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 of Group I, 1-10 and 19, in the reply filed on 8/5/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-18 and 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/5/2026 for the reasons discussed above.
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.
Claims 1-3, 5, 7-10, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shivokhin et al. (US 2020/0308384).
Shivokhin et al. teaches a composition comprising a polypropylene polymer (abstract). Shivohkin et al. teaches that the composition includes polypropylene having a crystallinity, which has a thermal energy of the highest order estimated at 207 J/g (100% crystallinity is equal to 207 J/g), of 5% to 35%, which meets d) of instant claims 1 and 3. This polypropylene has a density, measured using ASTM-D1505-18, of from 0.860 g/cm3 to 0.890 g/cm3, which falls within the range of instant claim 9. See ¶94. This polypropylene also has a melting temperature of less than 110ºC, which meets a) and b) of instant claims 1, 2, and 3. See ¶7. This polypropylene has a crystallinity of from 3% to 10% (¶98), the crystallinity of which has a thermal energy of the highest order estimated at 207 J/g (100% crystallinity is equal to 207 J/g). This mees d) of instant claims 1, 2, and 3. Examples of polypropylenes in Table 3 have a melting temperature which meets a) of instant claims 1, 2, and 3, and which meets b) and c) of instant claims 1, 3, and 3.
The compositions of Shivokhin et al. are used to produce molded articles (¶135) including roofing and flooring, which are building material parts, insulation parts and materials for electronics (¶135), which meet the articles of instant claim 19.
Regarding the limitation “additive manufactured article,” this is a product-by-process limitation. It is noted that case law holds that:
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).
The articles of Shivokhin et al. include the same article as the instant claims, and made using a polypropylene which has the properties required for the instant claims. To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The molded articles of Shivokhin et al. are structurally the same as that of the instantly claimed article, regardless of the method by which they are produced. The burden is shifted to Applicants to provide factually supported evidence which demonstrates the contrary.
Regarding instant claims 7-8, claim 7 states that the sintering window is “as defined by the onset melting temperature and crystallization temperatures.” As the polypropylene of Shivokhin et al. described above has an onset melting temperature and a crystallization which meets the instant claims, evidence is provided that this polypropylene will also necessarily have the sintering window of instant claims 7-8, which is “defined by the onset melting and crystallization temperatures.” The melting temperatures of Shivokhin et al. are measured using ASTM D3418-15. See ¶30.
Shivokhin et al. do not expressly teach the absolute value for crystallization activation energy or the melt flow rate (using ASTM 1238-20) of the polypropylene disclosed therein and discussed above. However, the polypropylene of Shivokhin et al. discussed above has 1) a melting temperature which is the same as the polypropylene of the instant claims and which meets b) and c) of the instant claims; 2) a crystallization which meets the instant claims; and 3) a density which meets the instant claims. Evidence is therefore provided that the polypropylene of Shivokhin et al. described above is the same as the polypropylene of the instant claims and will therefore necessarily have the same properties as the polypropylene of the instant claims, including an absolute value for crystallization activation energy or a melt flow rate (using ASTM 1238-20) which meets the instant claims. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shivokhin et al. (US 2020/0308384).
Shivokhin et al. teach the article and polypropylene composition as discussed above, the rejection of which is incorporated herein by reference. The polypropylene of Shivokhin et al. discussed above has a crystallinity, which has a thermal energy of the highest order estimated at 207 J/g (100% crystallinity is equal to 207 J/g), of 5% to 35%, which overlaps the range of instant claim 6. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Shivokhin et al., to use a polypropylene having a crystallinity which meets the instant claim limitations of instant claim 6 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Shivokhin et al. (US 2020/0308384) and further in view of Friedersdorf (US 6,881,800).
Shivokhin et al. teach the article and polypropylene composition as discussed above, the rejection of which is incorporated herein by reference. Shiovokhin et al. does not expressly recite Ziegler-Natta based random copolymers, metallocene random copolymers, and/or syndiotactic polypropylene.
However, Shivokhin et al. teach that the propylene polymers described above include copolymers prepared according to procedures disclosed in, for example, US 6,881,800 (see ¶106 of Shiovokhin et al. which discloses propylene copolymers produced using metallocene catalysts. See entire US 6,881,800 document, and, for example, col. 7, ln. 43-48. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to produce a metallocene random propylene copolymer as disclosed in US 6,881,800 in the invention of Shivokhin et al. given the express disclosure in Shivokhin et al. to use the methods of US 6,881,800.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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