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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/15/2024 was filed after the mailing date of the application data sheet on 11/21/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1, 13, 16, 17, and 23 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.
The term “about” in claims 1, 13, and 17 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 16 and 23 recite the broad recitation “less than 950 parts per million (ppm) of the gamma nucleator”, and the claim also recites “less than 500 ppm of the gamma nucleator” and “less than 250 ppm of the gamma nucleator” which are narrower statements of the range/limitation. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-23 are rejected under 35 U.S.C. 103 as being unpatentable over McLeod et al (US 20240101805 A1) in view of Alvarez (US 20200270435 A1).
Regarding claims 1, 2, 6-10, 13-18, 22, and 23, McLeod discloses a polymeric composition and article of manufacture comprising said polymeric composition (Abstract), said polymeric composition comprising: at least 98 wt% of a random ethylene polypropylene copolymer [0007], comprised of 4 to 12 wt% of ethylene units and 88 to 95 wt% of polypropylene units [0010]; 0.01 to 1 wt% of an acid neutralizer [0007]; and optionally 100 ppm or less of a nucleating agent [0061], having a haze value of less than 40% at a thickness of about 40 mils as measured by ASTM D-1003 [0006]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
McLeod does not particularly disclose that their polymeric composition has a crystallization temperature of more than 100°C as measured by Differential Scanning Calorimetry. 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. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the alternative, assuming that the claimed crystallization temperature is not inherent in McLeod’s composition, one of ordinary skill in the art would at least expect the same properties to be present based on the similarities discussed above. McLeod teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, including crystallization temperature would naturally arise and be achieved by a composition with all the claimed ingredients. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112 and 2112.01.
McLeod also discloses 100 ppm or less of a nucleating agent [0061] but does not particularly disclose a gamma nucleating agent.
In the same field of endeavor, Alvarez discloses a method for making heterophasic propylene and ethylene polymer compositions utilizing a nucleating agent, with disodium bicyclo[2.2.1]heptane-2,3-dicarboxylate as a preferred nucleating agent [0058], which is a gamma nucleating agent. "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989). See MPEP 2131.02.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the polymeric composition taught by McLeod with the gamma nucleators taught by Alvarez with the expected result of reduced lot-to-lot crystallization temperature variation.
Regarding claim 3, McLeod discloses that their polymeric composition may contain less than 0.1 wt% of a random-heterophasic polypropylene or ethylene-propylene copolymer [0020] but neither discloses nor teaches away higher concentrations.
In the same field of endeavor, Alvarez discloses a method for making heterophasic propylene and ethylene polymer compositions with nucleating agents (Abstract) which may be random copolymers [0036].
As set forth in the above rejection for claim 1, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to combine the polymeric composition taught by McLeod with the random-heterophasic copolymers disclosed by Alvarez.
Regarding claims 4, 5, and 21, the combination of McLeod and Alvarez discloses all limitations of claims 1 and 17. McLeod further discloses that said random ethylene polypropylene copolymer can be prepared using metallocene or Ziegler-Natta catalysts [0048].
Regarding claim 11, the combination of McLeod and Alvarez discloses all limitations of claim 1. McLeod further discloses that their 0.01 to 1 wt% of an acid neutralizer [0007] may be a metal stearate, such as calcium stearate, zinc stearate, potassium stearate, sodium stearate, lithium stearate, aluminum stearate, magnesium stearate, manganese stearate, cobalt stearate, cerium stearate, copper stearate, ferric stearate, nickel stearate, or any combinations thereof [0012].
Regarding claim 12, the combination of McLeod and Alvarez discloses all limitations of claim 1. McLeod further discloses additional additives including one or more selected from an antioxidant, a stabilizer, a peroxide, a slip agent, an antistatic additive, an FR additive, a light stabilizer, a flow modifiers, a process aid, an anti-block agent, an optical brightener, or any combinations thereof [0014].
Regarding claim 19, the combination of McLeod and Alvarez discloses all limitations of claim 17. McLeod particularly discloses that their polymeric composition can be in the form of a sheet or film [0021].
Regarding claim 20, the combination of McLeod and Alvarez discloses all limitations of claim 17. McLeod further discloses that their article of manufacture may be a medical sharps container, tote, bins, pipettes, laboratory ware, food packaging container, food storage container, cooking utensil, plate, cup, cavity tray, drinking cup, measuring cup, strainer, turkey baster, non-food storage container, filing cabinet, cabinet drawer, general storage device, organizer, sweater box, rigid packaging, deli container, deli container lid, dairy container, dairy container lid, personal care product bottle and jar, furniture, furniture component, building material and building container components, film, coating, fiber, bag, adhesive, yarn and fabric blister, or clamshell [0021].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 5, 6, 11, 13, and 14 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 13 of copending Application No. 18/370,664 in view of Alvarez (US 20200270435 A1).
Claim 1 of the copending application recites a polymeric composition comprising at least 98 wt. % of a random ethylene polypropylene copolymer, wherein the random ethylene polypropylene copolymer comprises 4 wt. % to 12 wt. % of ethylene units and 88 wt. % to 96 wt. % of propylene units based on the total weight of the copolymer; and 0.01 wt. % to 1.0 wt. % of an acid neutralizer, wherein the polymeric composition has a haze value of less than 40% as measured in accordance with ASTM D-1003; and wherein the polymeric composition has a notched Izod impact strength of greater than 3 ft-lb/in as measured in accordance with ASTM D-256. Accordingly, the reference discloses a polymeric composition having a near-identical composition to that recited in instant claim 1.
It is noted that claim 1 of the copending application does not particularly claim that the polymeric composition has a crystallization temperature of more than 100°C as measured by Differential Scanning Calorimetry, as recited in instant claim 1. It is also noted that claim 1 of the instant application does not claim that the polymeric composition has a notched Izod impact strength of greater than 3 ft-lb/in as measured in accordance with ASTM D-256.
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. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
While the claims in the copending and instant applications are open to the inclusion of additional ingredients, it is noted that claim 1 of the copending application lacks such additional ingredients as a gamma nucleating agent required in instant claim 1.
Alvarez et al discloses a method for making heterophasic propylene and ethylene polymer compositions utilizing a nucleating agent, with disodium bicyclo[2.2.1]heptane-2,3-dicarboxylate as a preferred nucleating agent [0058], which is a gamma nucleating agent. Alvarez discloses that nucleating agents provide sites for the formation and growth of crystals in a thermoplastic polymer [0054]. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Given that both the copending and instant applications are drawn to propylene-ethylene copolymer compositions, and given that neither application explicitly prohibits other ingredients, in light of the known crystal nucleating effects of gamma nucleators, it would therefore have been obvious to one of ordinary skill in the art to include such a gamma nucleator in the rubber composition recited in claim 1 of the copending application with a reasonable expectation of success.
Additionally, it is noted that claim 1 of the copending application encompasses the amount of acid neutralizer recited in instant claim 2.
Regarding claim 4, claim 13 of the copending application recites that the random ethylene polypropylene copolymer recited in copending claim 1 is a Ziegler-Natta random ethylene polypropylene copolymer. Accordingly, the reference renders obvious a polymeric composition having a composition overlapping with that recited in instant claim 4.
Regarding claim 5, claim 13 of the copending application recites that the random ethylene polypropylene copolymer recited in copending claim 1 is a Ziegler-Natta random ethylene polypropylene copolymer but does not recite a metallocene random ethylene polypropylene copolymer.
Alvarez et al recites Ziegler-Natta and metallocene catalysts as equivalents for preparation of polypropylene copolymers [0065]. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the Ziegler-Natta copolymer taught by the copending application with the metallocene copolymer taught by Alvarez with a reasonable expectation of success, arriving at a polymeric composition of instant claim 6.
Regarding claim 6, claim 13 of the copending application encompasses the polymeric composition of instant claim 6, excepting that copending claim 13 recites a Ziegler-Natta random ethylene polypropylene copolymer while instant claim 6 recites a metallocene random ethylene polypropylene copolymer. As set forth above, Alvarez teaches equivalence of Ziegler-Natta and metallocene random ethylene polypropylene copolymers. Accordingly, the reference renders obvious a polymeric composition identical to that recited in instant claim 6.
Alvarez et al recites Ziegler-Natta and metallocene catalysts as equivalents for preparation of polypropylene copolymers [0065]. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the Ziegler-Natta copolymer taught by the copending application with the metallocene copolymer taught by Alvarez with a reasonable expectation of success, arriving at a polymeric composition of instant claim 6.
Regarding claim 11, claim 14 of the copending application recites that the acid neutralizer in the polymeric composition recited in copending claim 1 is a metal stearate comprising calcium stearate, zinc stearate, potassium stearate, sodium stearate, lithium stearate, aluminum stearate, magnesium stearate, manganese stearate, cobalt stearate, cerium stearate, copper stearate, ferric stearate, nickel stearate, or any combinations thereof.
Regarding claim 13 of the instant application, the combination of copending claims 1 and 13 renders obvious the polymeric composition recited by instant claim 13 as set forth in the above rejection.
Additionally, it is noted that claim 1 of the copending application encompasses the amount of acid neutralizer recited in instant claim 14.
This is a provisional nonstatutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McLeod et al (US 20240198576 A1) discloses a polypropylene composition and film [0002] comprising: at least 95 wt% polypropylene [0006], a beta nucleator [0006] present at 0.02 to 0.5 wt% [0008], which may be a dicarboxylic acid salt of grpup 11A [0011], and a stearate salt present at 0.02 to 0.5 wt% [0008] selected from sodium, potassium, magnesium, or calcium [0011]. The polypropylene may be a random copolymer, particularly a Ziegler-Natta or metallocene-catalyzed polypropylene [0011]. The resultant film/sheet can have a thickness of 0.1 to 30 mils [0012]. Additional additives include an antioxidant, a stabilizer, a slip agent, an antistatic agent, a flame retardant, a flow modifier, a processing agent, or an antiblocking agent [0054].
Hadimani et al (US 20190023870 A1) discloses polyolefin compositions and bicyclic dicarboxylate metal salts suitable as nucleating agents, particularly disodium bicyclo[2.2.1]heptane-2,3-dicarboxylate [0070 and 0073].
Thelakkadan (EP 3162844 A1) discloses polypropylene compositions comprising a nucleating agent and discloses disodium bicyclo[2.2.1]heptane-2,3-dicarboxylate as particularly suitable [0044].
Ashbaugh (US 20070040292 A1) discloses a polypropylene composition comprising: a metallocene-catalyzed polypropylene, which may be a random polypropylene ethylene copolymer, and a nucleator (Abstract). The composition may optionally include additives, such as stabilizers, ultra-violet screening agents, oxidants, anti-oxidants, anti-static agents, ultraviolet light absorbents, fire retardants, processing oils, mold release agents, catalyst neutralizers, slip agents, antistatic agents, coloring agents, pigments/dyes, fillers, and/or the like with other components [0021]. The polymeric composition may be converted to an intermediate article, which may be subsequently converted to an end-use article. Without limitation, examples include films, sheets, tubes, and un-blown articles, and examples of end-use articles include bottles, cups, containers, plates, etcetera [0022].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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