DETAILED ACTION
This Office Action is responsive to the amendment filed on 7/31/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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.
Claim Rejections - 35 USC § 103
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 Trolez (for claim 1).
Regarding the claimed NCLS (for claims 7, 8) and/or 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.
Response to Arguments
Applicant's arguments filed 7/31/2026 have been fully considered but they are not persuasive.
Regarding the rejection over Harris: Applicant argues that Harris does not render the claimed invention obvious because it does not explicitly teach the I21 of the virgin bimodal HDPE used in the prior art composition.
As noted earlier in this Action, it has been held that "[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). Harris teaches that the virgin bimodal HDPE component is characterized by
an I2 of 0.01 to 0.2 g/10 min (¶0022), and
and a ratio I21/I2 less than 200 (¶0025)
Based on Harris’ teachings that the I2 has a maximum value of 0.2 g/10 min and that the I21/I2 is taught to be less than 200, it is reasonably expected that an ordinary artisan would infer that the virgin bimodal HDPE component of Harris is required to have a I21 that is less than 0.2×200-i.e., less than 40 g/10 min, overlapping the claimed range. The prior art therefore implicitly teaches that the virgin bimodal HDPE has a I21 in a range that overlaps the claimed range.
Applicant argues that the prior art does not teach an operative range for the I21 value, and therefore does not render the claimed invention obvious. Applicant further argues that, because the prior art range is broader than the claimed range, it does not provide a reason to select the claimed range of 8 to 12 g/10 min.
In response, it has been held that when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability; see In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) (MPEP § 2121). As discussed in the previous paragraph, Harris implicitly requires that virgin bimodal HDPE component has a I21 in the range of less than 40 g/10 min. As the prior art does not place any further restrictions on this property, an ordinary artisan would reasonably infer that the prior art is operative over the entire range of less than 40 g/10 min. Furthermore, it is well settled that “even a slight overlap in range establishes a prima facie case of obviousness”; see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). As discussed above, an ordinary artisan will reasonably infer that Harris requires that the virgin bimodal HDPE component has an I21 value less than 40 g/10min, overlapping the claimed range. It therefore is not persuasive to argue that the prior art range is broader than the claimed range. Because the prior art range overlaps the claimed range, the normal desire of scientists to improve upon what is already generally known provides the motivation to choose the overlapping portion of the prior art range and the claimed range; see In re Peterson cited earlier in this Action.
Applicant argues that the claimed invention yields unexpected results, citing the data from the specification.
In response, it has been held that evidence of allegedly unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness; see In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, see In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required; see In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960 (MPEP § 716.02(e)).
It is first noted that comparative examples CE1 and CE6 contain 100% of Marlex HXM-50100P and PCR KWR-101, respectively. Examples CE1 and CE6 do not disclose a blend of polymers and therefore do not correspond to the composition of Harris.
With regards to comparative examples CE2 to CE5, it is noted that these examples all disclose compositions based which are blends of Marlex HXM-50100P and PCR KWR-101 (see specification: Table 3a). As disclosed in the instant specification (see specification: Table 2) and applicant’s remarks (see page 9: lines 9-11), Marlex HXM-50100P and PCR KWR-101 are both unimodal polymers. In contrast, Harris teaches that the polyethylene composition of US2003/0187083 is a melt blend of (i) a bimodal HDPE and (ii) a HDPE resin (abstract; ¶0009-0010, 0019, claim 1). The compositions of comparative examples CE2 to CE5 do not contain a bimodal resin, and therefore do not correspond to the composition of Harris.
Applicant has not provided data from any comparative examples that comprise a bimodal HDPE component within the scope of the teachings of Harris. Furthermore, note the following passage from applicant’s arguments (see page 9).
PNG
media_image1.png
245
654
media_image1.png
Greyscale
Applicant’s arguments attribute the differences in properties between the inventive examples and the comparative examples to the use of a bimodal HDPE in the inventive examples rather than the unimodal HDPE used in the comparative examples. As noted earlier in this Action, however, Harris explicitly requires that the prior art composition comprises a bimodal HDPE component. Applicant’s argument that the claimed invention allegedly yields unexpected results therefore is not persuasive, as the cited data does not compare the claimed subject matter to the closest prior art as required.
Regarding claim 9: Applicant argues that the prior art does not exemplify a blend comprising a recycled resin having either the required NCLS or melt strength. In response, it has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). Contrary to applicant’s arguments, the mere fact that Harris does not teach a specific example comprising a recycled component does not teach away from the fact that the prior art’s broad disclosure renders obvious the production of a composition comprising a virgin bimodal HDPE resin and a recycled HDPE. It is therefore unpersuasive to merely argue that the prior art does not specifically teach an example which falls within the scope of the instant claims.
With regards to the claimed melt strength, it is noted that the claimed invention is not required to have a melt strength in a particular range. As written, claim 9 states that the claimed composition should have a NCLS of at least 15 hours, a melt strength of at least 9 cN, or both. The claimed invention therefore does not require a melt strength of 9 cN as alleged by applicant. As to the NCLS, Harris teaches that AASHTO standard for corrugated HDPE pipe is a minimum NCLS of 24 hours (¶0017); notice that this range is entirely encompassed by the claimed range. Given that Harris discloses that the prior art HDPE composition is used in the production of corrugated pipe (¶0016), it is therefore reasonably inferred that the prior art composition has a NCLS of at least 24 hours as it would otherwise not be operable for its disclosed intended use; see In re Preda and In re Sasse cited earlier in this Action. As applicant has not provided evidence demonstrating that the prior art composition would not have a NCLS of 24 hours or more, applicant’s argument is not persuasive.
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 discussed earlier in this Action, the prior art renders obvious a composition comprising a recycled HDPE and a virgin bimodal HDPE having the same properties of density, I21, and MWD as the bimodal HDPE of the instant claims, wherein the prior art composition has the same NCLS, I21, and I21/I2 as the claimed composition.
Furthermore, the difference between the claimed lower limit for the amount of 85 wt% for the amount of recycled HDPE and the prior art upper limit is small-less than 5%. Because the properties of prior art’s overall composition appears to be the same as those of claimed composition and this difference is so small, it is reasonably expected that the properties of the prior art composition comprising about 80 wt% recycled HDPE would not be materially different from those of the claimed invention. Furthermore, as discussed above, none of the comparative examples provided in the specification comprise a bimodal HDPE; the cited examples therefore do not compare the claimed invention to the prior art. As such, the data presented in the specification does not demonstrate the alleged criticality of the claimed range. Applicant’s argument therefore is not persuasive.
Regarding claims 7-10: As noted earlier in this Action, Harris teaches that the minimum crack resistance for the prior art composition is 24 hours-i.e., greater than or equal to 24 hours (¶0019); note that this range is either entirely encompassed by the claimed range (see claims 8-10) or overlaps the claimed range (see claim 7). Arguments regarding the prior art examples are not persuasive, as the rejection is based on the Harris’ broad disclosure not its examples; see Merck & Co. v. Biocraft Laboratories and In re Susi cited earlier in this Action. As the prior art is encompassed by or overlaps the claimed range, it would have been obvious to prepare a composition having the claimed NCLS; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Regarding claim 6: Applicant argues that Harris teaches away from the claimed invention because it prefers a lower melt flow rate ratio. As noted above, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. Harris teaches that the flow rate ratio should not exceed 150, as compositions exceeding this value are at greater risk of failing the desired NCTL test. The prior art’s broad disclosure therefore reads on compositions wherein the flow rate ratio is up to 150, overlapping the claimed range. Applicant’s argument therefore is not persuasive because, contrary to the submitted remarks, Harris’ preference for a flow rate ratio in the range of 80 to about 125 does not teach away from its broader disclosure that the flow rate ratio should be 150 or less; see In re Susi cited earlier in this Action. Furthermore, as noted above the examples cited by applicant do not compare the claimed invention to the closest prior art and therefore do not demonstrate the criticality of the claimed range.
Regarding claim 3: Applicant argues that the prior art does not exemplify a bimodal HDPE having I21/I2, density, and I21 in the claimed ranges. This is not persuasive because, as discussed earlier in this Action, the prior art ranges for each of these properties overlaps the claimed ranges. The prior art examples do not teach away from the fact that it therefore would have been obvious to prepare a composition comprising a virgin bimodal HDPE having the required properties in view of the teachings of Harris; see Merck & Co. v. Biocraft Laboratories, In re Susi In re Wertheim, In re Woodruff, and In re Peterson all cited earlier in this Action. Furthermore, applicant’s argument that the provided examples demonstrate the criticality of the claimed range are not persuasive because, as discussed earlier in this Action, applicant has not compared the claimed invention to the closest prior art as required. The rejection over Harris is therefore maintained.
Regarding the rejection of claim 11 over Harris in view of Jaker: In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Arguments that Harris does not exemplify a bimodal HDPE meeting the three claimed properties are not persuasive because, as discussed earlier in this Action, the prior art ranges for these properties overlap the claimed ranges; see Merck & Co. v. Biocraft Laboratories, In re Susi In re Wertheim, In re Woodruff, and In re Peterson all cited earlier in this Action. Furthermore, the rejection of record does not rely on the teachings of Jaker to meet the claimed limitations of density, I21, or I21/I2. Arguments that Jaker does not teach the claimed properties therefore are not persuasive, as they do not address the basis for the rejection of record.
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. The rejection is therefore maintained.
Regarding the rejection over Trolez: Applicant argues that Trolez expresses preferences that point away from the claimed ranges for density and I21 of the virgin bimodal HDPE component of the claimed invention. As noted earlier in this Action, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). As discussed earlier in this Action, the prior art ranges for the density and I21 of the virgin bimodal HDPE component of the composition of Trolez overlap the claimed ranges. Contrary to applicant’s arguments, the prior art’s preference for higher values of density and I21 do not teach away from its broader disclosure that the ranges for these properties overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition wherein the virgin bimodal HDPE has the required density and I21 in view of the teachings of Trolez; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
With regards to the content of recycled component, the prior art range of 15 to 70 wt% overlaps the claimed for the amount of recycled HDPE. As to amended claim 8, the examiner notes that applicant’s arguments acknowledge that the prior art range overlap the claimed range (see page 14: lines 14-15). As noted earlier in this Action, it is well settled that “even a slight overlap in range establishes a prima facie case of obviousness”; see In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Contrary to applicant’s arguments, it is not persuasive to merely argue that the Trolez prefers higher ranges than those recited in the instant claims. As discussed earlier in this Action and conceded by applicant in the submitted remarks, the prior art ranges overlap the claimed ranges. This overlap is sufficient to establish a prima facie case that the prior art renders obvious the use of a virgin bimodal HDPE having the required properties; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
With regards to the claimed NCLS: As discussed earlier in this Action, “[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). Trolez 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.
With regards to the argument that the prior art composition is made using a Ziegler Natta catalyst, In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the use of a particular kind of catalyst) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As the claimed invention does not recite any limitations regarding catalysts, the use of a Ziegler Natta catalyst does not differentiate between the claimed invention and the prior art.
Furthermore, "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (MPEP §2113(II)). As discussed above, the prior art teaches a composition wherein a virgin bimodal HDPE having the same properties as the claimed bimodal HDPE and a recycled HDPE are combined with one another in the same amounts as the claimed invention. As the prior art composition appears to be substantially the same as the claimed composition, it is reasonably expected that its properties would not be materially different than those of the claimed composition. To the extent that applicant argues that the data in the specification demonstrates the unpredictability of the properties, citing NCLS at 25% PCR loading in examples IE1 and CE2, it is noted that CE2 does not comprise a multimodal HDPE as required (emphasis added) by Trolez. Comparative data based on compositions that comprise a unimodal HDPE do not correspond to the prior art composition and therefore do not demonstrate that the prior art composition would not have the required properties.
Applicant argues that the claimed invention yields unexpected results. As discussed earlier in this Action with respect to the rejection over Harris, the comparative examples disclosed in applicant’s specification are all compositions comprising a blend of a unimodal HDPE and recycled HDPE. In contrast, Trolez specifically requires that the prior art composition comprises a blend of a recycled HDPE and a virgin multimodal HDPE comprising at least two distinct fractions (i.e., a bimodal HDPE). Arguments that the claimed invention allegedly demonstrate unexpected results therefore are not persuasive, as applicant has not compared the claimed invention to the closest prior art as required.
With regards to claim 6: As discussed earlier in this Action, Trolez renders obvious a virgin multimodal polyethylene having the same I21 as the claimed virgin bimodal HDPE; note that this is indicative of the prior art bimodal HDPE having the same viscosity/flow properties as the bimodal HDPE recited in the instant claims. Furthermore, the prior art bimodal has the same molecular weight distribution as the claimed bimodal HDPE. 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 HDPE appears to have the same flow/viscosity properties and has the same molecular weight distribution as the claimed invention, it is reasonably expected that its flow rate ratio would be within the required range; see In re Fitzgerald cited earlier in this Action. Applicant has not provided any evidence to demonstrate that the prior art HDPE would not have the required property; the rejection is therefore maintained.
Regarding claim 11: Applicant’s argues that the prior art does not exemplify a composition simultaneously meeting all of the claimed requirements. This argument is not persuasive because the rejection of record is based on the prior art’s broad disclosure, not its examples. Contrary to applicant’s argument, the prior art examples do not teach away from the broader disclosure of Trolez that renders the claimed invention obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights