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 .
Preliminary amendment filed 4/8/2024 is made of record. Claims 1-14 are amended and claim 15 is cancelled. Accordingly, claims 1-14 are currently pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites “said matrix phase”. For clarity and consistency within the claim, applicant is advised to rephrase it as “said semicrystalline matrix phase”. Appropriate correction and/or clarification are required.
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.
Claims 10 and 11 recites the limitation "the mineral filler" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Grestenberger et al (US 2017/0029609 A1).
Regarding claim 1, Grestenberger et al disclose, in example IE3, a polypropylene composition (i.e., reads on polypropylene composition in present claim 1) comprising 30 wt% of HECO1 and 36.5 wt% of R-PP (i.e., reads on random copolymer and its amount in present claim 1) has an MFR2 of 8.5 g/10 min (Table 2). See Table 1b, wherein HECO1 has a XCS of 29 wt% (i.e., reads on the XCS of HECO in present claim 1). The expression heterophasic propylene copolymer indicates that an elastomeric propylene copolymer is finely dispersed in a semicrystalline polypropylene. The semicrystalline polypropylene constitutes a matrix (paragraph 0062) which reads on HECO comprising a semicrystalline matrix phase and an elastomeric phase dispersed in said matrix phase in present claim 1. The propylene copolymer R-PP preferably comprises monomers copolymerizable with propylene and include C4-C12 α-olefins (paragraph 0124) which reads on random copolymer of propylene and at least one comonomer selected from the group of C4-C12 α-olefins in present claim 1.
Grestenberger et al fails to disclose polypropylene composition having the presently claimed MFR2 and amount of HECO; and process of making random copolymer.
However, regarding polypropylene composition having the presently claimed MFR2 and amount of HECO, Grestenberger et al in the general disclosure teach that polypropylene composition comprises 15 to 60 wt%, based on total weight of the composition of a heterophasic propylene copolymer (paragraphs 0006-0007) which overlaps with the wt% or HECO in present claim 1. The polypropylene composition has MFR2 measured according to ISO 1133 at 230 0C of 5.0 to 45.0 g/10 min (paragraph 0016) which overlaps with the MFR of polypropylene composition in present claim 1. 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 general disclosure of Grestenberger et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range for MFR2 (such as 20.0 to 45 g/10 min) and amount of HECO (such as 55 to 60 wt%), to prepare the polypropylene composition, absent evidence to the contrary.
Regarding process of making random copolymer, 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).
Regarding claim 2, Grestenberger et al teach that polypropylene composition comprises 20 to 40 wt% of a mineral filler (paragraph 0015). However, It is the examiner’s position that instantly claimed amount of 15 wt% and that taught by Grestenberger et al i.e. 15 wt% are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties.
Regarding claim 3, comonomer content of the propylene copolymer R-PP is 1.5 to 8.0 wt% (paragraph 0125) which is equivalent to 1.1 to 6.1 mol% when the comonomer is 1-butene.
Regarding claim 4, propylene copolymer R-PP has a MFR2 (2300C) measured according to ISO 1133 of 5.0 to 100.0 g/10 min (paragraph 0122).
Regarding claim 5, propylene copolymer (R-PP) has a xylene cold soluble fraction of 2.0 to 25 wt% (paragraph 0128).
Regarding claim 6, propylene copolymer (R-PP) has a melting temperature of 1350C to 1650C (paragraph 0126).
Regarding claim 7, propylene copolymer (R-PP) has a crystallization temperature of 1100C to 1250C (paragraph 0127).
Regarding claim 8, examples of comonomers polymerizable with propylene include 1-butene and 1-hexene ((paragraph 0124).
Regarding claim 9, comonomer content, preferably ethylene, is preferably in the range of 5.0 to 20.0 wt% (paragraph 0054).
Regarding claim 10, examples of mineral fillers include wollastonite and mica (paragraph 0015).
Regarding claim 11, mineral filler has an average particle size d50 of 0.5 to 20 μm (paragraph 0034).
Regarding claim 12, polypropylene composition has a Charpy notched impact strength at 230C of 1.0 to 20 kJ/m2 (paragraph 0046).
Regarding claim 13, injection molded articles are prepared from polypropylene composition (paragraph 0253).
Regarding claim 14, given that the compositional limitations are met by the teachings in Grestenberger et al, one skilled in art prior to the filing of present invention would have a reasonable basis to expect injection molding the polypropylene composition, of Grestenberger et al, to result in a foamed article. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Conclusion
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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