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 .
Examiner’s Comments
Applicants’ response filed on 7/28/2025 has been fully considered. Claims 4, 9, 13, 16, 19, 21-22 and 25 are cancelled and claims 1-3, 5-8, 10-12, 14-15, 17-18, 20, 23-24 and 26-28 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/28/2025 has been entered.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-3, 5-8, 10-12, 14-15, 17-18, 20, 23-24 and 26-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the limitations “core layer consisting essentially of one or more polypropylene homopolymers”, “tie layers each consisting essentially of one or more polypropylene homopolymers” and “skin layers each consisting of propylene-based polymers”. Paragraphs [0009], [0015], [0022]-[0023] and [0026] of Applicant’s Specification disclose the core layer consisting essentially of biaxially oriented polypropylene where the polymer refers to homopolymers, the tie layers having the same composition as the core layer and each skin layer having the same composition as the core layer.
However, this does not teach the core layer consisting essentially of more than one polypropylene homopolymer, the tie layer consisting essentially of more than one polypropylene homopolymer and the skin layers each consisting of propylene-based polymers.
Claims 2-3, 5-8, 10-12, 14-15, 17-18, 20, 23-24 and 26-28 are rejected due to their dependency on claim 1.
Regarding claim 26, there is no support for the limitation “the core layer consists of more than one of the one or more polypropylene homopolymers”. Paragraphs [0009] and [0015] of Applicant’s Specification disclose the core layer consisting essentially of biaxially oriented polypropylene where the polymer refers to homopolymers. However, this does not teach the limitation “the core layer consists of more than one of the one or more polypropylene homopolymers”.
Regarding claim 27, there is no support for the limitation “the tie layer consists of more than one of the one or more polypropylene homopolymers”. Paragraphs [0009] and [0022]-[0023] of Applicant’s Specification disclose the tie layers having the same composition as the core layer. However, this does not teach the limitation “the tie layer consists of more than one of the one or more polypropylene homopolymers”.
Regarding claim 28, there is no support for the limitation “the tie layer consists of more than one of the one or more polypropylene homopolymers”. Paragraphs [0009] and [0022]-[0023] of Applicant’s Specification disclose the tie layers having the same composition as the core layer. However, this does not teach the limitation “the tie layer consists of more than one of the one or more polypropylene homopolymers”.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-7, 10-12, 14, 17-18, 23-24 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (WO 2009/097175 A1).
Regarding claim 1, Lu discloses a multi-layer film oriented in one or more directions and having one or more outer surfaces metallized by deposition of a metal layer (biaxially oriented metallized film; paragraph [0050], [0103] and [0104]), wherein the multi-layer film comprises a base film (biaxially oriented base film having a first side and second side; paragraph [0050]) comprising a core layer (paragraph [0050]), wherein the core layer is isotactic polypropylene (core layer consisting essentially of polypropylene homopolymer; paragraph [0069]), one or more tie layers (paragraph [0050]), wherein the tie layer comprises isotactic polypropylene (paragraph [0081]), one or more skin layers (paragraph [0050]), wherein the one or more skin layers comprises propylene homopolymer (paragraph [0086]); wherein the additives are present in one or more layers of the multi-layer film (paragraph [0091]), wherein the additives comprise anti-block agents (biaxially oriented metallized film having no blocking tendency and additive in print-receptive coating; paragraphs [0091]), one or more outer surfaces metallized formed by deposition of a metal layer (metallized layer on the first side; paragraphs [0103] and [0104]), one or more top coatings applied to an outermost surface (print-receptive coating on the second side and located directly on one of the skin layers save optional inclusion of the primer therebetween; paragraph [0105]); wherein the metallized surface is further coated or printed then overcoated with a varnish (paragraph [0104]), wherein the top coating is for printing (paragraph [0105]), wherein the top coating comprises acrylic polymers (print-receptive coating consists of one or more acrylic polymers; paragraph [0105]), wherein the base film is formed by orienting a base film in a first direction to provide a uniaxially oriented film (paragraph [0015]), coating at least a portion of the uniaxially oriented film with a polyolefin dispersion to provide a coated uniaxially oriented film (Abstract) and orienting the coated uniaxially oriented film in a second direction to provide a coated biaxially oriented film (paragraph [0015]).
The combination of the core layer, tie layers and skin layers reads on the claimed biaxially oriented base film. The top coating comprising acrylic polymers reads on the claimed print-receptive coating consisting of acrylic polymers and optionally additives as any additional component with the acrylic polymers would be considered to be an additive. The anti-block agents in one or more layers of the multi-layer film reads on the claimed biaxially oriented film having no blocking tendency.
Lu does not appear to explicitly disclose a specific example of the tie layers each consisting of polypropylene homopolymer and the skin layers each consisting of propylene-based polymer.
However, it would have been obvious to one of ordinary skill in the art to choose the polymer in each of the tie layers to be isotactic polypropylene and the polymer in each of the skin layers to be propylene homopolymer in order to provide a specific example of the tie layers each consisting of polypropylene homopolymer and the skin layers each consisting of propylene-based polymer.
Since the structure and materials of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the multi-layer film of Lu would inherently have a distinctness of image decrease of ≤ 15% in a machine direction for the metallized layer when measured atop the print-receptive coating as compared to a metallized layer without the print-receptive coating and a distinctiveness of image of the base film being between 40 and 80 in the machine direction. Paragraph [0070] and Figure 5 of Applicant’s Specification compares metallized films before and after application of the print receptive coating and shows the decrease of DOI of ≤ 15% in the MD and ≤ 30% in the TD. This shows that the print-receptive coating on the metallized film inherently provides the claimed decrease of DOI in the MD.
Regarding claim 2, Lu discloses the multi-layer film comprising the metallized surface is further coated or printed then overcoated with a varnish (application of the print-receptive coating subsequent to application of metallic composition to the metallized layer; paragraph [0104]).
Regarding claim 3, Lu discloses the multi-layer film comprising the one or more skin layers comprising an ethylene-propylene-butylene terpolymer (propylene-based terpolymer; paragraph [0086]).
Regarding claim 5, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the multi-layer film of Lu would inherently have a distinctness of image decrease of ≤ 30% in a transverse direction for the metallized layer when measured atop the print-receptive coating as compared to a metallized layer without the print-receptive coating. Paragraph [0070] and Figure 5 of Applicant’s Specification compares metallized films before and after application of the print receptive coating and shows the decrease of DOI of ≤ 15% in the MD and ≤ 30% in the TD. This shows that the print-receptive coating on the metallized film inherently provides the claimed decrease of DOI in the TD.
Regarding claim 6, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the multi-layer film of Lu would inherently have a distinctness of image measurement greater in a transverse direction than in the machine direction. Paragraph [0070] and Figure 5 of Applicant’s Specification compares metallized films before and after application of the print receptive coating and shows the decrease of DOI of ≤ 15% in the MD and ≤ 30% in the TD. This shows that the print-receptive coating on the metallized film inherently provides the claimed decrease of DOI in the MD.
Regarding claim 7, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the multi-layer film of Lu would inherently have a distinctness of image decrease of ≥ 40% in a machine direction for the metallized layer when measured atop the print-receptive coating. Paragraph [0070] compares metallized films before and after application of the print receptive coating and shows the decrease of DOI of 50% in the MD and 30% in the TD. This shows that the print-receptive coating on the metallized film inherently provides the claimed decrease of DOI in the MD.
Regarding claim 10, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1 and that the metal layer is applied before a top coating or further coated thereon, the multi-layer film of Lu would inherently have no blue haze appearance.
Regarding claim 11, Lu discloses the multi-layer film comprising a primer coating applied as a top coating on one or more surfaces (adhesive layer on an exterior surface; paragraph [0109]).
Regarding claim 12, Lu discloses the multi-layer film comprising a primer coating applied as a top coating on one or more surfaces (one or more coating layers on the metallized layer and the sealing layer; paragraph [0109]).
Regarding claim 14, Lu discloses the multi-layer film comprising a metallized surface further coated or printed then overcoated with an over-varnish (barrier layer; paragraph [0104]).
Regarding claim 17, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the print-receptive coating would inherently comprise at least 90% UV-ink adhesion subsequent to applying tape for one minute to printed ink with retreatment on the print-receptive coating.
Regarding claim 18, since the structure of the multi-layer film of Lu is the same as the structure of the biaxially oriented, metallized film as claimed in claim 1, the print-receptive coating would inherently comprise at least 90% UV-ink adhesion subsequent to applying tape for one minute to printed ink without retreatment on the print-receptive coating.
Regarding claim 23, Lu discloses the multi-layer film comprising a primer coating applied as a top coating on one or more surfaces (one or more coating layers being an adhesive layer; paragraph [0109]).
Regarding claim 24, Lu discloses the multi-layer film comprising a metallized surface further coated or printed then overcoated with an over-varnish (paragraph [0104]) and additives present in one or more layers of the multi-layer film (paragraph [0091]) and wherein the additives comprise anti-block agents (anti-blocking layer; paragraphs [0091] and [0104]).
Regarding claim 26, Lu discloses the multi-layer film comprising the core layer including at least one polyolefin selected from isotactic polypropylene and high crystallinity polypropylene (paragraph [0052]).
Lu does not appear to explicitly disclose a specific example of the core layer consisting of isotactic polypropylene and high crystallinity polypropylene.
However, it would have been obvious to one of ordinary skill in the art to choose the polymers in the core layer to be isotactic polypropylene and high crystallinity polypropylene in order to provide a specific example of the core layer consisting of isotactic polypropylene and high crystallinity polypropylene.
Regarding claim 27, Lu discloses the multi-layer film comprising each tie layer including at least one polymer selected from isotactic polypropylene and high crystallinity polypropylene (paragraph [0081]).
Lu does not appear to explicitly disclose a specific example of each tie layer consisting of isotactic polypropylene and high crystallinity polypropylene.
However, it would have been obvious to one of ordinary skill in the art to choose the polymers in each tie layer to be isotactic polypropylene and high crystallinity polypropylene in order to provide a specific example of each tie layer consisting of isotactic polypropylene and high crystallinity polypropylene.
Regarding claim 28, Lu discloses the multi-layer film comprising each tie layer including at least one polymer selected from isotactic polypropylene and high crystallinity polypropylene (paragraph [0081]).
Lu does not appear to explicitly disclose a specific example of each tie layer consisting of isotactic polypropylene and high crystallinity polypropylene.
However, it would have been obvious to one of ordinary skill in the art to choose the polymers in each tie layer to be isotactic polypropylene and high crystallinity polypropylene in order to provide a specific example of each tie layer consisting of isotactic polypropylene and high crystallinity polypropylene.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (WO 2009/097175 A1) in view of Johnson et al (US 2003/0026932).
Regarding claim 8, Lu is relied upon as described above.
Lu does not appear to explicitly disclose the multi-layer film comprising the base film being transparent, translucent or both.
However, Johnson discloses a multilayer laminate comprising a base layer free of filler particles to provide a base layer (base film) that is clear and transparent (paragraph [0050]).
It would have been obvious to one of ordinary skill in the art to modify the multi-layer film of Lu to have the base film of Lu to be transparent, translucent or both as needed by modifying the contents of the base film as taught in Johnson to provide the desired clearness and transparency of the base film.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (WO 2009/097175 A1) in view of Urbain et al (US 2008/0070050 A1).
Regarding claim 15, Lu is relied upon as described above.
Lu does not appear to explicitly disclose the multi-layer film comprising one or more coating layers laminated to a substrate.
However, Urbain discloses a multi-layer film comprising the outer surfaces of the multi-layer film being laminated to a substrate using an adhesive (paragraph [0067]).
It would have been obvious to one of ordinary skill in the art to modify the multi-layer film of Lu to include the adhesive of Urbain on the outer surfaces of the multi-layer film of Lu because having the required adhesive allows for the multi-layer film to be attached to various objects or substrates.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (WO 2009/097175 A1) in view of Touhsaent (US 2002/0146559 A1).
Regarding claim 20, Lu is relied upon as described above.
Lu does not appear to explicitly disclose the multi-layer film comprising the print-receptive coating consisting of one or more anionic acrylic polymers with optionally one or more crosslinkers.
However, Touhsaent discloses a printable plastic film (paragraph [0007]) comprising a plastic substrate (paragraph [0007]) and a printable coating composition layer disposed thereon (paragraph [0007]); wherein the printable coating composition layer has an anionic acrylic polymer polymerized from methyl methacrylate, alkyl methacrylates and/or alkyl acrylates with an ethylenically unsaturated acid (paragraph [0018]), wherein the anionic acrylic polymer is dispersed in water (paragraph [0078]) and wherein the anionic acrylic polymer is used with a cross-linking agent (paragraph [0027]).
It would have been obvious to one of ordinary skill in the art to modify the multi-layer film of Lu to include the combination of the anionic acrylic polymer and cross-linking agent of Touhsaent for the acrylic polymer in the top coating of Lu because having the required anionic acrylic polymer with the cross-linking agent provides improved solvent resistance for the coating (paragraph [0027] of Touhsaent).
Response to Arguments
Applicant's arguments filed 7/28/2025 have been fully considered but they are not persuasive.
Applicants argue that the 112(a) rejections should be withdrawn.
This argument is not persuasive as paragraphs [0009], [0015], [0022]-[0023] and [0026] of Applicant’s Specification disclose the core layer consisting essentially of biaxially oriented polypropylene where the polymer refers to homopolymers, the tie layers having the same composition as the core layer and each skin layer having the same composition as the core layer.
This does not teach the limitations “core layer consisting essentially of one or more polypropylene homopolymers”, “tie layers each consisting essentially of one or more polypropylene homopolymers” and “skin layers each consisting of propylene-based polymers” as well as new claims 26-28.
Applicants argue that Lu does not teach any layers consisting essentially of one or more polypropylene homopolymers in combination with the skin layers consisting of one or more propylene-based polymers.
This argument is not persuasive as Lu discloses an embodiment where the core layer is isotactic polypropylene (see paragraph [0069] of Lu). Also Lu discloses the tie layer comprising isotactic polypropylene (see paragraph [0081] of Lu) and the one or more skin layers comprising propylene homopolymer (see paragraph [0086] of Lu).
Lu does not appear to explicitly disclose a specific example of the tie layers each consisting of polypropylene homopolymer and the skin layers each consisting of propylene-based polymer.
However, it would have been obvious to one of ordinary skill in the art to choose the polymer in each of the tie layers to be isotactic polypropylene and the polymer in each of the skin layers to be propylene homopolymer in order to provide a specific example of the tie layers each consisting of polypropylene homopolymer and the skin layers each consisting of propylene-based polymer.
Based on these reasons, Lu would still suggest amended claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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, Mark Ruthkosky can be reached at (571)-272-1291. 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.
/SATHAVARAM I REDDY/Examiner, Art Unit 1785