DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, and 4-21 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. This is a new matter rejection as no support could be found in the disclosure as originally filed for a composition including 2 to 6 wt% of an additive masterbatch. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. The only support for "masterbatch" that could be found in the disclosure as originally filed is a blend of 80% polyethylene and 20% diatomaceous earth employed in the Examples (e.g., lines 18-20 on page 17), however the recitation in the claims encompasses a masterbatch employing any resin and any additive at any concentration. While the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species, the disclosure of a blend of 80% polyethylene and 20% diatomaceous earth is not representative of the full variety or scope of the genus recited in the claims and thus does not represent an adequate description. One of ordinary skill in the art would expect a masterbatch employing a polymer other than polyethylene as its base to have different properties, such as a different compatibility when mixed with recycled and virgin polyethylene. Additionally, one of ordinary skill in the art would expect a masterbatch employing an additive other than diatomaceous earth to have different properties depending on the additive employed. See MPEP 2163.
Response to Arguments
In view of the amendments to independent claims 1 and 15, the rejections set forth over Al-Salem (J. Material Cycles and Waste Management) and Kneale (WO 91/17886) have been withdrawn.
Newly Cited Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Herman (US 5,783,637) discloses a composition made from a blend of post-consumer resin, a virgin high density polyethylene and a virgin linear low density polyethylene (column 1, lines 53-63). The blend contains 10-95 wt% of post-consumer resin, 0-75 wt% virgin high density polyethylene copolymer, and 2.5 to 25 wt% virgin linear low density polyethylene (column 2, lines 5-8) with runs 5 to 7 having 50 wt% post-consumer resin and 50 wt% of high density polyethylene copolymer and linear low density polyethylene (Table II). The high density polyethylene resin has a density of at least about 0.94 g/mL and the linear low density polyethylene has a density of about 0.91 to 0.93 g/mL (column 2, line 32-column 3, line 16).
Harris (US 2003/0113496) discloses a composition comprising a blend of high density polyethylene and linear low density polyethylene (paragraph 0005). The high density polyethylene has a density of about 0.945 to 0.960 g/cm3 (paragraph 0006) while the linear low density polyethylene has a density of about 0.920 to 0.940 g/cm3 (paragraph 0007). The resins may be virgin, recycles or mixtures (paragraph 0009).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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