DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/6/2025 has been entered.
Claims 25 and 28 recite non-elected species of strength enhancing agent. The elected species of strength enhancing agent is metal salts of aromatic phosphates, as elected by Applicants in the Response filed on 3/10/2025, the election of which was made without traverse for the reasons articulated in paragraphs 1-2 of the Non-Final rejection mailed on 3/27/2025.
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 21-22, 24-27, 29, and 39-42 are rejected under 35 U.S.C. 103 as being unpatentable over Katagiri et al. (JP 2016-072142A) and further in view of Fukushima et al. (US 2018/0230293). Because JP 2016-072142 is in Japanese, the machine-translated English equivalent is cited below.
Katagiri et al. teach porous membranes (¶1-2) high density polyethylene (¶16). The polyolefin resin used to produce the porous membranes of Katagiri, which include high density polyethylene, have a molecular weight of, preferably, more than 100,000 and less than 1,000,000 (¶21). The porous membranes of Katagiri have a pin puncture of, preferably, 400 to 2,000 gf (gram force), as calculated for a 25 µm membrane in thickness. See ¶22. This gives a puncture strength of 160 gf/µm to 800 gf/µm, which is equivalent to about 1600 mN/µm to about 8000 mN/µm. This falls within the range of puncture strength in instant claim 21. In an example of the porous membranes of Katagiri et al., the resin comprises a polyethylene homopolymer having a molecular weight of 700,000 (¶104). This falls within the range of instant claim 21 and newly presented claim 41. It would have been obvious to one of ordinary skill in the art to utilize a high density polyethylene having a molecular weight which meets instant claim 21 given the teachings at ¶16, ¶21, and ¶104 of Katagiri et al 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.
The porous film (which is a synonym for membrane) of Katagiri et al. is produced from a polyolefin resin (having a molecular weight of more than 100,000 to less than 1,000,000, preferably) and a pore forming material. See ¶23. The pore formers may include inorganic materials (¶25). Examples of the inorganic material include titania (which is titanium dioxide), talc, calcium silicate, magnesium silicate, and hydrotalcite (¶61). which meet a non-elected invention of strength enhancing agent recited in the instant claims (which is recited in non-elected claim 25). Katagiri et al. contains no teaching that sorbitol is including in the porous membranes of the invention. The porous membranes, therefore, are “sorbitol-free.” This meets instant claim 26. The high density polyethylene used in Katagiri et al. has a density of 0.942 to 0.970 g/cm3 (¶17). This falls within the range of instant claims 39-40. Given that the high density polyethylene has a density which meets instant claims 39-40 and a molecular weight which meets instant claims 21 and 41, one of ordinary skill in the art would readily recognize that the high density polyethylene would also have the bulk density recited in claim 39. The burden is shifted to Applicants to provide factually supported evidence which demonstrates the contrary.
Katagiri et al. do not expressly teach the tensile strength in the machine direction or the tensile strength in the traverse direction of the porous membranes disclosed therein. Katagiri also do not expressly recite the half crystallization time period during an isothermal crystallization of 123ºC of the high density polyethylene used to produce the porous membranes. However, the porous membranes are produced using the same components (high density polyethylene) having a molecular weight which meets instant claim 21 and instant claim 41 (see ¶104 of Katagir), a density which meets instant claim 39, and the HDPE provides a porous membrane having a puncture strength which meets instant claim 21. Thus, evidence is provided that the porous membrane of Katagiri includes embodiments which are identical to that of the instantly claimed porous membrane. These embodiments will necessarily have the same properties as the instantly claimed porous membrane, including the tensile strength in the machine direction or the tensile strength in the traverse direction recited in instant claim 21. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. The fact that the porous membranes are produced using a high density polyethylene that has both a molecular weight and density that meets the instant claims, to produce a porous membrane having a pin puncture which meets the instant claims, provides factually supported evidence that the high density polyethylene of Katagiri necessarily has (particularly the example having a molecular weight of 700,000 g/mol) a half crystallization time period during an isothermal crystallization of 123ºC of greater than 2 minutes and which also has the full width half maximum of a melting temperature recited in new claim 42. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. No such evidence has been provided by Applicants.
Katagiri et al. teaches that the porous membrane comprises at least one layer on at least one side of a porous film. This meets instant claim 29.
Katagiri et al. do not expressly teach that the porous membrane is made from a composition comprising the elected strength enhancing agent which is a metal salt of an aromatic phosphate. Katagiri et al. do not expressly teach that the composition and membrane comprise a compound meeting amended instant claim 21, instant claim 24 or instant claim 27.
However, Fukushima et al. teach a resin additive composition, for use in a resin including high density polyethylene (¶82), wherein the resin additive comprises a mixture of sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and a lithium phosphate (abstract). In Examples, the lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, meaning Fukushima et al. teach an additive for resin compositions, including high density polyethylene compounds, comprising a mixture of sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate. This meets instant claims 23-24 and 27.
Katagiri et al. and Fukushima et al. relate to resin compositions comprising, for example, high density polyethylene (see ¶16 of Katagiri et al. and ¶82 of Fukushima et al.), and molded articles produced therefrom (see ¶60 of Fukushima), examples of which include films (see entire Katagiri reference and ¶84 of Fukushima et al.). It would have been obvious to one of ordinary skill in the art at the time the instant invention was made to include the resin additive of Fukushima et al., which comprises a mixture of sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, in order to provide an additive which has excellent dispersibility when used in resins to which it is added, including high density polyethylene disclosed at ¶84, and to provide desired physical property improvements when incorporated into a resin, including high density polyethylene (¶84). See ¶17 and Table 4 of Fukushima et al.
Response to Arguments
Applicant's arguments filed 11/6/2025 have been fully considered but they are not persuasive.
Applicant argues that the high density polyethylene of Katagiri does not necessarily have the half crystallization time period recited in the instant claims. Applicant asserts that having the same molecular weight dos not ensure the high density polyethylene necessarily has the recited half crystallization time period recited in the instant claims.
This is not persuasive.
Applicant has provided no factually supported objective evidence demonstrating that the high density polyethylene of Katagiri does not necessarily have the instantly claimed half crystallization time period recited in the instant claims. Secondly, the rejection is not establishing that the property may or can be present. The rejection states the property is necessarily present. It is not solely the fact that the high density polyethylene has the instantly claimed molecular weight required by the instant claims that is being used to provide evidence that the high density polyethylene also has the same half crystallization time period recited in the instant claims. It is the molecular weight of the high density polyethylene; the density of the high density polyethylene; and the fact that porous membranes made using that high density polyethylene, have a pin puncture which meets the instant claims. Three different criteria are used to establish why the high density polyethylene of Katagiri would necessarily have the half crystallization time period which meets the instant claims: (1) the fact that the high density polyethylene has a molecular weight which falls within the instantly claimed range as the instantly claimed range, (2) a density which falls within the range of the instant claims; and (3) the fact that porous membranes using the high density polyethylene of Katagiri also have a pin puncture which meets the instant claims.
Stating that a properly is not necessarily present, is not evidence that the property is not present. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Applicant has provided no evidence that the high density polyethylene of Katagiri does not have the half crystallization time period recited in instant claim 21. The fact that (1) the high density polyethylene has a molecular weight which meets the instant claims, (2) has a density which meets the instant claims; and (3) the fact that the high density polyethylene provides a porous membrane having a pin puncture which meets the instant claims, is evidence that the high density polyethylene of Katagiri has a half crystallization time period which meets instant claim 21. Applicants have provided no evidence which demonstrates the contrary. Therefore, Applicant’s argument is not persuasive. The burden remains with Applicants to provide evidence that the half crystallization of the instant claims is not present in the HDPE resins of Katagiri.
Applicant argues that it is the combination of three additives that provides a benefit and not sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, which provides the benefit disclosed therein.
This is not persuasive. The claims do not exclude the third component disclosed in Fukushima. The claims state the strength enhancing agent comprises the recited compounds. The excellent dispersibility benefit achieved in Fukushima, is due to the use of a mixture comprising the sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, which are the elected species of strength enhancing agent of the instant claims, when used in resins to which the mixture is added. The benefit is achieved due to this mixture, which expressly and unambiguously includes the sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, regardless of whether an additional component is present, the additional component of which is not excluded from the instantly claimed strength enhancing additive. Thus, the resin additive of Fukushima, which includes sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate and mixtures thereof, meets the instantly claimed strength enhancing additive, which also comprises sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate, lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, and mixtures thereof, the mixture of which is the species elected by Applicants in the Response filed on 3/10/2025. The rejection never states or establishes that individual components provide the improvement in Fukushima as argued by Applicant. The rejection establishes that the additive of Fukushima comprises the materials present in the instantly claimed strength enhancing additive, the strength enhancing additive of both Fukushima and the instantly claimed invention of which comprises sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate, lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, or mixtures thereof. This meets amended instant claim 21, including the elected metal salt of aromatic phosphates, and including the specific melt salts of aromatic phosphates recited in instant claims 24 and 27.
Applicant argues that Fukushima “discloses the term ‘film’ a single time in one-hundred and sixteen paragraphs” as stated on page 9, second full paragraph of the Remarks filed on 11/6/2025.
This is not persuasive.
It appears Applicant is attempting to argue that the references are non-analogous or not combinable. However, this is not clear. Regardless, it does not matter how many times an application of a composition is mentioned in a reference. The fact remains that Katagiri et al. and Fukushima et al. relate to resin compositions comprising, for example, high density polyethylene (see ¶16 of Katagiri et al. and ¶82 of Fukushima et al.), and molded articles produced therefrom (see ¶60 of Fukushima), examples of which include films (see entire Katagiri reference and ¶84 of Fukushima et al.). It is not solely the teaching of “film” which makes the references analogous to each other and to the instantly claimed invention. The both teach HDPE compositions and films made therefrom.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The rejection does not include knowledge gleaned only from the applicant's disclosure, but provides a rationale present in the applied Fukushima reference itself. Thus, the reconstruction is proper.
As discussed in the rejection above, Katagiri et al. and Fukushima et al. relate to resin compositions comprising, for example, high density polyethylene (see ¶16 of Katagiri et al. and ¶82 of Fukushima et al.), and molded articles produced therefrom (see ¶60 of Fukushima), examples of which include films (see entire Katagiri reference and ¶84 of Fukushima et al.). It would have been obvious to one of ordinary skill in the art at the time the instant invention was made to include the resin additive of Fukushima et al., which comprises a mixture of sodium-2,2’-methylenebis-(4,6-di-tert-butylphenyl) phosphate and lithium phosphate is lithium 2,2’-methylenebis(4,6-di-tert-butylphenyl) phosphate, in order to provide an additive which has excellent dispersibility when used in resins to which it is added, including high density polyethylene disclosed at ¶84, and to provide desired physical property improvements when incorporated into a resin, including high density polyethylene (¶84). See ¶17 and Table 4 of Fukushima et al.
For the reasons discussed above, the references are analogous to each other and the instantly claimed invention. There is an express rationale to use the compounds of Fukushima in the invention of Katagiri which does not rely on Applicant’s own disclosure. Therefore, the rejection is proper.
Conclusion
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/K. BOYLE/Primary Examiner, Art Unit 1766