DETAILED ACTION
The examiner assigned to the current application has been changed. The new examiner's name and contact information are stated at the end of this action. Applicant is requested to take note of the change.
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
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/3/26.
With respect to the restriction requirement, Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 3/3/26 is acknowledged.
Per the species election made by the previous examiner, the election is withdrawn and all species are examined.
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 5-6 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.
Claims 5-6 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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0024434 (herein Yasumoto)
As to claim 1, 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. See paragraph 94 and examples.
See specifically, examples in tables 2 and 4 such as example A4 comprises the HECO of masterbatch M2 (which has a MFR1, same conditions, of 10 g/min in table 1) and HECO1 (which has an MFR2, same conditions, 37 g/min, paragraph 117), HECO2 (which has an MFR2, same conditions, 25 g/min, paragraph 123), and HECO3 (MFR2 98 g/min, paragraph 155). Thus, the ratio MFR1 and MFR2 are different.
As to claim 2, as elucidated above, example B6 comprises the HECO of masterbatch M2 (which has a MFR1, same conditions, of 10 g/min in table 1) and HECO3 (MFR2 98 g/min, paragraph 155). Thus, the ratio is about 10 and within the claimed range. Also note the other examples.
As to claim 3, the impact strength of the first HECO is 17.2 (example M1, note the various examples in tables 1 and 3 that range from 14 to 48.1 KJ/m2 and the MFI ranges from 7.7 to 13 g/min. While the second HECO is not disclosed, the MFI2 is always higher. Further, in the examples, the total impact strength (including other components) is either higher or lower depending on the examples in table 2 and 4). While not directly the second HECO impact strength, since the HECO is a majority component, it stands to reason that the impact strength is mainly influenced by the second HECO. Since at least some of the examples have a second impact strength lower/higher than the first, it stands to reason that the claimed parameters would be met in at least some of the examples.
As to claim 10, the second HECO can be 100 wt% of the base composition, since all other components are optional. See paragraph 92.
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0024434 (herein Yasumoto)
The discussion with respect to Yasumoto set-forth above is incorporated herein by reference.
As to claim 11, the ratio is taught as 2-70: to 98 to 30, which substantially overlaps the claimed range. See paragraph 92. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Double Patenting
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 1-5 and 7-11 of copending Application No. 18/845,154 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1, copending claim 14 is identical and therefore anticipates the instant claim.
As to claim 2, copending parent claim 1 discloses the claimed ratio.
As to claim 3, see copending claim 2.
As to claim 4, see copending parent claim 1 for the melt flow rate and copending claim 3 for the impact strength.
As to claim 5, see parent claim 1 discloses the claimed amounts and copending claim 4 for the viscosities.
As to claim 6, see parent claim 1 discloses the claimed amounts and copending claim 5 for the viscosities.
As to claim 7, see copending claim 6.
As to claim 8, see copending claim 7.
As to claim 9, see copending claim 9.
As to claim 10, see copending claim 10.
As to claim 11, see copending claim 11.
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 2020/0347216 (herein Kniesel).
Kniesel discloses a process for the preparation of an injection molded article. See paragraph 63 and examples. First, a masterbatch is formed comprising additives with a carrier material that is the polymeric carrier material (PCM). See paragraph 413. However, the PCM is not a heterophasic propylene copolymer as claimed and therefore doesn’t read on the claimed invention.
Conclusion
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.
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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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