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 .
Claim Rejections - 35 USC § 112
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 1 and 10, the various “substituted” R1-R5 groups are indefinite in that it is unclear what substituents are being defined.
In claims 4 and 11, the various “substituted” R1 and R5 groups are indefinite in that it is unclear what substituents are being defined.
In claims 5 and 12, it is unclear how the alpha-olefin distinguishes over the antecedently-recited “ethylene”.
In claim 2, line 1, there is no express antecedent basis for the composition “(C)”.
In claim 4, line 3, given the semicolon in “phenol;”, it is unclear whether the (substituted) benzotriazole and (substituted) alkyl are also defining the antecedently-recited R1 and R5.
In claim 17, line 2, there is no express antecedent basis for the composition “(C)”.
In claim 18, lines 2 and 4, there is no express antecedent basis for the composition “©”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8-13 and 17-20 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2019/0248966 (Dachao).
Dachao discloses a composition obtained by mixing:
a hydrolysable silyl group-functional polyolefin such as a copolymer of ethylene and an alkenyl-functional silane [0016]/[0048] (meets Applicants’ olefin-silane interpolymer comprising at least one Si-H group); and
an antioxidant such as Irganox 1010, Irganox 1024, Cyanox 1790 [0036] (meets Applicants’ hindered phenol as described in specification page 5) (e.g., abstract, [0016-0017], [0033], [0036], [0045-0049], examples, claims).
As to claims 1, 9 and 10, Dachao expressly sets forth (Table 3) compositions comprising:
copolymer of ethylene and vinyltrimethoxy silane (Host Polymer 1) [0090] (meets Applicants’ olefin-silane interpolymer comprising at least one Si-H group); and
Irganox 1024/low density polyethylene additive package (MB-2000) [0089] (meets Applicants’ hindered phenol as described in specification page 5).
As to claims 2, 3, 17 and 18, Dachao’s exemplified compositions per Table 3 exhibit OIT. Inasmuch as the exemplified compositions meet the presently claimed composition in terms of the types of materials added, it is reasonably believed that they would inherently possess the same properties because the properties are intrinsically linked to the chemical identity and formulation of a composition. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
As to claims 4 and 11, Dachao’s exemplified Irganox 1024 has tert-butyl R1 and R5 groups.
As to claims 5 and 12, Dachao’s exemplified copolymer of ethylene and vinyltrimethoxy silane meets claimed interpolymer when the ethylene and alpha-olefin units are the same. In the alternative, the use of a copolymer of ethylene, alpha olefin and vinyltrimethoxy silane is immediately envisaged per the small olefin polymer genus per [0016] to one having ordinary skill in the art.
As to claim 8, Dachao discloses mixing the compositions at high temperatures such as 155°C [0056].
As to claim 13, Dachao’s exemplified Host Polymer 1 is copolymer comprising 98.5 wt.% ethylene and 1.5 wt.% vinyltrimethoxy silane.
As to claim 19, Dachao’s compositions per Table 3 additionally comprise a low-density polyethylene.
As to claim 20, Dachao discloses articles manufactured from the composition [0008].
Claims 7 and 15 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2019/0248966 (Dachao) described hereinabove as evidenced by US 2010/0209705 (Lin).
As to claims 7 and 15, Dachao’s exemplified copolymer of ethylene and vinyltrimethoxy silane is available as DFDA-5451 [0090]. As evidenced by Lin [0070], DFDA-5451 is a silane-ethylene copolymer having a density of 0.922 g/cm3 and a melt index of 1.5 g/10 min.
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 6, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0248966 (Dachao) described hereinabove as evidenced by US 2010/0209705 (Lin).
As to claims 6 and 14, Dachao’s exemplified copolymer of ethylene and vinyltrimethoxy silane is available as DFDA-5451 [0090]. As evidenced by Lin [0070], DFDA-5451 is a silane-ethylene copolymer having a density of 0.922 g/cm3 and a melt index of 1.5 g/10 min. A prima facie case of obviousness exists because the presently claimed density upper limit of 0.920 g/cc and Dachao’s 0.922 g/cm3 limit are close enough that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 227 USPQ 773 (MPEP 2144.05 l).
As to claim 16, Dachao does not expressly disclose the presently claimed weight ratio of component a to component b. It would have been within the purview of one having ordinary skill in the art to formulate a composition per Dachao wherein the weight ratio of the copolymer of ethylene and vinyltrimethoxy silane (Host Polymer 1) to Irganox 1024 falls within the presently claimed weight ratio in accordance with the ultimate properties desired and with the reasonable expectation of success. There is at present no evidence demonstrating criticality for the presently claimed weight ratio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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