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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 31, 2026 has been entered.
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.
Claim(s) 1, 2,and 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinagawa (EP 0297538, of record).
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.
Additionally, regarding claim 1 (and claims 2 and 4-6), Shinagawa teaches an inhibitor loading between 0.001 % and 1.0 % (Page 5, Lines 44-46). These loadings are seen to correspond with 10 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.
Lastly, with respect to claim 1 (and claim 7), the general disclosure of Shinagawa encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Shinagawa with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Shinagawa. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
With specific respect to claims 2 and 4-6, 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.
As to claim 8, Shinagawa teaches the claimed hindered phenol compound (Page 5, Lines 28 and 29).
5. 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, of record).
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).
6. Claim(s) 1, 2, and 4-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Onishi (JP 11-181187, of record).
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 preferred loading between 0.01 and 10 parts by weight of the resin for the phenolic antioxidant and a preferred loading between 0.01 and 10 parts by weight of the resin for the phosphorous based antioxidant. This corresponds with loadings of at least 100 ppm and as high as 100,000 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.
Lastly, regarding claim 1 (and claim 7), the general disclosure of Onishi encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Onishi with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Onishi. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
With specific respect to claims 2 and 4-6, 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.
As to claim 9, Onishi teaches the claimed phosphorous antioxidant (listed under section C for phosphorous based antioxidants).
7. 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).
8. Claim(s) 1, 2, and 4-7 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).
Also, regarding claim 1 (and claims 2 and 4-6), 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.
Lastly, with respect to claim 1 (and claim 7), the general disclosure of Ohm encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Ohm with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Ohm. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
With specific respect to claims 2 and 4-6, 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.
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).
9. 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.
10. 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.
Response to Arguments
11. Applicant's arguments filed August 31, 2026 have been fully considered but they are not persuasive.
Applicant contends that the Office Action’s statement that there is no picking and choosing does not account for the selections needed to arrive at amended claim 1. This statement singularly pertains to a composition formed with high density polyethylene, not the composition as a whole. Essentially, Shinagawa is seen to anticipate a composition comprising high density polyethylene.
As to the remainder of the compositional requirements, Shinagawa (Page 5, Lines 3+) is directed to compositions including at least one member selected from the group consisting of benzotriazole type compounds, oxalic acid aniline type compounds, salicyclic acid type compounds, cyanoacrylate type compounds, benzophenone type compounds, hindered amine type compounds, hindered phenol type compounds, phosphorous type compounds, sulfur type compounds, and hydrazine type compounds. It is emphasized that Shinagawa is expressly directed to a composition comprising an organic polymer and at least one discoloration inhibitor (members listed above). There is no picking and choosing for such a composition- such a composition is expressly taught by Shinagawa (for example, see claim 8 in Shinagawa). Given the limited number of expressly disclosed inhibitors, one of ordinary skill in the art would have found it obvious to form compositions with a single inhibitor or any combination of disclosed inhibitors. It is emphasized that Shinagawa specifically directs one having ordinary skill in the art to include multiple discoloration inhibitors and as noted above, Applicant has not provided a conclusive showing of unexpected results for the claimed combination of a hindered phenol compound and a phosphite compound. Looking at the Tables in Paragraphs 102 and 106, any realized benefits appear to simply be the result of including a molecular weight retention package (hindered phenol compound and a phosphite compound) as opposed to a result of a specific combination of materials that define the molecular weight retention package. As detailed above, Shinagawa expressly teaches a composition formed with multiple discoloration inhibitors, with a hindered phenol compound and a phosphite compound being disclosed among a small list of exemplary inhibitors. There are no comparative examples including a molecular weight retention package that differs form that required by the claimed invention and thus, Applicant has not provided evidence that the specific combination of materials is responsible for any realized benefits. The realized benefits, for example, might similarly be present in a composition with a single compound, as opposed to the claimed combination of compounds. Additionally, the realized benefits might similarly be present in a composition with any combination of discoloration inhibitor materials listed by Shinagawa. Thus, Applicant has not provided a conclusive showing of unexpected results for the claimed composition.
In terms of the loadings for respective compounds, the general disclosure of Shinagawa encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Shinagawa with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Shinagawa. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
Applicant further argues that the Office Action has not identified any measurement or disclosure in Shinagawa establishing intrinsic viscosity retention before and after gel extrusion and has not provided a factual or technical basis establishing that the presently claimed intrinsic viscosity retention necessarily results from the compositions relied upon in the rejection. The Examiner respectfully disagrees.
Shinagawa teaches a discoloration inhibitor loading between 0.001 % and 1.0 % (Page 5, Lines 44-46). These loadings are seen to correspond with 10 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 actually be gel extruded.
As to Onishi, the general disclosure of Onishi encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Onishi with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Onishi. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
Regarding Ohm, the general disclosure of Ohm encompasses compositions in which the hindered phenol compound and the phosphite are included at the same loadings (i), as well as compositions in which the hindered phenol compound loading is greater than (ii) or less than (iii) the phosphite loading. One of ordinary skill in the art would have found it obvious to form the composition of Ohm with (ii) absent a conclusive showing of unexpected results (specifically the ratios required by claims 1 and 7). In such an instance, a composition with (ii) is consistent with the general disclosure of Ohm. More particularly, the claims define a broad range of values having end points defined by the language “about” (broadens the scope of the end points). Also, the Tables in Paragraphs 102 and 106 do not provide a conclusive showing of unexpected results for the claimed ratios since the lone comparative example is devoid of a molecular weight retention package (comparative examples including a molecular weight retention package and having ratios outside that required by the claims would be necessary to establish a conclusive showing of unexpected results for a ratio as claimed).
In summary, each of the compositions taught by Shinagawa, Onishi, and Ohm includes a plurality of compounds that correspond with the compounds of the claimed molecular weight retention package. One of ordinary skill in the art would have found it obvious to select the claimed combination of compounds and the claimed loadings given the general disclosure of the above noted references and the absence of a conclusive showing of unexpected results. The tables in Applicant’s original disclosure do not include comparative examples (a) having a combination of compounds outside the scope of the claimed invention (would be necessary to establish a conclusive showing of unexpected results for the claimed combination of compounds) or (b) having a ratio between compounds outside the scope of the claimed invention (would be required to establish a criticality for the claimed ratio).
Conclusion
12. 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.
13. 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.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 September 1, 2026
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