyl ester utilized where content of monomers which is ethylene and one more branched vinyl esters is unlimited and the number of branched vinyl ester monomers is unlimited by use of term “one or more”. Furthermore, use of term “comprising” allows presence of vinyl acetate and other vinyl esters that do not have to be branched.
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) under broadest reasonable interpretation, encompasses innumerable polymers that are based on polypropylene, all of which would have propylene monomer in common however using copolymers would result in propylene based polymers that are mutually structurally, chemically and physically different. This includes polypropylene based polymers having any molecular weight. It is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment having properties as required by instant claims 32-35 would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed. Furthermore even with polymers based on only propylene while having the same monomer, its tacticity and molecular weight will greatly affect the properties such as crystallinity.
Additionally, under broadest reasonable interpretation, the same factors the experimentation to obtain properties of instant claims 32-35 would be undue based on how many ethylene branched vinyl ester copolymers (including non-branched comonomers) are encompassed by instant claim 1.
Instant examples are not commensurate with the scope of the claims for several reasons: Examples include copolymers having specific ethylene and vinyl ester content resulting in specific MFI. In fact vinyl acetate content is higher than that of the claimed branched vinyl ester but most importantly vinyl acetate was removed from the claims by amendment in efforts to overcome the rejection of record. In a manner of speaking the required major component of the vinyl ester copolymer was removed from the scope of the claims.
Instant examples are also not commensurate with the scope of the claims because the scope of the propylene based resin is unlimited as well. Instant specification only utilized ICP1 and ICP2 which are elastomeric propylene copolymers having undisclosed comonomer undisclosed content of that monomer and specific melt flow index.
The examples are not commensurate with the scope of the claims, because vinyl ester includes vinyl acetate removed from the independent claims. Additionally composition utilized in the examples shows addition of talc and antioxidant. Compounds like talc will affect the physical properties of the composition is utilized by the applicants for a reason. Applicants utilize talc for its ability to improve dispersion of elastomers with high melt flow index and antioxidant prevents the degradation of the polymers. Composition of claim 1 while utilizing term “comprising” does not necessitate use of talc within the scope of the term “comprising”. Under broadest reasonable interpretation term “comprising” encompasses any component (polymers, fillers, additives and the like) suitable for any polyolefin blend.
When examiner responded to applicants’ arguments regarding the morphology of the composition, it is clear that this morphology is highly dependent on the content of monomers as well as the type of polymers utilized. To meet such property, one of ordinary skill in the art would have to consider many options for both components in order to meet the claimed vinyl ester domain.
In summary, the specification as originally filed including the examples, do not enable the composition of instant claim 1 that exhibits properties of instant claims 32-35. The properties also do not reflect the scope of the composition of claim 1 on which claims 32-35 depend.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6, 7, 11-13, 24, 26-35 are rejected under 35 U.S.C. 103 as being unpatentable over Bassett (US 3,361,852) in view of Hanford (US 2,473,996).
With respect to claim 1, Bassett discloses composition having excellent impact resistance and blush resistance (col. 1, l. 19-21). The composition of Bassett is utilized to make shaped articles such as films, extruded or molded items such as packaging and containers (col. 1, l. 30-45). The composition comprises polypropylene polymers and vinyl ester polymers. Term vinyl ester is viewed broadly encompassing both branched and unbranched vinyl esters. While preferred monomer is vinyl acetate other monomers are not excluded. Vinyl esters include but are not limited to: vinyl acetate, vinyl butyrate and vinyl propionate as specific examples (col. 3, l. 11-14) however, specification of Basset enables one of ordinary skill in the art to utilize vinyl ester moiety that contains 2-18 carbon atoms (col. 2, l. 1-3).
With respect to morphology of the polypropylene-based polymer, and evidence provided in the response to arguments forming domains is inherent with ethylene vinyl ester polymers even if compatibilizers are utilized. Formation of domains is further evident since in addition to polypropylene based polymer and ethylene-vinyl ester polymer, Bassett includes 2-25 wt.% of ethylene/propylene which as shown in the evidentiary reference (response to arguments section) would self-assemble at the interface between polypropylene and ethylene-vinyl ester copolymer.
The composition of Bassett is utilized to produce films, filaments, and shaped articles (col. 3, l. 3-8), with good impact resistance. One of ordinary skill in the art would at once envisage that to form articles with good impact resistance, the article would also require good mechanical properties such as tensile strength, resistance to environmental degradation (ex. Hydrolysis), good strain property, notch modulus and the like. All of these properties are shown in Bassett.
While Bassett discloses polymer composition comprising a range of the carbon atoms in the vinyl ester monomer, Basset is silent regarding branching.
However, Hanford discloses composition that are characterized by excellent tensile strength, high tear resistance and can be extruded.
Hanford discloses use of ethylene-vinyl esters, wherein esters are branched and still have the same content of carbon atoms as those of Bassett. Examples of vinyl esters include trimethyl acetate (Example 1), vinyl tertiary butyl acetate (Example 2), vinyl benzoate (Example 3) which is not branched, vinyl diethylacetate (Example 4), vinyl 2,4-pentanoate (Example 5).
Hanford states that his inventive polymers are characterized by high resistance to hydrolysis, excellent tensile strength, high tear strength and good cold drawing aptitude. The films have good tumbling durability and water vapor impermeability, particularly those with high ethylene content. Good strength and tensile properties is what required of the composition of Bassett.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the ethylene/vinyl ester compounds of Hanford in the disclosure of Bassett. Utilizing ethylene/vinyl ester of Hanford that can also be extruded and formed into a film, which is one of the specific items that Bassett makes from his composition. Incorporating such polymer in lieu of ethylene/vinyl ester of Bassett would still result in composition having high impact resistance because of presence of rubber but also add resistance to hydrolysis , tensile strength and tear resistance.
With respect to claim 2, polypropylene of Bassett can be a homopolymer (see examples, wherein no modification is taught or content of any other monomer).
With respect to claims 3 and 4, polypropylene composition, in order to improve impact resistance can include polyolefin rubber, such as ethylene/propylene rubber which would render the matrix component as heterophasic (see examples).
With respect to claim 6, Hanford claims in patented claim 9, a specific vinyl ester polymer, which is ethylene/vinyl trimethyl acetate that meets the requirement of instant formula (I) also known as vinyl pivalate.
With respect to claim 7, Hanford further teaches that the branched vinyl ester component can have 5-10 carbon atoms, wherein according to patented claim 1, the carboxyl group is attached to a carbon atom having at least 4 valences satisfied by the carbon atoms. Since carbon atom has to have 4 bonds, at least 2 would include all three remaining valences as carbons, or R4 can be hydrogen and R5 can be C7, which is encompassed by requirement of 5-10 carbon atoms in each ester component. Since the applicants did not indicate any requirements as to how the 7 carbons are distributed through the vinyl ester, one of ordinary skill in the art would seek already known in the art substituents.
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)
With respect to claim 11, vinyl ester content in the ethylene/vinyl ester copolymer of Hanford is 3.3% example 1 in col. 3, l. 61), 5.5 (example 2), 2.3% (example 3) and the like, all of which are within claimed range.
With respect to claims 12 and 13, claim 1 of Bassett discloses use of polypropylene in amount of 50-96% and content of ethylene/vinyl ester in amount of 2-25 parts all of which are encompassed by the claimed ranges.
With respect to claims 24, how ethylene/vinyl ester is polymerized is a product by process limitation. Having said that Hanford polymerizes the ethylene/vinyl ester polymer at temperatures above 50oC (col. 1, l. 49) and pressures between 800-1500 atm (col. 2, l. 1-30), which when converted to bar ranges between 810 to 1519 bar. It should also be noted that claim 24 is a product by process claim, wherein the patentable weight is given to the product and not process by which it is made.
With respect to claim 26, Bassett discloses that composition can include additives such as antioxidants and pigments as well as other additives if desired in normal and conventional amounts (col. 3, j. 1-3).
With respect to claim 27, Bassett teaches a method of making polypropylene composition, which comprises melt mixing polypropylene component with vinyl ester at 200oC (Control example A).
With respect to claim 28, the components are melt mixed because the melt temperatures in the process so that the composition can be injection molded into test pieces. Additionally the example specifically utilizes term “melt-mixing”
With respect to claim 29, components are solid at room temperatures and are in form of a finely ground mixture (col. 2, l. 62) which meets the definition of granule and powder.
With respect to claim 30, the article formed can be any shaped article such as containers, films and the like (col. 3, l. 3-8).
With respect to claim 31, the articles are formed by extrusion, molded, injection molding (see col. 2, l. 60 to col. 3, l. 5).
With respect to claims 32-35, while Bassett does not disclose following properties: increase is dart impact puncture, decrease in flexural modulus secant, decrease in Rockwell hardness and increase in a break at strain the composition of Bassett would meet these properties because, the properties are mutually exclusive to specific compounds. Under broadest reasonable interpretation, the composition of instant claim 1, comprises and polypropylene polymer in any amount, as well as any molecular weight, encompassing additional comonomers in any amount wo be mixed with ethylene-branched vinyl ester copolymer wherein the content of ethylene and vinyl ester monomer can be anything, this includes non-branched esters.
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 as claimed in the independent claim 1 on which claims 32-35 depend, and which composition is made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (see experimental section and tables starting [0096]).
Therefore, the claimed effects and physical properties, i.e. (tensile stress, dart impact puncture, tensile modulus, flexural modulus secant, break at strain, yield strain) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot 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. 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 as to how to obtain the claimed properties with only the claimed ingredients.
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
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 6, 2026
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