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 without traverse of Group I, claims 1-11, in the reply filed on 05/19/26 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/19/26.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The Examiner notes the patent literature presented in [0007].
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claim 1 recites wherein the molecular weight is not less than 500,000.
Independent claim 1 further recites wherein the flexural modulus is not less than 950 MPa.
Dependent claim 2 additionally recites a tensile modulus of not less than 900 MPa.
Dependent claim 3 further recites a deflection temperature under load of not lower than 82oC.
Each of these recitations presents a range with an unbounded upper limit, and, therefore, encompasses values for each of a. through d. that are so inconceivably high that they cannot reasonably be possible in the present invention.
To make a point through hyperbole, the present application does not provide full enablement for a molecular weight of 1,000,000,000 or 10,000,000,000 (increasable ad nauseam), a flexural modulus of 100,000 or 1,000,000 MPa (increasable ad nauseum), a tensile modulus of 900,000 or 9,000,000 MPa (increasable ad nauseum) or a temperature of 820oC or 8200oC (increasable ad nauseum) even though these values are encompassed in the claimed ranges.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all values encompassed by the phrase of “greater than 10” and “greater than 1” within the scope of independent claim 1 can be used as claimed and whether claim 1 meets the test stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Upon applying this test to claim 1, undue experimentation would be required because:
(a) The breadth of the claims under the broadest reasonable interpretation encompasses values for molecular weight, flexural modulus, tensile modulus and deflection temperature such as those set forth in the exemplary values for each above that are indeed not less/lower than the values claimed therefor and thus are encompassed in the claimed ranges.
(b) The nature of the invention as disclosed by the specification does not provide enough information for one of ordinary skill in the art to provide a polypropylene-based resin (A) or (B) having values for each of a. through d. including those exemplary values set forth above, even though these values are encompassed in the claimed ranges therefor.
(c) The state of the prior art, at the time of filing does not include polypropylene-based resins (A) or (B) having values for molecular weight, flexural modulus, tensile modulus and deflection temperature which are infinite, even though such values are encompassed in the claimed range.
(d) The level of one of ordinary skill in the art would not recognize a value for each of a. through d. as set forth in the exemplary values for each provided above, even though these values are encompassed in the claimed range.
(e) The predictability in the art is lacking since the specification is silent to a disclosure of values for molecular weight, flexural modulus, tensile modulus and deflection temperature as provided in the examples above, even though these values are encompassed in the claimed ranges.
(f) The quantity of experimentation necessary is great since the claims read on an unbounded value for each of molecular weight, flexural modulus, tensile modulus and deflection temperature.
(g) There is no direction or guidance presented for a value of molecular weight, flexural modulus, tensile modulus and deflection temperature such as those provided for in the examples above, even though these values are encompassed in the claimed ranges therefor.
(h) There is an absence of working examples concerning molecular weights, flexural moduli, tensile moduli and deflection temperature as set forth in the examples above, even though these values are encompassed in the claimed range.
In light of the above factors, it is seen that undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claim 1, along with claims 2-11, dependent therefrom and, therefore, claims 1-11 are not enabled by the disclosure.
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 1-11 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.
Independent claim 1 recites wherein the molecular weight is not less than 500,000.
Independent claim 1 further recites wherein the flexural modulus is not less than 950 MPa.
Dependent claim 2 additionally recites a tensile modulus of not less than 900 MPa.
Dependent claim 3 further recites a deflection temperature under load of not lower than 82oC.
Each of the ranges presented by the above noted claim limitations present an unbounded upper limit, and, as such, it is unclear as to the extent of molecular weight/flexural modulus/tensile modulus/deflection temperature is intending to seek patent protection of; as such, the claims are rendered indefinite.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Pehlert et al. (WO 2020/231526)
With respect to independent claim 1, Pehlert et al. discloses polypropylene-based resin extruded expanded particles ([0007]; [0022]; [0080]; [0210]), wherein:
the polypropylene-based resin extruded expanded particles are obtained by extrusion expansion of a resin composition ([0219]; [0225]); and
the resin composition comprises:
a polypropylene-based resin (A) which has a branched structure ([0034]); and
a polypropylene-based resin (B) in which a branched structure is not introduced ([0092]), wherein,
the propylene-based resin (B) in which a branched structure is not introduced has a weight average molecular weight of not less than 500,000 ([00189]) and a flexural modulus ([0011]).
Pehlert et al. discloses wherein the overall resin composition can be flexible or stiff, as dependent upon the amount of linear polypropylene and LCB polypropylene therein; a greater concentration of LCB polypropylene relative to the concentration of linear polypropylene provides a stiff article having a high flexural modulus of 250-1500 MPa while a greater concentration of linear polypropylene relative to the LCB polypropylene provides a flexible article having a low flexural modulus of 50-250 MPa ([0011]). Although silent to the individual flexural modulus of the linear polypropylene, i.e., resin (B), it is the position of the Office that one having ordinary skill in the art would recognize the optimal flexural modulus to provide therefor in order to obtain resin composition having the desired/intended overall flexural modulus since it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed flexural modulus as critical, as exemplified by the extensive and unbounded range claimed therefor, and it is unclear if any unexpected results are achieved by providing for such. Since the polypropylene based resin (B) of Pehlert et al. is suggested as affecting the overall flexural modulus of the overall resin composition, it does not appear that such would be considered an unexpected result of providing for a flexural modulus of resin (B) as claimed and, as such, the determination of optimal flexural modulus would be achievable through routine experimentation in the art.
With respect to dependent claim 4, Pehlert et al. discloses wherein resin (A) has desirable features, including a melt strength of 10-100 cN ([0008]; [0071]). Although silent to the melt tension thereof of not less than 1.00 cN, it is the position of the Office that such would have been obvious to one having ordinary skill in the art in providing for desirable features therefor since
it has been held "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed melt tension as critical, as exemplified by the extensive range claimed therefor, and it is unclear if any unexpected results are achieved by providing for such. Since the polypropylene based resin (A) of Pehlert et al. is suggested as having desirable features, it does not appear that such would be considered an unexpected result of providing for a melt tension in the extensive range claimed, and, as such, the determination of optimal melt tension would be achievable through routine experimentation in the art.
With respect to dependent claim 5, Pehlert et al. fails to explicitly disclose the melting point of the polypropylene-based resin (A); the reference, does, however, suggest wherein resin (A) is mixed at a temperature below its melting point, such as from 50-100oC ([0038]), thereby suggesting a melting point above such. As such, it would have been obvious to one having ordinary skill in the art to provide for a melting point of resin (A) within the range instantly claimed as such temperatures are above the noted temperatures suggested by Pehlert et al. as below the melting point, and, thus one of ordinary skill in the art would recognize the instantly claimed melting points as a suitable melting point to provide for resin (A) since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
With respect to dependent claim 6, Pehlert et al. discloses wherein the polypropylene-based resin (A) has a melt flow rate MFR as claimed ([0076], wherein the MFR is measured as ASTM D1238 Condition L, i.e., a temperature of 230oC).
With respect to dependent claim 7, Pehlert et al. discloses wherein resin (B) is linear polypropylene. Although silent to the melting point thereof, the melting point of resin (B) would be expected to fall within the range as claimed since it has been held “Products of identical chemical composition cannot have mutually exclusive properties." 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. If there is any difference between the melting point of resin (B) of Pehlert et al. and that of the instant claims, the difference would have been minor and obvious. See MPEP 2112.01(1), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to dependent claim 8, Pehlert et al. discloses wherein the polypropylene-based resin (B) has a melt flow rate MFR as claimed ([0187], wherein the MFR is measured as ASTM D1238 Condition L, i.e., a temperature of 230oC).
With respect to dependent claim 9, Pehlert et al. discloses wherein the polypropylene-based resin (A) and the polypropylene-based resin (B) are contained in the resin composition at a weight ratio as claimed ([0008]).
Allowable Subject Matter
Claims 10 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The Examiner notes, however, Applicant must address the 35 USC 112(a) and (b) rejections, as set forth above, within independent claim 1 when/if presenting claims 10 and 11 in independent form.
Claims 2 and 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The Examiner notes, however, Applicant must also address the 35 USC 112(a) and (b) rejections, as set forth above, within independent claim 1 when/if presenting claims 2 and 3 in independent form.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2013/0123431 discloses a resin composition formed from a low molecular weight linear polypropylene and a high molecular weight polypropylene.
US 11965084 discloses polypropylene based resin foamed molded articles formed by mixing a branched polypropylene and a linear polypropylene.
WO 2011/046103 discloses a polypropylene resin composition comprising a branched polypropylene and a linear polypropylene.
US 8569390 discloses pre-expanded polypropylene particles formed from a resin mixture of polypropylene resin (A) and polypropylene resin (B).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
07/28/26
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