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 § 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.
3. 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.
Lastly, 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.
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.
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).
4. 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).
5. 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 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 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.
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).
6. 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).
7. 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).
Lastly, 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.
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.
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).
8. 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.
9. 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
10. Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant argues that the probability of selecting high density polyethylene from the disclosure of Shinagawa is only 2.5% and when the selection of high density polyethylene is considered with the selection of the presently claimed phosphite range, the combined probability is approximately 1.64%. Applicant further points to Ex parte Zerbe to suggest that the broad disclosures of the cited references do not render obvious the presently claimed range of amounts of the phosphite compound. The Examiner respectfully disagrees.
It is initially noted that Shinagawa expressly teaches a polymer composition comprising high density polyethylene. The fact that Shinagawa suggests the use of additional organic polymer materials fails to render a composition including high density polyethylene non-obvious. Thus, contrary to Applicant’s statement regarding the probability of selecting high density polyethylene, Shinagawa is seen to anticipate a composition comprising high density polyethylene. There is no picking and choosing in regards to a composition including an expressly disclosed organic polymer material, such as high density polyethylene. Again, Shinagawa is seen to expressly disclose a composition comprising high density polyethylene, in as much as Shinagawa is seen to expressly disclose a composition comprising, for example, ionomer resins, EEA resins, or EVA resins. Shinagawa is expressly directed to a plurality of compositions having any of the disclosed organic polymer materials.
Given such an expressly disclosed composition (one including high density polyethylene), it is agreed that essentially 65% of the disclosed phosphite compound loadings satisfy the claimed invention (disclosed range of Shinagawa fully encompasses the claimed range). Thus, a fair reading of Shinagawa suggests that discoloration can be avoided (and high transparency realized) when using phosphite loadings (discoloration inhibitor) in accordance to the claimed invention. One of ordinary skill in the art would have found it obvious to use a phosphite loading that falls within the extremely broad range of the claimed invention absent a conclusive showing of unexpected results (lack of comparative examples in which phosphite loadings was outside the claimed range).
In regards to Ex part Zerbe, it is noted that this decision involves the selection of a specific additive from a secondary consideration and as such, is completely different from the basis of the pending rejection. As detailed above, Shinagawa is seen to expressly teach a composition including high density polyethylene and at least one discoloration inhibitor, such as a phosphite compound. It is emphasized that the pending rejection does not involve a secondary consideration but rather solely relies on the teachings of Shinagawa. This position is similarly applicable to the arguments regarding Onishi and Ohm (both rejections similarly rely on the teachings of a single reference as opposed to a primary reference and secondary considerations).
Conclusion
11. 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.
12. 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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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.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 June 5, 2026
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