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
Claims 1 and 5 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 claim 1, line 5, given the plural “thermoplastic resins”, it is unclear whether the presence of an additional thermoplastic resin, which is distinct from the polypropylene, is required in the TPO.
In claim 1, it is unclear how the “additive” of the TPO distinguishes over either of the recited antioxidant or lubricant materials.
In claim 1, it is unclear how the polypropylene of the TPO distinguishes over the polypropylene block copolymer, polypropylene homopolymer or low-crystalline metallocene propylene-ethylene copolymer.
In claim 1, it is unclear how the elastomer or rubber of the TPO distinguishes over the polypropylene block copolymer which necessarily embraces elastomeric copolymers.
In claim 1, it is unclear how the polypropylene block copolymer, which necessarily embraces propylene-ethylene copolymers, distinguishes over the low-crystalline metallocene propylene-ethylene copolymer.
Claim Rejections - 35 USC § 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 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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20190072194 (Seong) in view of JP 2013-209494 A (Tao).
Seong discloses a composition for cable insulation comprising:
a base resin comprising (i) 75 to 95 wt.% of a polypropylene which includes polypropylene homopolymers and polypropylene block copolymers and (ii) 5 to 25 wt.% of a thermoplastic polyolefin (TPO);
0.2 to 1.5 pbw of a phenol-based antioxidant such as (tetrakis[methylene-3(3’,5’-di-tert-butyl-4’-hydroxyphenyl)propionate] methane);
0.2 to 1.5 pbw of a phosphorus-based such as antioxidant P-EPQ (tetrakis (2,4-di-tert-butylphenyl)-4,4-biphyenyldiphosphinite); and
0.5 to 1.5 pbw of a lubricant such as a polyethylene wax, wherein polyethylene waxes typically exhibit low crystallinity.
Illustratively, Seong’s Example 3 (Table 1) comprises:
75 pbw polypropylene;
26 pbw Basell Q100F TPO (the same TPO used in the present examples per Table 1);
0.5 pbw phenol-based antioxidant 1076;
0.5 phosphorus-based antioxidant P-EPQ which is tetrakis (2,4-di-tert-butylphenyl)-4,4-biphyenyldiphosphinite; and
1 pbw polyethylene wax, reasonably expected to exhibit low crystallinity.
As to claim 1, Seong differs from claim 1 in that the polypropylene component in the examples is not described as including a polypropylene homopolymer and a polypropylene block copolymer, the content of TPO is below the presently claimed 30 to 40 wt.% range, the antioxidant 1076 is not tetrakis[methylene-3(3’,5’-di-tert-butyl-4’-hydroxyphenyl)propionate] methane and the polyethylene wax is not described as being a (metallocene-catalyzed) ethylene propylene copolymer.
With respect to the first difference, given that Seong discloses polypropylene homopolymer and polypropylene block copolymer as functional polypropylene alternatives (page 5), it would have been obvious to one having ordinary skill in the art to formulate a composition per Seong comprising polypropylene homopolymer and polypropylene block copolymer as the polypropylene component for their expected additive effect and with the reasonable expectation of success. With respect to the second difference, while the presently claimed 30% to 40% TPO range does not overlap with Seong’s corresponding 5 to 25 wt.% range, a prima facie case of obviousness exists because the presently claimed lower limit of 30% and Seong’s upper limit of 25% are close enough that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 227 USPQ 773 (MPEP 2144.05 l). With respect to the third difference, it would have been within Seong’s inventive disclosure, and obvious to one having ordinary skill in the art, to use tetrakis[methylene-3(3’,5’-di-tert-butyl-4’-hydroxyphenyl)propionate] methane as a functional phenol-based antioxidant alternative to the antioxidant 1076 used in the examples. With respect to the fourth difference, by being silent relative to the monomeric makeup of the polyethylene wax, Seong implicitly suggests that any known polyethylene wax (inclusive of an ethylene-propylene copolymer as presently claimed) can be satisfactorily used. In this regard, Tao, directed to resin compositions comprising a polyolefin resin inclusive of polypropylene and polyethylene wax, discloses that polyethylene waxes are in general copolymers of ethylene and propylene which can be metallocene-catalyzed (e.g., abstract, [0035-0037]). Thus, it would have been within the purview of one having ordinary skill in the art to use a propylene-ethylene copolymer wax (e.g., metallocene-catalyzed) as Seong’s polyethylene wax with the reasonable expectation of success. In general “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 227 USPQ 964.
As to claim 5, Seong discloses cables (wires) covered with the insulating composition described hereinabove (e.g., claim 7).
Response to Arguments
Applicant's arguments and amendments filed January 26, 2026 have been fully considered but they are not persuasive in overcoming the 35 USC 103 rejection over KR 20190072194 (Seong),
Applicants argue that Seong teaches that compositions comprising above 25 wt.% TPO, as evidenced by comparative example 5 comprising 35 wt.% TPO, exhibit inferior properties, e.g., flexural modulus and volume resistivity. However, a prima facie case of obviousness exists because the presently claimed lower limit of 30% and Seong’s upper limit of 25% are close enough that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 227 USPQ 773 (MPEP 2144.05 l). Notably, Seong’s comparative example 5 comprises 35 wt.% TPO, not 30 wt.% TPO.
Applicants argue that there is no logical motivation to replace the wax in Seong with the metallocene-catalyzed wax of Tao. Seong by being silent relative to the monomeric makeup of the polyethylene wax, implicitly suggests that any known polyethylene wax (inclusive of that presently claimed) can be satisfactorily used. In this regard, Tao discloses that polyethylene waxes embrace metallocene-derived ethylene-propylene copolymers. It is noted that the presently claimed propylene-ethylene copolymer lubricant is in a product-by-process format. In general “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 227 USPQ 964.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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