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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a polymer composition comprising high density polyethylene, a plasticizer, and a molecular weight retention package including a hindered phenolic compound and a phosphite compound, classified in class 524, subclass 317.
II. Claims 14-18, drawn to an ion separator comprising a porous membrane containing one or more high density polyethylene polymers in an amount greater than about 70% by weight, classified in class 429, subclass 144.
III. Claim 19, drawn to a process for producing a porous membrane including forming a polymer composition into a gel-like composition, extruding said composition to form a membrane, extracting a plasticizer, and biaxially stretching said membrane, classified in class 264, subclass 210.2.
IV. Claim 20, drawn to an ion separator comprising a porous polymer membrane having a specific thickness and porosity, classified in class 429, subclass 144.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination excludes the presence a plasticizer. The subcombination has separate utility such as in the manufacture of fibers.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, the product as claimed can be used in a materially different process, for example one involving the manufacture of fibers.
Inventions I and IV are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination fails to require the presence of a plasticizer. The subcombination has separate utility such as in the manufacture of fibers.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different process, for example one in which a high density polyethylene loading is less than 70%.
Inventions II and IV are related as independent inventions, each having a unique and separate means for establishing patentability. Invention II requires a plasticizer and a high density polyethylene loading of greater than 70% and such limitations are not required by Invention IV. Invention IV, on the other hand, requires a membrane thickness and porosity and such limitations are not required by Invention II. Thus, restriction between the inventions is appropriate.
Inventions III and IV are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different process, for example one devoid of a plasticizer extraction step.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their recognized divergent subject matter.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Tim Cassidy on January 29, 2026 a provisional election was made without traverse to prosecute the invention of a polymer composition, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinagawa (EP 0297538).
Shinagawa is directed to a polymer composition comprising high density polyethylene (Page 4, Lines 29-30), a plasticizer (Page 4, Lines 40-44), and at least one discoloration inhibitor (Page 4, Lines 58+). More particularly, Shinagawa teaches a plurality of inhibitors, including hindered phenol type compounds and phosphorous type compounds (phosphites) (Page 5, Lines 3-7). One of ordinary skill in the art would have found it obvious to include such a combination of compounds (corresponds with claimed retention package) given the general disclosure of Shinagawa to includes at least one inhibitor.
Lastly, regarding claim 1 (and claims 2-6), Shinagawa teaches an inhibitor loading between 0.001 % and 1.0 % (Page 5, Lines 44-46). These loadings are seen to correspond with 100 ppm-10,000 ppm and such is consistent with the loadings identified by Applicant (Paragraph 9 of originally filed specification) as contributing to the inventive concept. As such, it reasons that the loadings taught by Shinagawa are “sufficient” to achieve a viscosity retention in accordance to the claimed invention. It is emphasized that the claims as currently drafted are directed to a polymer composition and as such, it is not required for said composition to be gel extruded. With specific respect to claims 2-6, the claimed loadings are consistent with the disclosure of Shinagawa as detailed above. One of ordinary skill in the art would have found it obvious to use the claimed loadings in the composition of Shinagawa absent a conclusive showing of unexpected results.
With respect to claim 7, at a minimum, a fair reading of Shinagawa suggests equal loadings for respective inhibitors (hindered phenol compound and phosphorous type compound).
As to claim 8, Shinagawa teaches the claimed hindered phenol compound (Page 5, Lines 28 and 29).
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinagawa as applied in claim 1 above and further in view of Ohm (WO 2019/180657).
As detailed above, Shinagawa is directed to a composition comprising high density polyethylene and a plasticizer. In terms of said polyethylene, the claimed range of molecular weights are consistent with those conventionally associated with polyethylene, as shown for example by Ohm (Paragraphs 23-25 and 42). One of ordinary skill in the art would have found it obvious to use a molecular weight in accordance to the claimed invention absent a conclusive showing of unexpected results.
Regarding claims 11 and 12, paraffin oils, for example, are well recognized as being a conventional plasticizer in polyethylene compositions, as shown for example by Ohm (Paragraph 47).
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onishi (JP 11-181187).
Onishi is directed to a polymer composition comprising high density polyethylene, a plasticizer (other components e), a phosphorous based antioxidant (component c- corresponds with claimed phosphite compound), and a phenolic antioxidant (component d- corresponds with claimed phenolic compound).
In terms of the antioxidant loadings, Onishi teaches a loading between 0.01 and 100 parts by weight of the resin for the phenolic antioxidant and a loading between 0.01 and 3 parts by weight of the resin for the phosphorous based antioxidant. This corresponds with loadings of at least 100 ppm and as high as 1,000,000 ppm. A large number of loadings are seen to correspond with a “sufficient amount” to achieve the claimed viscosity retention. One of ordinary skill in the art would have found it obvious to select loadings that would arrive at the claimed viscosity retention given the general disclosure of Onishi.
With specific respect to claims 2-6, the claimed loadings are consistent with the disclosure of Onishi as detailed above. One of ordinary skill in the art would have found it obvious to use the claimed loadings in the composition of Onishi absent a conclusive showing of unexpected results.
With respect to claim 7, at a minimum, a fair reading of Onishi suggests equal loadings for the phenol compound and phosphorous type compound. For example, both antioxidants are described as having a minimum loading of 0.01 phr.
As to claim 9, Onishi teaches the claimed phosphorous antioxidant (listed under section C for phosphorous based antioxidants).
14. Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onishi as applied in claim 1 above and further in view of Ohm.
As detailed above, Onishi is directed to a composition comprising high density polyethylene and a plasticizer. In terms of said polyethylene, the claimed range of molecular weights are consistent with those conventionally associated with polyethylene, as shown for example by Ohm (Paragraphs 23-25 and 42). One of ordinary skill in the art would have found it obvious to use a molecular weight in accordance to the claimed invention absent a conclusive showing of unexpected results.
Regarding claims 11 and 12, paraffin oils, for example, are well recognized as being a conventional plasticizer in polyethylene compositions, as shown for example by Ohm (Paragraph 47).
Claim(s) 1-7 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohm.
Ohm is directed to a composition comprising high density polyethylene, a plasticizer, a phosphite, and a phenolic antioxidant (Paragraphs 9 and 56).
Lastly, regarding claim 1 (and claims 2-6), Ohm teaches a loading between 0.05% and 20% (Page 5, Lines 44-46). These loadings are seen to correspond with 500 ppm-200,000 ppm and such is consistent with the loadings identified by Applicant (Paragraph 9 of originally filed specification) as contributing to the inventive concept. As such, it reasons that the loadings taught by Ohm are “sufficient” to achieve a viscosity retention in accordance to the claimed invention. It is emphasized that the claims as currently drafted are directed to a polymer composition and as such, it is not required for said composition to be gel extruded. With specific respect to claims 2-6, the claimed loadings are consistent with the disclosure of Ohm as detailed above. One of ordinary skill in the art would have found it obvious to use the claimed loadings in the composition of Ohm absent a conclusive showing of unexpected results.
With respect to claim 7, at a minimum, a fair reading of Ohm suggests equal loadings for the hindered phenol compound and phosphorous type compound (phosphite).
As to claim 10, Ohm teaches the claimed range of molecular weights (Paragraphs 23-25 and 42).
Regarding claims 11 and 12, Ohm teaches the use of paraffin oils (Paragraph 47).
With respect to claim 13, the composition of Ohm includes loadings in accordance to the claimed invention (Paragraphs 45 and 48).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohm as applied in claim 1 above and further in view of Shinagawa.
As detailed above, Ohm is directed to a composition comprising polyethylene and a phosphite compound. While Ohm is silent with respect to specific phosphite compounds, the claimed compound is consistent with that which is commonly used in similar polyethylene based compositions, as shown for example by Shinagawa (Page 5, Lines 28 and 29). One of ordinary skill in the art would have found it obvious to include such a conventional phosphite compound in the composition of Ohm absent a conclusive showing of unexpected results.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohm as applied in claim 1 above and further in view of Onishi.
As detailed above, Ohm is directed to a composition comprising polyethylene and a hindered phenolic antioxidant. While Ohm is silent with respect to specific phenolic antioxidant, the claimed compound is consistent with that which is commonly used in similar polyethylene based compositions, as shown for example by Onishi (listed under section C for phosphorous based antioxidants). One of ordinary skill in the art would have found it obvious to include such a conventional phenolic compound in the composition of Ohm absent a conclusive showing of unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 January 29, 2026