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 .
This Office action is in response to amendment filed 5/15/2026. Claims 1 and 3 are amended; claims 2 and 15-19 are cancelled; and claims 11-14 and 20 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1, 3-14 and 20 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 3-4 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujimoto (US 2019/0194431 A1 - hereafter Tsujimoto ‘431).
Regarding claims 1 and 3, Tsujimoto ‘431 teaches ultra-high molecular weight polyethylene powder (i.e., reads on ultrahigh molecular weight polyethylene powder in present claim 1) having a viscosity average molecular weight of 10 *104 or higher and 1000 * 104 or lower (abstract). The viscosity average molecular weight was determined from intrinsic viscosity (η) according to the following expression Mv = (5.3 * 104) * ( η)1.49 (paragraph 0161). See example 1, wherein viscosity average molecular weight is 350 * 104 (Table 1). Hence, intrinsic viscosity is calculated to be about 17 dL/g (i.e., reads on the intrinsic viscosity IV in present claim 1).
Tsujimoto ‘431 fails to disclose the average value of swelling onset temperature; and standard deviation of swelling onset temperature.
However, regarding average value of swelling onset temperature, Tsujimoto ‘431 in the general disclosure teach that powder having a temperature range of 170 0C or lower in which a torque value reaches ½ of the maximum torque value is swollen (i.e., state where the powder is sufficiently impregnated with liquid paraffin) at a relatively low temperature and early after the start of kneading. A molecular chain can be disentangled at a low temperature, and a homogeneous kneaded gel can be obtained. As a result, a spun thread can be wound at a high speed (paragraph 0050). Therefore, in light of the teachings in general disclosure of Tsujimoto ‘431 and given that ultra-high molecular weight polyethylene powder is impregnated with liquid paraffin resulting in swelling of the powder at low temperature, one skilled in art prior to the filing of present application would have a reasonable basis to expect average value Ts of swelling onset temperature of the ultra-high molecular weight polyethylene powder, of Tsujimoto ‘431 to fall within the range of 900C to more and 1300C or less, under the conditions specified in the present claims, absent evidence to the contrary. Alternatively, Tsujimoto ‘431 teaches that average particle size (D50) of ultra-high molecular weight polyethylene powder is in the range of 80 microns or larger and 250 microns or smaller (paragraph 0063). When particle sizes corresponding to cumulative 10%, 50% and 90% from the minor diameter side of a cumulative particle size distribution are defined as D10, D50 and D90, respectively, the ultra-high molecular weight polyethylene powder has D10/D50 of 0.40 or more and D90/D50 of 2.0 or less (paragraph 0064). The D10/D50 and D90/D50 ratio can be controlled by the particle size and particle size distribution of the ultra-high molecular weight polyethylene powder (paragraph 0067). The particle size distribution can be controlled by adjusting the size and/or amount of carrier catalyst carrier for use in polymerization. The size of catalyst carrier is adjusted to adjust the particle size of the produced ultra-high molecular weight polyethylene powder (paragraph 0069). Therefore, given that particle size can be controlled by adjusting the size and/or amount of catalyst for use in polymerization, polymer powder when swollen at a relatively low temperature is disentangled and the spun thread can be wound at a high speed, it would have been obvious to one skilled in art prior to the filling of present application to adjust D10, D50 and D90 particle size distribution to any value including that which would result in swelling onset of low temperature (such as in present claims), absent evidence to the contrary.
Regarding standard deviation of swelling onset temperature, Tsujimoto ‘431 teaches that particle size can be controlled by adjusting the size and/or amount of carrier catalyst carrier for use in polymerization. The size of catalyst carrier is adjusted to adjust the particle size of the produced ultra-high molecular weight polyethylene powder (paragraph 0069). Therefore, given that particle size can be controlled by adjusting the size and/or amount of catalyst for use in polymerization, polymer powder is swollen at a relatively low temperature, it would have been obvious to one skilled in art prior to the filling of present application to adjust D10, D50 and D90 particle size distribution to any value including that which would result in standard deviation of the ultra-high molecular weight polyethylene powder having particle sizes of D10, D50 and D90 to 50C or less (as in present claim 1) and 2.40C or less (as in present claim 3), absent evidence to the contrary.
Regarding claim 4, Tsujimoto ‘431 teaches that content of comonomer is preferably 1% by mol or less (paragraph 0031).
Regarding claim 6, Tsujimoto ‘431 teaches that ultra-high molecular weight polyethylene powder has D10/D50 of 0.40 or more and D90/D50 of 2.0 or less (paragraph 0064). The upper limit of D10/D50 is preferably 0.70 or less and lower limit of D90/D50 ratio is preferably 1.0 or more (paragraphs 0065-0066). Hence, ratio of D90/10 is calculated to be in the range of 1.45 to 5.0 (i.e., overlaps with the D90/D10 in present claim 6). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 7, Tsujimoto ‘431 teaches that average particle diameter (D50) is in the range of 80 microns or more and 250 microns or smaller (paragraph 0063). The particle size can be controlled by adjusting the size and/or amount of carrier catalyst carrier for use in polymerization. The size of catalyst carrier is adjusted to adjust the particle size of the produced ultra-high molecular weight polyethylene powder (paragraph 0069). Therefore, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to adjust the D10 and D90 to any size including D10 of 30 microns or larger and D90 of 425 microns or smaller, absent evidence of unexpected results.
Regarding claims 8-10, Tsujimoto ‘431 teaches that molded article is obtained using ultra-high molecular weight polyethylene powder (i.e., reads on shaped article in present claim 8). The molded article is suitable for a microporous membrane for lithium ion secondary battery separators (i.e., reads on shaped article is a separator for secondary battery in present claim 9) and a fiber (paragraph 0149) which reads on the shaped article is a fiber in present claim 10).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tsujimoto (US 2019/0194431 A1 - hereafter Tsujimoto ‘431) in view of Tsujimoto et al (US 2021/0017363 A1 - hereafter Tsujimoto ‘363).
The discussion with respect to Tsujimoto ‘431 in paragraph 8 above is incorporated here by reference. Additionally, Tsujimoto ‘431 teaches that silicon content is 1 ppm or more and 80 ppm or less (paragraphs 0091-0092) which overlaps with the silicon content in present claim 5.
Tsujimoto ‘431 are silent with respect to the content of titanium (Ti) and aluminum (Al).
However, Tsujimoto ‘363 in the same field of endeavor teach ultra-high molecular weight polyethylene powder (abstract) having a titanium (Ti) content of 0.1 ppm or higher and 5 ppm or lower (i.e., overlaps with the Ti content in present claim 5), aluminum (Al) content of preferably 0.5 ppm or higher and 10 ppm or lower (i.e., overlaps with the Al content in present claim 5). The ultra-high molecular weight polyethylene powder having the amounts of metals thus adjusted have better thermal stability and produces a molded article having a better long term stability (paragraph 0069). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in Tsujimoto ‘363 and case law, it would have been obvious to one skilled in art prior to the filing of present application to adjust the content of Ti and Al in the overlapping ranges, for above mentioned advantages.
Response to Arguments
The objections, and rejections under 35 U.S.C. 112(b) and 103 as set forth in paragraphs 6, 8 and 13-14, of Office action mailed 1/22/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 11 below).
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Tsujimoto '431 discloses nothing about controlling the uniformity of swelling onset temperatures across different particle size fractions. The concept of measuring or controlling the standard deviation of swelling onset temperatures between differently sized particles is absent from Tsujimoto '431. Examiner's reasoning merely addresses how to control particle size; it does not address, let alone teach, controlling the variance of swelling behavior between particle fractions; (B) Examples of Tsujimoto '431 are considered more analogous to Comparative Examples 3 and 4 of the present specification since none of the Examples of Tsujimoto '431 implement any of the controlling means taught in in the paragraphs [0031] and [0039] in present specification for achieving the claimed Ts and standard deviation as recited in amended claim 1. Here, Comparative Examples 3 and 4 in paragraphs [0201]-[0204] of the specification do not satisfy the claimed standard deviation in claim 1 as amended; (C) Tsujimoto '431 fails to recognize, let alone address, the problem of non-uniform swelling behavior between particle fractions. Without recognition of this problem and without any teaching or suggestion to control the standard deviation of swelling temperatures, there is no motivation to modify Tsujimoto '431 to arrive at the claimed invention. By deriving data from Examples 1 to 11 shown in Table 1 of the specification, the R² value between D50 and Ts is 0.0073, and the R² value between D50 and standard deviation is 0.0096, indicating that there is almost no correlation between these claim features of the claimed invention. These experimental results indicate that, at least within the scope of data in the specification, the contribution of D₅₀ to Ts or its standard deviation is extremely small, and it cannot be said that Ts or its standard deviation can be controlled to a desired range using D₅₀ as an indicator. This shows that the Examiner's assertion - that adjusting particle size distribution would routinely optimize Ts and standard deviation - is not supported by the data of Examples in the specification.
With respect to (A), process alluded to in the present specification refers to comonomer content, catalyst amount and use of plasticizer in controlling swelling onset temperature and the standard deviation. While Tsujimoto '431 does not teach controlling uniformity of swelling onset temperatures across different particle size, it does teach using comonomer in low amounts, catalyst during polymerization and use of plasticizer in the processing of UHMPE. There is no data comparing the process in Tsujimoto '431 to the processes in the present application supposedly used to control these properties.
With respect to (B), comparative examples 3 and 4 do not appear to be analogous to the examples in Tsujimoto '431. There are several variables between the processes in Tsujimoto '431 and comparative examples 3 and 4 in present application. Also note that standard deviation in example 1 and 8 supposedly based on the inventive process has a standard deviation higher than 5.0 (i.e., 6.1 and 5.8, respectively), while comparative examples 1, 3, and 4 have a standard deviation lower than 6.1, and swelling onset temperature only slightly higher than 1300C
With respect to (C), there is no data presented showing the R2 value for the comparative examples in present application, and examples of Tsujimoto '431. It is also not clear how applicant arrived at the R2 value for inventive examples 1-11, since there is no explanation either in the present application or in amendment presented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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