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.
Election/Restrictions
Applicant’s election of the invention of Group I, claims 1-11, in the reply filed on 12/12/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed 3/20/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not provide copies of cited foreign reference #10 or non-patent literature reference #1. It has been placed in the application file, but the information referred to therein has not been considered with respect to these documents.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-11 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.
Regarding claim 4: Claim 4 recites the phrase “of any of Claims 1”. The phrase “of any of Claims” implies that the claim is a multiple dependent claim; however, claim 1 is the only parent claim listed. The scope of the claim is therefore indefinite, as it is unclear if claim 4 is intended to be a multiple dependent claim and, if so, what other claims it can depend from.
Regarding claims 5-11: Note that claims 5 and 7-11 all recite either “of any of Claims 1” or “of any one of Claims 1”. Per the same rationale outlined above with respect to claim 4, the claims are therefore indefinite because it is unclear whether they are intended to be multiple dependent claims.
Claim 6 depends from claim 5 and does not correct this deficiency; claim 6 is therefore indefinite per the same rationale as claim 5.
Regarding claim 7: Claim 7 depends from claim 1, and states that the composition comprises at least 45 wt% PCR high density polyethylene (HDPE). As currently written, it is unclear whether the PCR (i.e., post-consumer recycled; see specification page 1: line 19) is intended to further limit the recycled HDPE recited in independent claim, or if it is intended to be a separate component.
Regarding claim 8: Claim 8 depends from claim 1, and states that the composition comprises at least 70 wt% PCR HDPE. As currently written, it is unclear whether the PCR (i.e., post-consumer recycled; see specification page 1: line 19) is intended to further limit the recycled HDPE recited in independent claim, or if it is intended to be a separate component.
Regarding claim 9: Claim 7 depends from claim 1, and states that the composition comprises at least 85 wt% PCR HDPE. As currently written, it is unclear whether the PCR (i.e., post-consumer recycled; see specification page 1: line 19) is intended to further limit the recycled HDPE recited in independent claim, or if it is intended to be a separate component.
Claims 7-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The examiner notes that these rejections are based on the interpretation that the PCR HDPE recited in each of claims 7-9 is intended to refer back to the recycled HDPE of claim 1.
Regarding claim 7: Claim 7 states that the composition contains at least 45 wt% PCR HDPE; note that this range reads on all values greater than 45 wt%. Independent claim 1, however, states that the maximum amount of recycled HDPE is 90 wt%. Claim 7 therefore fails to further limit the scope of the parent claim, as it impermissibly broadens the scope of the invention to read on compositions wherein the amount of recycled HDPE is greater than 90 wt%.
Regarding claim 8: Claim 8 states that the composition contains at least 70 wt% PCR HDPE; note that this range reads on all values greater than 70 wt%. Independent claim 1, however, states that the maximum amount of recycled HDPE is 90 wt%. Claim 8 therefore fails to further limit the scope of the parent claim, as it impermissibly broadens the scope of the invention to read on compositions wherein the amount of recycled HDPE is greater than 90 wt%.
Regarding claim 9: Claim 9 states that the composition contains at least 85 wt% PCR HDPE; note that this range reads on all values greater than 85 wt%. Independent claim 1, however, states that the maximum amount of recycled HDPE is 90 wt%. Claim 9 therefore fails to further limit the scope of the parent claim, as it impermissibly broadens the scope of the invention to read on compositions wherein the amount of recycled HDPE is greater than 90 wt%.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
Regarding claims 4, 5, and 7-11: As discussed earlier in this Action, it is unclear whether the instant claims are intended to be multiple dependent claims. Given that each claim only cites a single claim as its parent and the case history in which applicant specifically deleted the references to additional parent claims (see the amended claims listing submitted on 5/8/2025), the examiner notes these claims have all been interpreted as depending solely from independent claim 1 for the purposes of examination on the merits.
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.
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Harris et al, US2003/0187083.
Harris discloses a composition comprising a blend of (i) a bimodal high density polyethylene (HDPE) and (ii) a HDPE (abstract).
Regarding the claimed recycled HDPE: Harris teaches that the prior art HDPE may be a recycled polymer (¶0026) (for claim 1). The recycled HDPE is included in an amount in the range of 10 to 80 wt%, overlapping the claimed range (¶0031). The prior art recycled HDPE therefore corresponds to the claimed recycled HDPE (for claim 1).
Regarding the claimed bimodal HDPE: The bimodal HDPE of the prior art composition can be a virgin resin (for claim 1) (¶0023) and is characterized by a density in the range of 0.941 to 0.958 g/cm3, overlapping the claimed range (for claim 1) (¶0022). Harris further teaches that the bimodal HDPE is characterized by a melt flow index (I2) (190 °C, 2.16 kg) of 0.01 to 0.2 g/10 min and a ratio of the melt index (I21) (190 C, 21.6 kg) to I2 less than 200, overlapping the claimed range (for claim 3) (¶0022, 0025). Based on the prior art disclosure that (a) the maximum I2 value is 0.2 g/10 min and (b) the I21/I2 is less than 200, an ordinary artisan can calculate that the prior art bimodal HDPE has a I21 value less than 40 g/10 min, overlapping the claimed range (for claim 1). The bimodal HDPE is included in an amount in the range of 20 to 90 wt% (¶0031), overlapping the claimed range (for claim 1). The prior art bimodal HDPE therefore corresponds to the claimed bimodal HDPE (for claim 1).
Regarding claim 2: As noted above, the prior art HDPE can be a recycled polymer. Harris further teaches that the HDPE can be from applications such as bottles (¶0026), corresponding to the claimed post-consumer resin.
Regarding claims 4-6: The prior art composition has a melt index (I2) of about 0.1 to 0.4 g/10 min (¶0032) and a ratio (I21/I2) not higher than 150, overlapping the claimed range (for claim 6) (¶0030); the prior art composition can therefore have an I21 less than 60 g/10 min, overlapping the claimed range.
Furthermore, note that Harris teaches that it is known in the art that the ratio I21/I2 is an accepted test method for the determination of molecular weight distribution and that the molecular weight distribution is narrower (i.e., closer to 1) as the ratio (I21/I2) becomes smaller (¶0025). As the prior art renders obvious a ratio I21/I2 that is in the same range as the claimed invention, it is reasonably expected that its molecular weight distribution would be in the claimed range (for claim 5).
Regarding claims 7-10: The prior art composition comprises the recycled polyethylene in an amount of about 10 to about 80 wt% (¶0031), overlapping the claimed range (for claims 7, 8). Furthermore, note that Harris teaches that (a) the prior art composition meets all of the AASHTO standards for profile and corrugated HDPE pipe (0008) and (b) AASHTO standards recommend a minimum notched constant ligament stress (NCLS) value of 24 hours (¶0017).
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Given that Harris teaches that the prior art composition meets all AASHTO standards, one of ordinary skill in the art would reasonably infer that it meets the standard that the NCLS value is at least 24 hours, overlapping the claimed range (for claims 7-10).
Harris does not specifically teach a composition comprising the claimed amounts of HDPE and bimodal HDPE having the recited properties of density and I21.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare the claimed composition in view of the teachings of Harris (for claims 1, 7, 8).
Regarding claim 9: It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). As noted above, the prior art composition comprises up to about 80 wt% recycled HDPE; note that the inclusion of the word “about” extends the prior art range to include values greater than 80 wt%. Given that the difference between the prior art value and the claimed value is so small (i.e., less than 5%) and that, as discussed in the preceding paragraphs, the prior art composition is reported to have the same properties such as I2, I21/I2, NCLS rating as used to define the claimed composition, it is reasonably expected that the properties of the prior art composition would not be materially different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating the criticality of the claimed range.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Harris et al, US2003/0187083, as applied to claims 1-4 and 7-10 above, and further in view of Jaker et al, US2010/0133714.
As discussed earlier in this Action, Harris teaches the production of a composition comprising a recycled HDPE and a virgin bimodal HDPE, wherein said bimodal HDPE is characterized by is characterized by a density in the range of 0.941 to 0.958 g/cm3, overlapping the claimed range; a calculated I21 value less than 40 g/10 min, overlapping the claimed range, and a ratio (I21/I2) less than 200, overlapping the claimed range (for claim 11). Note that Harris further depicts that the bimodal HDPE has a molecular weight distribution curve containing 2 peaks (¶0024; Figure 1); an ordinary artisan will recognize that this corresponds to the presence of a high molecular weight (HMW) (co)polymer component and a low molecular weight (LMW) (co)polymer component.
Harris is silent regarding the use of a bimodal HDPE wherein the HMW and LMW (co)polymer components are ethylene/hexene copolymers.
Jaker discloses the production of a HDPE composition (abstract, ¶0007) comprising a high molecular weight (HMW) component and a low molecular weight (LMW) component, wherein the HMW (¶0016) and LMW (¶0018) components may both be copolymers of ethylene and an olefin comonomer such as a 1-hexene (¶0015). Jaker teaches that such bimodal HDPE can be used in the production of films (¶0004, 0054).
It has been held that the selection of a known material based on its suitability for its intended is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). As taught by Jaker, it was known in the art that copolymers of ethylene and olefin comonomers such as 1-hexene were suitable for use as the HMW and LMW components of film grade HDPE resins. Note that Harris teaches that the bimodal HDPE used in the composition of US2003/01870873 is a film grade resin (¶0023). As such, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Harris by using ethylene/hexene copolymers as the HMW and LMW components of the bimodal HDPE, with a reasonable expectation of obtaining a final composition having the desired properties.
Claim(s) 1, 2, 4-8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Trolez et al, EP3074464.
Trolez discloses a composition comprising a PCR HDPE, corresponding to the claimed recycled HDPE (for claims 1, 2), and a virgin multimodal polyethylene. The prior art virgin multimodal polyethylene comprises at least two fractions, corresponding to a bimodal resin (for claim 1) (page 8: lines 15-17), and is characterized by a density 0.953 to 0.960 g/cm3, overlapping the claimed range (for claim 1), and a high load melt index (190, 21.6 kg) in the range of 5 to 75, overlapping the claimed range (for claim 1) (page 2: lines 9-27). The prior art virgin multimodal polyethylene therefore corresponds to claimed virgin bimodal HDPE (for claim 1).
Regarding the amounts of each polymer: the prior art composition comprises 15 to 70 wt% of the PCR HDPE and (deduced) 30 to 85 wt% of the virgin multimodal polyethylene (page 2: lines 9-27); note that these ranges overlap the claimed ranges (for claims 1, 7, 8).
Regarding claim 4: The prior art composition has a melt index 20 to 50 g/10 min (page 5: lines 25-26).
Regarding claims 5, 6: The virgin multimodal polyethylene has a molecular weight distribution of at least 10 (page 5: lines 5-8), overlapping the claimed range (for claim 5). Furthermore, as discussed in paragraphs 28 to 29 of this Action, it is known in the art that the flow rate ratio is a measurement of the molecular weight distribution. As the prior art renders obvious a composition having the same molecular weight as the claimed invention, it is reasonably expected that its flow rate ratio would be within the required range (for claim 6).
Regarding claim 11: As discussed in the preceding paragraphs, the prior art virgin bimodal polyethylene has the same properties of density, I21, and ratio I21/I2 s recited in the instant claims. Further note that Trolez teaches that it can be prepared via a process comprising the steps of copolymerizing ethylene and an olefin comonomer in a first reactor to form a first fraction, followed by copolymerizing ethylene and an olefin comonomer in a second reactor to form the second fraction. 1-Hexene is disclosed as the most preferred embodiment of the comonomer (page 7: line 48 to page 8: line 5). One of ordinary skill in the art will recognize that this reads on the production of a bimodal polymer wherein both the HMW and LMW components are ethylene/hexene copolymers.
Trolez does not specifically disclose a composition comprising the claimed amounts of each polymer wherein the multimodal polyethylene has a density and melt index in the required ranges.
As noted above, the prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare the claimed composition in view of the teachings of Harris (for claim 1).
Regarding the claimed NCLAS (for claims 7, 8), melt strength (for claim 8), and ESCR(10% surfactant) (for claim 10): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the preceding paragraphs, the prior art renders obvious a composition comprising the same components combined in the same ratio as the claimed invention. As the prior art composition appears to be identical to the claimed invention, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765