DETAILED ACTION
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 .
This Office action is in response to the amendment filed 8/24/2026. Claims 1 and 6-7 are amended; and claims 3 and 9 are cancelled. Accordingly, claims 1-2, 4-8 and 10-11 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
It is noted that claim 6 is amended and proper claim identifier should be “currently amended”, see MPEP § 714.
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 4-5 and 10-11 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. Claims 5 and 10 are dependent on cancelled claims 3 and 9, respectively. Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. However, for examination purposes, they are interpreted as dependent on claims 1 and 6, respectively, in light of the incorporation of limitations from claims 3 and 9 into claims 1 and 6, respectively.
Claims 5 and 11 are subsumed by this rejection because of the dependence either directly or indirectly on claims 4 and 10, respectively.
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 1-2, 4-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (US 2023/0242750 A1).
Regarding claims 1 and 6, Wang et al disclose a polypropylene composition comprising propylene random copolymer (i.e., reads on the random copolymer of propylene in present claims 1 and 6) having a melt flow rate of 15 to 40 g/10 min (abstract). Preferably, the propylene random copolymer is an ethylene propylene random copolymer (paragraph 0024). In a preferred embodiment, ethylene is present in amounts of 2.0 to 5.5 wt% (paragraph 0025) which overlaps with the ethylene content in present claims 1 and 6. The propylene random copolymer has a hexane extractable content of less than 2.0 wt% (paragraph 0023) which reads on hexane extractable portion in present claims 1 and 6. The propylene random copolymer has a xylene cold soluble fraction preferably of from 0.5 to 7.5 wt% (paragraph 0028) which overlaps with the xylene soluble fraction in present claims 1 and 6. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Wang et al differ with respect to melt flow rate, and process of making copolymer.
However, regarding melt flow rate, case law holds that term "about" permits some tolerance, wherein about 10% was held to be anticipated by a teaching of a content not to exceed about 8% (i.e. the prior art amount differs from claimed amount by 20%). See In re Ayers, 154 F 2d 182, 69 USPQ 109 (CCPA 1946). Additionally, it is the examiner’s position that instantly claimed melt flow rate or about 12 g/10 min and that taught by Wang et al ( i.e., 15 g/10 min), after permitting for tolerance in light of the recitation of term “about”, are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties
Regarding process of making polymer, claims are written in a product-by-process form. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claims 2 and 7-8, Wang et al teach that propylene random copolymer has a flexural modulus in the range of 500 to 1000 MPa (paragraph 0029) which is equivalent to 72 Kpsi to about 145 Kpsi (i.e., overlaps with flexural modulus in present claims 2 and 7-8). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claims 4-5 and 10-11, claims are written in a product-by-process form. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Response to Arguments
The objection, and rejections under 35 U.S.C. 103 as set forth in paragraphs 3 and 8, of Office action mailed 3/24/2026, are withdrawn in view of the amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 10 below).
Applicant's arguments filed 8/24/2026 have been fully considered but they are not persuasive. Specifically, general thrust of applicant argument is that copolymers produced using a metallocene catalyst produce a different microstructure compared to those prepared by using Ziegler-Natta catalysts. The most significant difference is the presence of regio-defects in metallocene made polypropylenes which is not the case for polypropylenes made by Ziegler-Natta catalysts.
In response, polypropylenes made by metallocene (i.e., Wang et al) and Ziegler-Natta catalysts (i.e., present claims) exhibit similar properties (such as melt flow rate, hexane extractable portion and xylene soluble portion in overlapping ranges). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Conclusion
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
