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 with traverse of Group I, claims 1-13 in the reply filed on 4/24/2026 is acknowledged. The traversal is on the ground(s) that it is alleged that the Office has not met the burden of showing that the groups are patentably distinct. This is not found persuasive because the requirement for restriction of 2/25/2026 has demonstrated that the groups are patentably distinct.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/24/2026.
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 3 and 6 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. The limitation “base” in claim 3 is indefinite. The metes and bounds are unclear.
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.
Claim(s) 1, 2, 4, 5 and 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO 95/19391).
Regarding claims 1-2 and 13: Graham et al. teach a composition comprising high density polyethylene (page 9, lines 24-25), 300 ppm of I-3114 (a primary antioxidant that is an isocyanurate), 710 ppm of a I-168 (a secondary antioxidant that is a phosphite) (Example 1), and 380 ppm of zinc stearate (neutralizer) (Example 1). Graham et al. teach using a diphosphate interchangeably with a phosphite (Page 15, liens 3-9; Claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a diphosphite in place of the phosphite in Example 1 of Graham et al. Graham et al. teach using hydrotalcite (layered double hydroxide) interchangeably with zinc stearate (Claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a hydrotalcite in place of the zinc stearate in Example 1 of Graham et al.
The limitation “at least a portion of ethylene from HDPE is obtained from a renewable source of carbon” is a product by process limitation that specifies the source of the ethylene. The structures are so similar, a small amount of radioactive carbon-14 being the only difference, that the skilled artisan would expected them to have the same properties. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Regarding claims 4-5 and 7-8: Graham et al. teach the claimed primary antioxidant (Example 1), secondary antioxidant (page 15, lines 5-8), and hydrotalcite (claim 1), which comprises Mg and Al (page 16, lines 10-13).
Regarding claims 9-12: Since the composition is the same as claimed, it will possess the claimed properties. 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). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." 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.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO 95/19391) as applied to claim 1 above further in view of Avakian et al. (EP 0781805 A1).
Graham et al. teach adding a hindered amine stabilizer (claim 10).
Graham et al. fail to teach the claimed compound.
However, Avakian et al. teach that triisopropanol amine is a sterically hindered amine stabilizer known in the art, in an analogous composition (page 4, lines 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use triisopropanol amine as taught by Avakian et al. as the hindered amine stabilizer in Graham et al. to stabilize the composition.
Claim(s) 1, 2, 4, 5 and 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO 95/19391) in view of Nakanishi et al. (2022/0135778).
Regarding claims 1-2 and 13: Graham et al. teach a composition comprising high density polyethylene (page 9, lines 24-25), 300 ppm of I-3114 (a primary antioxidant that is an isocyanurate), 710 ppm of a I-168 (a secondary antioxidant that is a phosphite) (Example 1), and 380 ppm of zinc stearate (neutralizer) (Example 1). Graham et al. teach using a diphosphate interchangeably with a phosphite (Page 15, liens 3-9; Claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a diphosphite in place of the phosphite in Example 1 of Graham et al. Graham et al. teach using hydrotalcite (layered double hydroxide) interchangeably with zinc stearate (Claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a hydrotalcite in place of the zinc stearate in Example 1 of Graham et al.
Graham et al. fail to teach HDPE with a bio-based carbon content.
However, Nakanishi et al. teach using a bio-based HDPE, with 14C content so that even if it is incinerated, it does not increase the concentration of carbon dioxide in the atmosphere because of the carbon neutral property of the biomass [0020-0023, 0033, 0147].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the bio-based HDPE of Nakanishi et al. as the HDPE of Graham et al. so that even if it is incinerated, it does not increase the concentration of carbon dioxide in the atmosphere because of the carbon neutral property of the biomass.
Regarding claims 4-5 and 7-8: Graham et al. teach the claimed primary antioxidant (Example 1), secondary antioxidant (page 15, lines 5-8), and hydrotalcite (claim 1), which comprises Mg and Al (page 16, lines 10-13).
Regarding claims 9-12: Since the composition is the same as claimed, it will possess the claimed properties. 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). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." 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.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham et al. (WO 95/19391) and Nakanishi et al. (2022/0135778) as applied to claim 1 above further in view of Avakian et al. (EP 0781805 A1).
Graham et al. teach adding a hindered amine stabilizer (claim 10).
Graham et al. fail to teach the claimed compound.
However, Avakian et al. teach that triisopropanol amine is a sterically hindered amine stabilizer known in the art, in an analogous composition (page 4, lines 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use triisopropanol amine as taught by Avakian et al. as the hindered amine stabilizer in Graham et al. to stabilize the composition.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/946307. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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