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 .
Election/Restrictions
Upon reconsideration, US 2020/0024434 does not read upon the claimed invention and therefore the restriction requirement set forth in the Office action mailed on 6/11/26, is hereby withdrawn and all claims are rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 1-15 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 claim 1, which all claims depend upon, there is a limitation “wherein the ratio of MFI1 to MFI2 or the ratio of MFI2 to MFI1 is at least 5.8” wherein MFI and MFI2 is defined as the first and second heterophasic propylene copolymer, respectively. Towards the end of the claim, the first and second heterophasic propylene compositions are defined as either HECO-A and HECO-B or HECO-B and HECO-A respectively. This is followed by the limiting of the MFR (MFI and MFR are utilized interchangeably in the claim since they have the same conditions) ratio of HECO-A to 25 to 120 dg/min and HECO-B to 1 to 25 dg/min. Therefore, it is unclear how HECO-B can have MFR at the upper end of the range, given the upper end of the range of HECO-A. For example, if HECO-B is 25 dg/min, even if HECO-A is 120 dg/min, the first limitation cannot be met (ratio of 120/25 is 4.8, which outside the claimed range of 5.8). Therefore, it is unclear which limitation is controlling since they are contradictory. One simply cannot have values at the upper end of the second range for HECO-B and meet the first range. Which limitation is controlling? Either can be met? Both have to be met?
Claims 4-5 contain the trademark/trade name “CRYSTEX”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the analysis using a CRYSTEX QC instrument and, accordingly, the identification/description is indefinite.
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 and 3-15 of copending Application No. 18/845,726 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1 and 8, copending claim 1 teaches a process of forming a composition (thus the composition) that has all the limitations with the proviso that dependent copending claim 4 teaches the ratio of MFI1 and MFI2, dependent copending claim 4 teaches the melt flow rates of HECO-A and HECO-B, dependent copending claim 5 teaches the amounts of the components of HECO-A and dependent copending claim 6 teaches the amounts of the components of HECO-B. Given that all claims depend upon claim 1, it would have been obvious at the time of the invention to utilize all the limitations in claim 1 and thereby arrive at the claimed invention because each is taught as suitable in the claim composition.
As to claim 2, see copending claim 3.
As to claim 3-7, see copending claims 4-8, respectively.
As to claim 9-11, see copending claims 9-11, respectively.
As to claim 12, see copending claim 13.
As to claim 13, see copending claim 12.
As to claim 14, see copending claim 15.
As to claim 15, see copending claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2020/0024434 (herein Yasumoto). Yasumoto discloses a method for the preparation of an injection molded article (paragraph 2, 94-95 and examples). The method comprises providing a masterbatch by melt mixing in an extruder (see paragraph 94 and examples such as in paragraph 102). The masterbatch comprises a HECO (heterophasic propylene copolymer). See paragraph 81. The HECO/masterbatch comprises a propylene homopolymer (100% propylene units) and therein dispersed a propylene ethylene (ethylene alpha olefin) copolymer (see paragraph 93). The masterbatch also comprises additives comprising a stabilizer (paragraph 37), an inorganic filler (paragraph 87-88 and examples e.g. masterbatch M1), and an elastomer (paragraph 92 and 86, which is added to the masterbatch or copolymer composition). While it is noted that the examples do not have elastomer in the masterbatch, the broader disclosure makes suggests that the elastomer may be present in the masterbatch and thus the claimed invention would at once be envisaged.
A base composition is provided comprising a second heterophasic propylene copolymer (referred to as an essential block copolymer and HECO (see paragraph 81 and examples describing HECO1 and HECO2). The HECO comprises a propylene homopolymer (100% propylene units) and therein dispersed a propylene ethylene (ethylene alpha olefin) copolymer (see paragraph 93 and examples HECO1 and HECO2). Again, the composition is injection molded (paragraph 2, 94-95 and examples). Also, the material is melt mixed by extruder. These can be seen in the examples in table 2 and 4. Thus, the difference between Yasumoto and the claimed invention is that the claimed amounts of HECO-B are not within the claimed range and the ratio of MFI1 and MFI2 (or inverse) are not at least 5.8. There is no motivation to arrive at the claimed range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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