DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on November 24, 2025 is acknowledged. Upon review of claims, the restriction requirement set forth in the office action dated October 10, 2025 has been withdrawn. Group II, claims 18-20 are examined herein.
Claim Objections
Claim 5 is objected to because of the following informalities: In line 2, please replace “the xylene” with “a xylene”.
Claim 12 is objected to because of the following informalities: In line 2, please replace “a propylene monomer” with “propylene”.
Claim 12 is objected to because of the following informalities: In lines 2 and 3, please replace “an ethylene monomer” with “ethylene”.
Claim 12 is objected to because of the following informalities: In line 4, please replace “including” with “includes”.
Claim 12 is objected to because of the following informalities: In line 4, please insert “solid” prior to “catalyst”.
Claim 12 is objected to because of the following informalities: In line 5, please replace “comprising” with “comprises”.
Claim 14 is objected to because of the following informalities: In line 5, please replace “the monomers” with “propylene, ethylene and a butene monomer”.
Claim 16 is objected to because of the following informalities: In line 2, please insert “wherein” prior to “the propylene”.
Claim 16 is objected to because of the following informalities: In line 2 please replace “being” with “is”.
Claim 17 is objected to because of the following informalities: In line 2, please insert “wherein” prior to “the propylene”.
Claim 17 is objected to because of the following informalities: In line 2 please replace “being” with “is”.
Claim 18 is objected to because of the following informalities: In line 3, please insert “wherein” prior to “the propylene”.
Claim 18 is objected to because of the following informalities: In line 5, please replace “comprising” with “comprises”.
Claim 19 is objected to because of the following informalities: Claim structure appears incorrect. The multilayer film is a packaging film, or the packaging film comprises the multilayer film.
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.
Claim 18 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim 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. Claim is drawn to a multilayer film structure comprising a heat-seal layer comprising a terpolymer wherein the propylene terpolymer has a butene content of greater than about 1 % by weight. The specification was consulted for guidance. The disclosure at paragraph [0007] states that the butene content of the propylene terpolymer is from about 3 % to about 6.9 % by weight, or from about 5 % to about 6.9 % by weight. The disclosure at paragraph [0052] teaches that the butene content of the propylene terpolymer can generally be from about 1 % by weight to about 15 % by weight, and in one embodiment less than 8 % by weight. Furthermore, working examples 1-4 disclose propylene terpolymer having a butene contents of 6.9 wt %, 6.9 wt %, 8.5 wt %, and 14.5 wt %. The specification, while enabling for butene contents of from about 1 % by weight to about 15 % by weight, does not reasonably provide enablement for butene contents in the open-ended range of “greater than about 1 % by weight” (which would include values such as 18 wt % or 35 wt %) as recited in claim.
It is noted that the propylene terpolymer must also exhibit a sequence length distribution of ethylene defined as nE < 0.00354Et + 1.08. The property nE is dependent on butene content in the terpolymer and apparently, this inequality would be satisfied only within the range delineated in the specification. One notes further that although the terpolymer of example 3 has a butene content within disclosed range of from about 1 % to 15 % by weight, it exhibits a nE value that fails to satisfy the inequality set forth in claim. It is unlikely, then, that propylene terpolymers having higher butene content in claimed open-ended range of “greater than about 1 % by weight” (such as 18 wt % or 35 wt %) would also satisfy the ethylene distribution property. Based on these observations, it is deemed that claim failis to comply with the enablement requirement.
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claim is drawn to a propylene terpolymer having a butene content of from about 1 % to less than 8 % by weight. Claim is indefinite because it is unclear where the upper bound of claimed range lies exactly. The specification was consulted for guidance. The disclosure at paragraph [0052] sets range for butene content. Applicant may claim a range with definite endpoints such as from about 1 % by weight to about 15 % by weight or define a range using inequality format, i.e., greater than about 2 % by weight and less than 8 % by weight.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. A Claim is not a proper process claim because it fails to set forth any steps involved in the process.
Claim 16 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. The phrase “such as” in lines 3 and 4 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Claims are drawn to a propylene terpolymer comprising propylene as a primary monomer, an ethylene content of form about 1 % to about 5 % by weight, a butene content of from about 1 % to less than 8 % by weight [sic], and wherein the propylene terpolymer has a melt flow rate of from about 1 g/10 min to about 30 g/10 min, has a melting temperature of less than 140 ºC, and has a sequence length distribution of ethylene defined as follows: nE < 0.0353Et + 1.08, wherein Et is ethylene content by weight.
Subject of claims is patentably distinct over prior art cited in Applicant’s PTO-1449 and over references cited in the accompanying PTO-892. These references are cited to show the state of the art with respect to propylene terpolymer. None of the references teaches a propylene terpolymer having claimed sequence length distribution of ethylene.
Claims are not in condition for allowance but will be allowable upon amendment to overcome claim objections and rejections under 35 U.S.C. 112, supra. For purposes of completing PTO-326, the status of claim 20 is listed as “objected to”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 August 15, 2026
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