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 .
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.
Priority
3. This application is a 371 of PCT/EP2022/083620 11/29/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 21214227.7 12/14/2021 filed on 06/10/24.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 09/26/24 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8, 10 of copending Application No. 19/122206. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims discloses the polypropylene composition comprising the propylene polymer, wherein the instantly claimed composition comprises the same propylene polymer comprising propylene 1-hexene copolymer, propylene 1 hexene ethylene terpolymer, and propylene ethylene copolymer, and specifically regarding instant claim 1, the copending claim 1 discloses
(a) from 20% to 44% by weight of a propylene-hexene copolymer comprising from 5.0% to 8.3 % by weight of hexene derived units, based on the weight of component (a), and having a Melt Flow Rate (MFR(a)), measured according to ISO 1133-1:2011 (230°C/2.16 kg), ranging from 3.5 to 8.5 g/10 min; (b) from 25% to 45% by weight of a propylene-hexene-ethylene terpolymer comprising having from 7.2% to 12.0% by weight of hexene derived units and from 0.5% to 2.5% by weight of ethylene derived units, based on the weight of component (b), wherein the Melt Flow Rate (MFR(a+b)) of components a) + b), measured according to ISO 1133-1:2011 (230°C/2.16 kg), ranges from 3.5 to 8.5 g/10 min; and (c) from 25% to 50% by weight of a propylene-ethylene copolymer comprising having from 3.5% to 8.7% by weight of ethylene derived units, based on the weight of component (c), wherein the Melt Flow Rate of components (a)+(b)+(c), measured according to ISO 1133-1:2011 (230°C/2.161 kg), ranges from 3.5 to 12.0 g/10 min, a xylene soluble content at 25°C ranging from 13.0% to 25.0% by weight, based on the weight of (a)+(b)+(c), overlapping instant claim 1 range of 19 to 35.3 wt%; and a melting point ranging from 122°C to 132°C.
A prima facie case of obviousness exists for the propylene polymer, wherein the copending claim 1 discloses a xylene soluble content at 25°C ranging from 13.0% to 25.0% by weight, overlapping the requirement of instant claim 1. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding instant claims 2-12, copending claim 3 discloses the propylene polymer (A) comprises (based on the weight of (a)+(b)+(c)): (a) from 27% to 40% by weight of a propylene-hexene copolymer and from 6.3% to 7.8% by weight of hexene derived units, based on the weight of component (a), read on the component (a) of instant claim 2, encompassing instant claim 3 amount of 29 to 35 wt%, read on instant claim 4 and encompassing instant claim 7 amount of 6.5 to 7.4 wt% of 1-hexene; (b) from 35% to 40% by weight of a propylene-hexene-ethylene terpolymer having from 7.5% to 9.5% by weight of hexene derived units, read on the component (b) of instant claim 2, encompassing claim 3 amount of 36 to 39 wt%, and read on instant claim 5 and encompassing instant claim 8 amount of 8.2 to 9.1 wt% of 1-hexene , and from 0.7% to 2.2% by weight of ethylene derived units, read on instant claim 5, based on the weight of component (b), and (c) from 27% to 40% by weight of a propylene-ethylene copolymer having from 4.5% to 8.4% by weight of ethylene derived units, based on the weight of component (c), read on instant claims 2, 6, and encompassing instant claim range of 29 to 35 wt%, and instant claim 9 range of 4.8 to 8.1 wt%, a melting point ranging from 125° C to 131° C, and a xylene soluble content at 25° C ranging from 14.0% to 23.0% by weight, based on the weight of (a)+(b)+(c), overlapping instant claim 11 range of 18.3 to 30.1 wt%, and instant claim 12 range of 22.1 to 28.3 wt%. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding instant claim 13, copending claim 8 discloses a film comprising the propylene polymer.
Regarding instant claims 14-15, copending claim 10 discloses the film is cast or BOPP film.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In Claim 11 the lower range 18.3 wt% is boarder than base claim 1 range of 19.9 wt%. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Potential Allowable Subject Matter
9. Claims 1-15 are declared allowable over the prior art of record and if the obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
10. The following is an examiner’s statement of reasons for allowance:
Closest prior arts are Wang (US 2022/0017734) and Cavalieri (US 2015/0299445).
Claim 1 require a propylene polymer composition comprising: a) from 20 wt % to 44 wt % of a propylene 1-hexene copolymer, containing from 5.0 wt % to 8.3 wt % of 1-hexene derived units, measured by .sup.13C NMR, and having a Melt Flow Rate (MFR, measured according to ISO 1133, 230° C./2.16 kg, that is, at 230° C., with a load of 2.16 kg) from 3.5 to 8.5 g/10 min; b) from 25 wt % to 45 wt % of a propylene 1-hexene ethylene terpolymer, containing from 7.2 to 12.0% by weight, of 1-hexene derived units, measured by .sup.13C NMR and from 0.5 to 2.5 wt % of ethylene derived units, measured by .sup.13C NMR, wherein the Melt Flow Rate (MFR, measured according to ISO 1133, 230° C./2.16 kg, that is, at 230° C. with a load of 2.16 kg) of components a)+b) is from 3.5 to 8.5 g/10 min; and c) from 25 wt % to 50 wt % of a propylene ethylene copolymer, containing from 3.5 wt % to 8.7 wt % of ethylene derived units, measured by .sup.13C NMR, wherein the Melt Flow Rate (MFR, measured according to ISO 1133, 230° C./2.16 kg, that is, at 230° C., with a load of 2.16 kg) of components a)+b)+c) is from 3.5 to 12.0 g/10 min; the sum of the amount of a), b) and c) being 100; wherein: i) the xylene soluble content at 25° C. of the propylene polymer composition ranges from 19.0 wt % to 35.3 wt %; and ii) the melting point of the propylene polymer composition ranges from 122° C. to 132° C.
Wang discloses a polypropylene composition (PP) blend of: (a) 55.0 to 95.0 wt % of a propylene-ethylene random copolymer (A) having (a1) ethylene content in the range of from 1.5 to 6.0 wt %; (a2) MFR.sub.2 (230° C., 2.16 kg, ISO1133) in a range of from 1.5 to 20.0 g/10 min (a3) melting temperature Tm (DSC) is in the range of from 135° C. to 155° C.; (b) 5.0 to 45.0 wt % of a component (B) selected from a propylene-hexene random copolymer (B1), a propylene-hexene-ethylene terpolymer (B2) or a mixture thereof, having (b1) hexene content in the range of from 3.0 to 12.0 wt %; (b2) optionally an ethylene content of from 0.1 to 2.0 wt %; (b3) MFR.sub.2 (230° C., 2.16 kg, ISO1133) in a range of from 1.5 to 20.0 g/10 min;(b4) melting temperature Tm (DSC) in the range of from 125° C. to 145° C., based on the total weight of the sum of the component (A) and component (B), whereby the MFR.sub.2 (230° C., 2.16 kg, ISO1133) of the blend is in a range of from 1.5 to 20.0 g/10 min (para [0017]-[0026], [0267]), [0145], [0268]). Wang does not disclose 7.2-12 wt% of 1-hexene and 0.5-2.5 wt% of ethylene in polymer (b), 25-50 wt% of polymer (c) an XS(25°C) of 19.0-35.3 wt% (i) and a Tm of 122-132°C (ii).
Cavalieri discloses a polyolefin composition comprising: A) from 85.0 to 99.5 wt. %, based upon the total weight of the polyolefin composition, of a terpolymer, wherein the terpolymer contains propylene, ethylene and 1-hexene derived units, and wherein: (i) the content of 1-hexene derived units ranges from 1 to 5 wt. %, based upon the total weight of the terpolymer; (ii) the content of ethylene derived units is between 0.5 and 10 wt. %, based upon the total weight of the terpolymer; and (iii) the melting temperature of the terpolymer ranges from 130° C. to 145° C.; B) from 0.5 to 15 wt. %, based upon the total weight of the polyolefin composition, of a copolymer of ethylene and one monomer selected from 1-butene, 1-hexene or 1-octene; wherein the polyolefin composition has a melt flow rate (230° C./5 kg. ISO 1133) ranging from 0.2 g/10 min to 4.0 g/10 min, and wherein the combined weight of the terpolymer and the copolymer of ethylene equals 100 (claim 1). Cavalieri does not make up for the deficiency of John. The closest prior arts do not teach or suggest the claimed propylene polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
