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 6/14/2024 is made of record. Claims 3-13 and 15 are amended; and claims 1-15 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-11, drawn to composition.
Group II, claim(s) 12, drawn to process of preparing the composition.
Group III, claim(s) 13-15, drawn to article.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I to III lack unity of invention because even though the inventions of these groups require the technical feature of composition comprising (A) a heterophasic propylene copolymer, (B) a propylene homopolymer and (C) a polyolefin-based elastomer, wherein (A) the heterophasic propylene copolymer consists of (a1) a propylene-based matrix, wherein the propylene-based matrix consists of a propylene homopolymer and/or a propylene copolymer consisting of at least 90 wt% of propylene monomer units and at most 10 wt% of ethylene and/or α-olefin monomer units, based on the total weight of the propylene-based matrix and (a2) a dispersed ethylene-a-olefin copolymer, wherein the sum of the total amount of propylene-based matrix and total amount of the dispersed ethylene-a-olefin copolymer in the heterophasic propylene copolymer is 100 wt%, (C) the polyolefin-based elastomer has a melt flow index of 15 to 50 dg/min measured according to ASTM D1238 with a 2.16 kg load at 190 °C, the total amount of (a2) and (C) with respect to the total composition is 20.0 to 26.0 wt% and the composition has a melt flow index as measured according to ISO1133-1 :2011 with a 2.16kg load at 230°C of 25 to 60 dg/min, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Herklots et al (US 2018/0237624 A1). Specifically, Herklots et al teach a composition comprising (A) a heterophasic propylene copolymer and (B) an elastomer of ethylene and α-olefin. The heterophasic copolymer consists of (a) propylene-based matrix, wherein the propylene-based matrix consists of a propylene homopolymer and/or propylene copolymer consisting of at least 70 wt% of propylene and at most 30 wt% of ethylene or an α-olefin having 4 to 10 carbon atoms, based on the total weight of propylene-based matrix, and a dispersed ethylene-α-olefin copolymer wherein sum of the total amount of propylene-based matrix and total amount of dispersed ethylene-α-olefin copolymer is 100 wt%. The dispersed ethylene-α-olefin copolymer is present in amounts of 5 to 40 wt% based on the total heterophasic propylene copolymer (abstract). The amount of elastomer (B) in the composition is in the range of 1 to 10 wt% based on the total amount of the heterophasic propylene copolymer (A) and the amount of elastomer (B) (paragraph 0059). The composition can comprise no or little amount of polypropylene homopolymer as an additional component to components (A) and (B) (paragraph 0076). See example 10, wherein the composition has MFI, measured at 230 0C and 2.16 kg load, of 31.1 dg/min (Table 2-2). The elastomer (B) has a melt flow index of 0.1 to 40 dg/min (ISO1133, 2.16 kg, 1900C) (paragraph 0057).
During a telephone conversation with Asaf Batelman on 10/8/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/489,658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to composition comprising (A) heterophasic copolymer comprising (a1) propylene based matrix and (a2) a dispersed ethylene-α-olefin copolymer, (B) propylene homopolymer and (C) polyolefin-based elastomer in substantially similar amounts, dispersed ethylene-α-olefin copolymer in overlapping amounts; total amount of (a2) and (C) in substantially similar amounts; components A, B, C and the composition comprising A, B and C have substantially similar melt flow index; polyolefin-based elastomer “C” is a copolymer of ethylene and α-olefin comonomer having 4 to 10 carbon atoms. It is the Office’s position that present claims are open to the heterophasic propylene copolymer including a post-consumer recycled heterophasic propylene copolymer.
Copending claims are silent with respect to components of the propylene-based matrix in heterophasic propylene copolymer.
Applicants attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that propylene-based matrix consists of a propylene homopolymer and/or a propylene copolymer consisting of at least 90 wt% of propylene monomer units and at least 10 wt% of comonomer selected from ethylene and α-olefin monomer units having 4 to 10 carbon atoms (page 5, lines 8-11). Therefore, it would have been obvious to one skilled in art to include propylene-based matrix consisting of a propylene homopolymer and/or a propylene copolymer consisting of at least 90 wt% of propylene monomer units and at leasst 10 wt% of comonomer selected from ethylene and α-olefin monomer units having 4 to 10 carbon atoms in the composition, of copending claims, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patent.
Claim Objections
Claims 3-9 are objected to because of the following informalities:
Claim 3 recites “5. O to 50 g/10 min” (line 3) and should read “5.0 to 50 g/10 min”.
Claim 7 recites “ethylene-1 -octene copolymer” and should read
“ethylene-1-octene copolymer”.
Claims 3-9 lack clarity in view of the grainy texture and color density being different. Applicants are requested to present claims that are clear and have same color density.
Appropriate correction and/or clarification are required.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Herklots et al (US 2018/0237624 A1).
Regarding claims 1 and 10, Herklots et al disclose a composition comprising (A) a heterophasic propylene copolymer (i.e., reads on heterophasic copolymer “A” in present claim 1), and (B) an elastomer of ethylene and α-olefin (i.e., reads on polyolefin-based elastomer “C” in present claim 1). The heterophasic copolymer consists of (a) propylene-based matrix, wherein the propylene-based matrix consists of a propylene homopolymer and/or propylene copolymer consisting of at least 70 wt% of propylene and at most 30 wt% of ethylene or an α-olefin having 4 to 10 carbon atoms, based on the total weight of propylene-based matrix, and (b) a dispersed ethylene-α-olefin copolymer wherein sum of the total amount of propylene-based matrix and total amount of dispersed ethylene-α-olefin copolymer is 100 wt% (i.e., reads on heterophasic propylene copolymer “A” consisting of propylene-based matrix “a1” and dispersed ethylene-α-olefin copolymer “a2” in present claim 1). The composition can comprise no or little amount of polypropylene homopolymer as an additional component to components (A) and (B) (paragraph 0076) which reads on propylene homopolymer “B” in present claim 1. See example 10, wherein the composition comprises heterophasic copolymer CPC2, 5% by weight of Engage 8407, and has MFI, measured at 230 0C and 2.16 kg load, of 31.1 dg/min (Table 2-2) reads on the melt flow index of composition in present claim 1. CPC2 comprises 25 wt% of dispersed phase of ethylene-propylene copolymer (paragraph 0113). The elastomer (B) has a melt flow index of 0.1 to 40 dg/min (ISO1133, 2.16 kg, 1900C) (paragraph 0057) which reads on melt flow index of polyolefin-based elastomer in present claim 1.
Herklots et al fail to disclose in a single embodiment as in present claims a total amount of (a2) and (C).
However, Herklots et al in the general disclosure teach that dispersed ethylene-α-olefin copolymer is present in amounts of 5 to 40 wt% based on the total heterophasic propylene copolymer (abstract). The amount of elastomer (B) in the composition is in the range of 1 to 10 wt% based on the total amount of the heterophasic propylene copolymer (A) and the amount of elastomer (B) (paragraph 0059). Therefore, in light of the teachings in general disclosure of Herklots, it would have been obvious to one skilled in art prior to the filing of present application to prepare a composition comprising a combination of dispersed ethylene-α-olefin copolymer and elastomer (B) in overlapping amounts (such as 20.0 to 26.0 wt% as in present claim 1 and 22.0 to 25.0 wt% as in present claim 10), absent evidence to the contrary. 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.
Regarding claim 2, the amount of elastomer (B) in the composition is in a range of 1 to 10 wt% (paragraph 0059) which reads on amount of (C) the elastomer in present claim 2). The total amount of components (A) (i.e., heterophasic propylene copolymer) and (B) is at least 70 wt%, and at least 95 wt% of the total composition (paragraph 0074). It is the Office’s position that amount of (A) in present claim 2 is implicit in the total amount of (A) and (B) in the composition. The polypropylene homopolymer may be in amounts of at most 5 wt% (paragraph 0076) which overlaps with amount of (B) in present claim 2.
Regarding claim 3, MFI of the heterophasic propylene copolymer is at least 0.1 dg/min and at most 50 dg/min measured according to ISO1133 (2.16 kg and 2300C (paragraph 0046).
Regarding claim 4, dispersed ethylene-α-olefin copolymer is present in an amount of 5 to 40 wt% based on total heterophasic propylene copolymer (paragraph 0040).
Regarding claim 5, given that heterophasic propylene copolymer comprises propylene-based polymer matrix consisting of a propylene homopolymer and has an MFI of at least 0.1 dg/min and at most 50 dg/min, 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 include propylene homopolymer with MFI in overlapping ranges of 25 to 50 dg/min for compatibility with polymer matrix of heterophasic propylene copolymer, absent evidence to the contrary.
Regarding claims 6 and 7, elastomer is preferably ethylene-1-octene copolymer (paragraph 0052) which reads on copolymer of ethylene and α-olefin monomer having 8 carbon atoms in present claim 6 and ethylene-1-octene copolymer in present claim 7.
Regarding claim 8, elastomer (B) has a melt flow index of 0.1 to 40 dg/min (ISO1133, 2.16 kg, 1900C) (paragraph 0057).
Regarding claim 9, amount of elastomer (B) in the composition is in the range of 1 to 10 wt% (paragraph 0059).
Regarding claim 11, see example 10, wherein the composition has an MFI, measured at 230 0C and 2.16 kg load, of 31.1 dg/min (Table 2-2).
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
