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 § 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.
Claim 1 and the claims dependent therefrom (claims 2-20) 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 “high crystallinity” in claim 1 is a relative term which renders the claim indefinite. The term “high crystallinity” 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. In the instant case, the specification states in ¶ [0031] “the HCPP can have a meso pentads percentage of greater than 97%...” and that “in an embodiment, the HCPP has a xylene soluble fraction of less than 1.5%...” It is unclear whether applicant intends for either measurement to be a limiting factor in determining what is or is not considered a high crystallinity polypropylene.
Furthermore, 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, claim 1 recites the broad recitation “a melt flow index of less than 10 g/10 min,” and the claim also recites “preferably less than 4.5 g/10 min” which is the narrower statement of the range/limitation. The claim(s) 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 12 is 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.
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, claim 12 recites the broad recitation “at least 50 wt. %,” and the claim also recites “preferably 50 wt. % to 70 wt. %” which is the narrower statement of the range/limitation. The claim(s) 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 14 and the claim dependent therefrom (claim 15) 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.
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, claim 14 recites the broad recitation “at least 30 wt. %,” and the claim also recites “preferably 30 wt. % to 50 wt. %” which is the narrower statement of the range/limitation. The claim(s) 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS. — Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 states “the polymeric composition of claim 1, wherein the recycled polypropylene includes a post-industrial recycle (PIR) polypropylene, a post-consumer recycle (PCR) polypropylene, or a combination thereof.” A person having ordinary skill in the art would recognize that, PIR, PCR, or a combination thereof, incorporates all possible forms of recycled polypropylene and thus, claim 8 fails to further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Applicant defines the polymer composition as a blend of two distinct polypropylene components, one “recycled” and the second, “high crystallinity.”
The term “recycled” is interpreted by examiner as merely an expression of the source of the polypropylene claimed and not making a patentable distinction between a recycled polypropylene and any virgin polypropylene having similar physical properties. For the purposes of examination, the properties claimed in the instant application, claim 9, and additionally described in the detailed description, ¶ [0030], were used to identify relevant polypropylene in prior art. These properties include a least one of the following: “a melt flow index of 4.5 g/10 min, as measured in accordance with ASTM D-1238; a melting point of 163 °C, as measured by Differential Scanning Calorimetry; and at least 3.5 wt. % of xylene solubles.”
The term “high crystallinity” as used in the claims to describe a polypropylene component is indefinite as described above. For the purposes of examination, “high crystallinity” polypropylene is interpreted by examiner as it is described in an embodiment in ¶ [0031] of the instant application; having “a xylene soluble fraction of less than 1.5%.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8, 10, 12, 14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaarto et al., U.S Patent Application Publication No. 2022/0177682, hereinafter Kaarto et al.
Regarding claim 1, Kaarto et al. is directed to a propylene polymer composition (prior art claim 1) comprising; (i) a first polypropylene that is equated with the high crystallinity propylene homopolymer insofar as it has a xylene soluble content of as low as 1 wt.% and (ii) a second polypropylene polymer considered anticipatory of the claimed recycled polypropylene. The polymers together constitute at least 98% by weight of the total. doIndeed, in the Examples (¶ [0157-0160]) the samples are formulated together including a first polypropylene and a second polypropylene to the apparent exclusion of additives.
Kaarto et al. further teaches, the polymeric composition has a melt flow index of less than 10 g/10 min, preferably less than 4.5 g/10 min (sample 10 from the table in ¶[0160] has a reported melt flow rate of 2.2 g/10 min), as measured in accordance with ASTM D-1238 (¶[0025] states “melt flow rate (MFR), as used herein, is measured in accordance with the ASTM D 1238 test method”), and a flexural modulus of at least 220,000 psi (sample 10 from the table in ¶[0160] has a reported flexural modulus of 1665 MPa which is equal to 241,500 psi).
Regarding claim 2, Kaarto et al. teaches the polymeric composition of claim 1, and further teaches in ¶ [0016] “the first polypropylene polymer and the second polypropylene polymer can both comprise polypropylene homopolymers” and “at least one of the polypropylene polymers can be a copolymer.” The second polypropylene of Kaarto et al. is considered anticipatory of the claimed recycled polypropylene, thus ¶ [0016] anticipates the instant application limitation of a recycled propylene including a polypropylene homopolymer or polypropylene random copolymer.
Regarding claim 3, Kaarto et al. teaches the polymeric composition of claim 1, wherein the blend includes 44% by weight of the second polypropylene (equated with recycled polypropylene of the instant application) which is at least 30 wt. %, based on the total weight of the blend (sample 10 from the table in ¶ [0160]).
Regarding claim 4, Kaarto et al. teaches the polymeric composition of claim 1, wherein the blend includes 44% by weight of the second polypropylene (equated with recycled polypropylene of the instant application) which is 30 wt. % to 50 wt. %, based on the total weight of the blend (sample 10 from the Table in ¶ [0160).
Regarding claim 5, Kaarto et al. teaches the polymeric composition of claim 1, wherein the blend includes 56% by weight of first polypropylene polymer (equated with high crystallinity polypropylene of the instant application) which is at least 50 wt. %, based on the total weight of the blend (sample 10 from the table in ¶ [0160]).
Regarding claim 6, Kaarto et al. teaches the polymeric composition of claim 1, wherein the blend includes 56% by weight of first polypropylene polymer (equated with high crystallinity polypropylene of the instant application) which is 50 wt. % to 70 wt. %, based on the total weight of the blend (sample 10 from the table in ¶ [0160]).
Regarding claim 8, Kaarto et al. teaches the polymeric composition of claim 1 and insofar as the instant application language; “the recycled polypropylene includes a post-industrial recycle (PIR) polypropylene, a post-consumer recycle (PCR) polypropylene, or a combination thereof” is found to be not further limiting of claim 1 (see §112(d) rejection above), the claim is anticipated.
Regarding claim 10, Kaarto et al. teaches a process for producing a polymeric composition of claim 1, the process comprising extruding a mixture of the prior art first and second polypropylene to obtain the polymeric composition of claim 1 (prior art ¶ [0017-0018]).
Regarding claim 12, Kaarto et al. teaches the process of claim 11, wherein the blend includes 56% by weight of first polypropylene polymer (equated with high crystallinity polypropylene of the instant application) which is at least 50 wt. %, preferably 50 wt. % to 70 wt. %, based on the total weight of the blend (sample 10 from the table in ¶ [0160]).
Regarding claim 14, Kaarto et al. teaches the process of claim 11, wherein the blend includes 44% by weight of the second polypropylene (equated with recycled polypropylene of the instant application) which is at least 30 wt. %, preferably 30 wt. % to 50 wt. %, based on the total weight of the blend (sample 10 from the table in ¶ [0160]).
Regarding claim 16, Kaarto et al. teaches an article of manufacture comprising the polymeric composition of claim 1 (prior art claim 25 “a polymer article formed from the polypropylene polymer composition”).
Regarding claim 17, Kaarto et al. teaches the article of manufacture of claim 16, wherein the polymeric composition is an extruded composition, the extruded composition comprising an extruded part or an extruded film (prior art ¶ [0018] “articles can be produced using… extrusion” and “the polypropylene polymer composition can also be used to produce biaxially oriented polypropylene films”).
Regarding claim 18, Kaarto et al. teaches the article of manufacture of claim 17, wherein the extruded film is a biaxially oriented film (prior art ¶ [0018] “the polypropylene polymer composition can also be used to produce biaxially oriented polypropylene films.”).
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.
Claims 7, 9, 11, 13, 15, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaarto et al.
Regarding claim 7, Kaarto et al. teaches the polymeric composition of claim 1, wherein the prior art claim 1, first polypropylene has “a xylene soluble content of from about 1.0% by weight to about 7% by weight” which abuts the xylene solubles range (<1 wt. %) claimed in the instant application.
It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP §2144.05(I)).
Regarding claim 9, Kaarto et al. teaches the polymeric composition of claim 1, wherein prior art claim 1: the second polypropylene polymer has “a xylene soluble content of from about 1% by weight to about 7% by weight” which overlaps the range of at least 3.5 wt. % as claimed in the instant application.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP §2144.05).
Regarding claim 11, Kaarto et al. teaches the process of claim 10, wherein the prior art claim 1, first polypropylene has “a xylene soluble content of from about 1.0% by weight to about 7% by weight” which abuts the xylene solubles range (<1 wt. %) claimed in the instant application and the prior art claim 1, second polypropylene polymer has “a xylene soluble content of from about 1% by weight to about 7% by weight” which overlaps the range of at least 3.5 wt. % as claimed in the instant application.
With respect to the first polypropylene (equated with the high crystallinity polypropylene of the instant application), it would have been obvious that the prior art and claimed xylene solubles range, while not overlapping, are close enough that one having ordinary skill in the art would expect them to have the same properties, see Titanium Metals Corp. of America v. Banner cited earlier in the Action.
With respect to the second polypropylene (equated with the recycled polypropylene of the instant application), it would have been obvious to a person having ordinary skill in the art to choose the overlapping portion of the claimed xylene solubles range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Regarding claim 13, Kaarto et al. teaches the process of claim 11, wherein the prior art claim 15 teaches “the polypropylene polymer composition has a melt flow rate from about 0.5 g/10 min to about 3 g/10 min.” Kaarto et al. further teaches that “melt flow rate (MFR), as used herein, is measured in accordance with the ASTM D 1238 test method” (¶ [0025]). It would have been obvious to a person having ordinary skill in the art to choose a polypropylene with a melt flow (2.5 g/10 min) that lies within the claimed range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Regarding claim 15, Kaarto et al. teaches the process of claim 14, wherein the prior art claim 15 teaches “the polypropylene polymer composition has a melt flow rate from about 0.5 g/10 min to about 3 g/10 min.” Kaarto et al. further teaches that “melt flow rate (MFR), as used herein, is measured in accordance with the ASTM D 1238 test method” (¶ [0025]). It would have been obvious to a person having ordinary skill in the art to choose a polypropylene with a melt flow (2.8 g/10 min) that lies within the claimed range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Regarding claim 19, Kaarto et al. teaches the article of manufacture of claim 16, wherein the prior art claim 1, first polypropylene has “a xylene soluble content of from about 1.0% by weight to about 7% by weight” which abuts the xylene solubles range (<1 wt. %) claimed in the instant application and the prior art claim 1, second polypropylene polymer has “a xylene soluble content of from about 1% by weight to about 7% by weight” which overlaps the range of at least 3.5 wt. % as claimed in the instant application.
With respect to the first polypropylene (equated with the high crystallinity polypropylene of the instant application), it would have been obvious that the prior art and claimed xylene solubles range, while not overlapping, are close enough that one having ordinary skill in the art would expect them to have the same properties, see Titanium Metals Corp. of America v. Banner cited earlier in the Action.
With respect to the second polypropylene (equated with the recycled polypropylene of the instant application), it would have been obvious to a person having ordinary skill in the art to choose the overlapping portion of the claimed xylene solubles range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Additionally, Kaarto et al. teaches in claim 6 “a polypropylene polymer composition as defined in claim 1, wherein the first polypropylene polymer is present in the polymer composition in an amount less than about 66% by weight and in an amount greater than about 30%” which equates to 34-70% of the second polypropylene polymer (equated with the recycled polypropylene of the instant application). The claimed range in the instant application of 40 wt. % to 60 wt. % thus lies within the range disclosed in Kaarto et al. It would have been obvious to a person having ordinary skill in the art to choose the wt. % range that lies within the claimed range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Lastly, Kaarto et al. teaches in claim 15: “the polypropylene polymer composition has a melt flow rate from about 0.5 g/10 min to about 3 g/10 min”), as measured in accordance with ASTM D-1238 (prior art ¶ [0025] “melt flow rate (MFR), as used herein, is measured in accordance with the ASTM D 1238 test method”). It would have been obvious to a person having ordinary skill in the art to choose a polypropylene with a melt flow (2.5 g/10 min) that lies within the claimed range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Regarding claim 20, Kaarto et al. teaches the article of manufacture of claim 16, wherein the prior art claim 1, first polypropylene has “a xylene soluble content of from about 1.0% by weight to about 7% by weight” which abuts the xylene solubles range (<1 wt. %) claimed in the instant application and the prior art claim 1, second polypropylene polymer has “a xylene soluble content of from about 1% by weight to about 7% by weight” which overlaps the range of at least 3.5 wt. % as claimed in the instant application.
With respect to the first polypropylene (equated with the high crystallinity polypropylene of the instant application), it would have been obvious to one of ordinary skill in the art at the effective filing date that the prior art and claimed xylene solubles range, while not overlapping, are close enough that one having ordinary skill in the art would expect them to have the same properties, see Titanium Metals Corp. of America v. Banner cited earlier in the Action.
With respect to the second polypropylene (equated with the recycled polypropylene of the instant application), it would have been obvious to a person having ordinary skill in the art to choose the overlapping portion of the claimed xylene solubles range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Additionally, Kaarto et al. teaches in claim 6 “a polypropylene polymer composition as defined in claim 1, wherein the first polypropylene polymer is present in the polymer composition in an amount less than about 66% by weight and in an amount greater than about 30%” which equates to 34-70% of the second polypropylene polymer (equated with the recycled polypropylene of the instant application). The claimed range in the instant application of 30 wt. % to 50 wt. % thus overlaps with the range disclosed in Kaarto et al. It would have been obvious to a person having ordinary skill in the art to choose the overlapping portion of the claimed wt. % range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.
Lastly, Kaarto et al. teaches in claim 15: “the polypropylene polymer composition has a melt flow rate from about 0.5 g/10 min to about 3 g/10 min”), as measured in accordance with ASTM D-1238 (prior art ¶ [0025] “melt flow rate (MFR), as used herein, is measured in accordance with the ASTM D 1238 test method”). The instant application claims a melt flow index of 2.8 g/10 min which lies inside the range disclosed by Kaarto et al. It would have been obvious to a person having ordinary skill in the art at the effective filing date to choose a polypropylene with a melt flow (2.8 g/10 min) that lies within the claimed range; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in the Action.Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E MONTGOMERY whose telephone number is (571)270-1523. The examiner can normally be reached Monday-Friday: 8:00am - 5:00pm.
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/S.E.M./Examiner, Art Unit 1765
/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765
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