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 .
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.
Priority
This application has PRO 63/631,829 04/09/2024; This application has PRO 63/626,453 01/29/2024.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 06/16/25 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, 10-20 of copending Application No. 18/227011 in view of Liu (US 2023/0114045).
Regarding instant claims 1, 11-12, 14, copending claim 1 discloses a composition comprising a blend of: a) from 40 wt. % to 95 wt. % of high density polyethylene (“HDPE”) recyclate component such as virgin HDFE or HDPE recyclates having: i) a density in the range of from 0.955 g/cm.sup.3 to 0.966 g/cm.sup.3, ii) a melt index (I.sub.5) in the range of from 1.50 g/10 min. to 3.5 g/10 min., fall into instant claim 1 range of from 20 to 95 wt%, and 0.950 g/cm.sup.3 to 0.970 g/cm.sup.3, and from 1.50 g/10 min. to 7.5 g/10 min; and iii) an environmental stress crack resistance (“ESCR”) F50 from about 10 hours to about less than 24 hours in 100% Igepal; and b) from 5 wt. % to 60 wt. % of a second HDPE such as virgin PE component having: i) a density in the range of from 0.947 g/cm.sup.3 to 0.954 g/cm.sup.3; ii) an I5 in the range of from 0.10 g/10 min. to 1.5 g/10 min, fall into instant claim 1 range of from 5 to 80 wt%, and 0.938 g/cm.sup.3 to 0.954 g/cm.sup.3, and from 0.1 g/10 min. to 2.0 g/10 min ; and iii) an ESCR F50 of greater than or equal to 1,000 hours in 10% Igepal; wherein weight percentages are based on the total weight of the filled HDPE recyclate component and the virgin PE component, copending claims 14-15 discloses the HDPE recyclate component comprises one or more HDPE recyclates, and copending claim 17 discloses the virgin PE component comprises one or more virgin PE homopolymers, one or more virgin PE copolymers, as such the virgin PE, wherein copending dependent claim 12 discloses the blend has a flexural modulus in the range of 165,000 to 215,000 PSI, overlapping instant claim 1 range of 140,000 to 170,000 PSI, and copending claim 11 discloses blend has a melt index (I.sub.5) in the range of from 0.6 g/10 min. to 2.5 g/10 min., fall into instant claim 1 range of from 0.2 to g/10 min. to 4.0 g/10 min. Copending claims do not disclose the filled HDPE recyclate comprises ash content of about 5,000 ppm to about 20,000 ppm.
However, Liu discloses a HDPE polyethylene blends comprising filled PE recyclate and virgin PE in the field of the cable/conduit, wherein the PE recyclates comprises ash content of from 0.1 to 2.0 wt% (para [0001], [0117], table A), encompassing claimed 5,000 ppm to 20,000 ppm. It has been noted that the ash content improves the tensile modulus, hardness, and flexural strength.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify copending claims with ash content of from 0.1 to 2.0 wt%, as taught by Liu to improve the tensile modulus, hardness, and flexural strength of the composition.
A prima facie case of obviousness exists for the composition, where the copending claims discloses the blend has a flexural modulus in the range of 165,000 to 215,000 PSI, overlapping the requirement of instant claim 1. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Regarding instant claim 2, the copending claims 2, 14-15, 17 discloses the HDPE component is present in an amount in the range of from 50 wt. % to 90 wt. % and the virgin PE component is present in an amount in the range of from 10 wt. % to 50 wt. %.
Regarding instant claim 3, the copending claims 3, 14-15, 17 discloses the HDPE component is present in an amount in the range of from 60 wt. % to 85 wt. % and the virgin PE component is present in an amount in the range of from 15 wt. % to 40 wt. %.
Regarding instant claim 4, the copending claim 5 discloses the filled HDPE recyclate component has one or more of: a) a number average molecular weight (M.sub.n) in the range of from 8,000 g/mol to 20,000 g/mol; b) a weight average molecular weight (M.sub.w) in the range of from 100,000 g/mol to 170,000 g/mol; c) a molecular weight distribution (MWD; M.sub.w/M.sub.n) in the range of from 5 to 14; d) a high load melt index (HLMI) in the range of from 35 g/10 min. to 90 g/10/min.; and e) a 2% flexural modulus in the range of from 170,000 PSI to 230,000 PSI, fall into instant claimed range of 145,000 PSI to 230,000 PSI.
Instant claims 5, 7, 13, 15-17 are essentially same as copending claims 7, 10, 16, 18-20.
Regarding instant claim 6, the copending claim 8 discloses the virgin PE component has one or more of: a) a number average molecular weight (M.sub.n) in the range of from 9,000 g/mol to 25,000 g/mol; b) a weight average molecular weight (M.sub.w) in the range of from 150,000 g/mol to 350,000 g/mol; c) a molecular weight distribution (MWD) in the range of from 10 to 40; d) a high load melt index (HLMI) in the range of from 5 g/10 min. to 40 g/10/min.; and e) a 2% flexural modulus in the range of from 120,000 PSI to 170,000 PSI.
Regarding instant claim 8, the copending claim 11 discloses the blend has ESCR F50 in the range of from 24 hours to greater than 1,000 hours in 100% Igepal, fall into instant claimed range of 10 hours to 1,000 hours.
Regarding instant claims 9-10, the copending claim 12 discloses the blend has one or more of: a) a number average molecular weight (M.sub.n) in the range of from 10,000 g/mol to 20,000 g/mol; b) a weight average molecular weight (M.sub.w) in the range of from 130,000 g/mol to 230,000 g/mol; c) a molecular weight distribution (MWD) in the range of from 8 to 20; d) an overall polydispersity ratio (PDR) in the range of from 15 to 60; e) a zero shear viscosity (η.sub.0) in the range of from 1.0×10.sup.6 to 3.0×10.sup.7; and, f) a long chain branching index (LCBI) in the range of from 0.3 to 1.3, and copending claim 13 discloses the blend has one or more of: a) a molecular weight distribution (MWD) in the range of from 10 to 15; b) a high load melt index (HLMI) in the range of from 20 g/10 min. to 40 g/10/min.; and c) a 2% flexural modulus in the range of from 175,000 PSI to 205,000 PSI.
It has been noted that the copending claimed both HDPE and the final blend products and characteristics/properties are obvious except the tensile strength and ESCR F10 value in 10% Igepal of instant claim 1. Since the instant claimed composition and characteristics are obvious over the copending claims, the properties such as he tensile strength and ESCR F10 value in 10% Igepal would necessarily be the same as claimed. If there is any difference between the product of copending claims and the product of the instant claims, the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
In claims 18-19, the recitation “A conduit” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the instant case, the preamble in claims 18-19 merely recites the intended use of the composition, wherein the copending claims can meet this future limitation by merely being capable of such intended use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claims 1-19 are objected to because of the following informalities:
In claim 1 the recitation “ii)” is repeated in lines 5-6.
Claims 2-19 depends from objected claim 1.
Appropriate correction is required.
Potential Allowable Subject Matter
8. Claims 1-19 are declared allowable over the prior art of record and if the obviousness-type double patenting present, supra, is overcome (e.g. by Applicant filing of a Terminal Disclaimer).
9. The following is an examiner’s statement of reasons for allowance:
The closest prior arts are Cottle (US 2015/025195), Kulshreshtha (EP 2746334), and Bellehumeur (US 2024/0301182).
Claim 1 require a composition comprising a blend of: a) from 20 wt. % to 95 wt. % of a filled high density polyethylene (“HDPE”) recyclate component having: i) a density in the range of from 0.950 g/cm.sup.3 to 0.970 g/cm.sup.3; ii) an ash content of about 5,000 ppm to about 20,000 ppm; ii) a melt index (I.sub.5) in the range of from 1.50 g/10 min. to 7.0 g/10 min.; and iii) an environmental stress crack resistance (“ESCR”) F10 from about 10 hours to about 24 hours in 10% Igepal; and b) from 5 wt. % to 80 wt. % of a virgin PE component having: i) a density in the range of from 0.938 g/cm.sup.3 to 0.954 g/cm.sup.3; ii) an I.sub.5 in the range of from 0.10 g/10 min. to 2.0 g/10 min.; and iii) an ESCR F50 of greater than or equal to 1,000 hours in 10% Igepal; wherein weight percentages are based on the total weight of the filled HDPE recyclate component and the virgin PE component, and wherein the composition has a flexural modulus in the range of 140,000 to 170,000 PSI and a tensile strength at yield in the range of 3,000 to 4,000 PSI, an I.sub.5 in the range of from 0.2 g/10 min. to 4.0 g/10 min, and an ESCR F10 of greater than or equal to 96 hours in 10% Igepal.
Kulshreshtha discloses high-density polyethylene (HDPE) blend comprising: (i) 90-99.5 wt.% of a lower molecular weight (LMW) multimodal HDPE component having a density of at least 940 kg/m3 having a melt flow rate (MFR2) of 0.1 g/10 minutes or more, and (ii) 0.5-10 wt.% of a higher molecular weight (HMW) multimodal HDPE component different from component (i) having a density of at least 940 kg/m³ and having an MFR5 of less than 2 g/10 minutes, wherein the blend has a density of at least 940 kg/m3 and an environmental stress crack resistance (FNCT) of at least 30 hours measured according to the full notch creep test (FNCT) (ISO 16770) at 50°C and 6 MPa (claim 1, example 2). Kulshreshtha does not disclose at least claimed I5, environmental stress crack resistance, flexural modulus, tensile strength, and ash content.
Cottle discloses a bimodal high-density polyethylene (HDPE) polymer
composition comprising: base resin having density of 945-955 kg/m³, and containing
ethylene polymer (A): having density of at least 968 kg/m³ in an amount of 45-55 wt.%,
and ethylene polymer (B): having density lower than density of polymer (A) (claims, examples). Cottle does not cure the deficiency of Kulshreshtha.
Bellehumeur discloses a bimodal polyethylene composition comprising: (i) from 10 to 60 weight percent of a first ethylene copolymer having a density of from 0.880 to 0.920 g/cm.sup.3, a molecular weight distribution, M.sub.w/M.sub.n of from 1.7 to 2.7, and a weight average molecular weight, M.sub.w of from 100,000 to 250,000 g/mol; (ii) from 90 to 40 weight percent of a second ethylene copolymer having a density of from 0.945 to 0.965 g/cm.sup.3, a molecular weight distribution, M.sub.w/M.sub.n of from 1.7 to 2.3, and a weight average molecular weight, M.sub.w of from 15,000 to 75,000 g/mol; wherein the bimodal polyethylene composition has a density of from 0.940 to 0.949 g/cm.sup.3; a melt index, I.sub.2 of greater than 5.0 g/10 min, a long chain branching factor, LCBF of greater than 0.0010, and an environmental stress crack resistance, ESCR as determined by ASTM D1693 in 100% IGEPAL CO-630 under condition B of greater than 1000 hours (para 0005], claim 1) and do not cure the deficiency of Kulshreshtha. Closest prior arts do not teach or suggest a composition comprising in combination all features according to claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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