DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/22/2025 has been entered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claim 17 recites “co-extruded therewith to form at least one blended layer of the film product”. There is no disclosure for this limitation in the specification.
Claim 21 recites “the polyethylene component and the ethylene vinyl acetate component are coextruded to form the blended layer of the film product”. There is no disclosure of this limitation in the specification.
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.
Claim 22 is 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.
Claim 22 recites “the film product comprises more polyethylene layers than blended layers”. There is no support for this limitation in the specification.
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.
Claims 17, 18 and 20-22 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.
Claim 17 recites “co-extruded therewith to form at least one blended layer of the film product”. Given that conventionally co-extrusion is known to produce two layers, it is not clear how co-extrusion produces blended layer that comprises a mixture of two components. This rejection affects all the dependent claims.
Claim 21 recites “the polyethylene component and the ethylene vinyl acetate component are coextruded to form the blended layer of the film product”. Given that conventionally co-extrusion is known to produce two layers, it is not clear how co-extrusion produces blended layer that comprises a mixture of the polyethylene component and the ethylene vinyl acetate component.
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 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 17, 18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sorem et al. (US 2015/0123317 A1 cited in IDS) in view of Kian et al. (US 2016/0185087 A1 cited in IDS).
Regarding claims 17, 18 and 20-22, Sorem et al. disclose a film structure (film product being a multilayer film product having a plurality of layers) comprising an outer layer 110 and a barrier layer 102 (see Figure 1A and paragraphs 0019). The outer layer (blended layer) comprises a blend of polyethylene and ethylene vinyl acetate (see paragraph 0026). The barrier layer (i.e. barrier sealant layer) comprises a blend of ethylene vinyl alcohol and polyethylene (see paragraph 0022). Given that film structure comprises the barrier layer, the film structure has barrier properties. The film structure can be scored (see Abstract and paragraph 0002). The film structure comprising barrier layers can be used for packaging applications such as food package (see paragraph 0014). That is, the film structure is a barrier packaging.
Sorem et al. do not disclose that the film product comprises ethylene vinyl acetate component provided in an amount sufficient to increase laser absorption of the film product such that a feature produced in the film product with the barrier sealant layer laminated thereto by laser scoring can be torn without the use of a tool and in an amount sufficient enough to prevent laser transmission from damaging the barrier sealant layer laminated to the film product. Sorem et al. do not disclose packaging being recyclable due to the similarity of the components in each of the film product and the barrier sealant layer.
Kian et al. disclose a polyolefin film that can be subjected to laser cutting and effectively shaped and/or patterned by the laser (see Abstract and paragraph 0049). The polyolefin film (blended layer) comprises a blend of polyolefin and ethylene vinyl acetate (EVA) in a blend ratio of about 60 to about 80 wt% polyolefin and about 20 to about 40% EVA, i.e. about 1.5:1 to about 4:1 (see paragraph 0050). The ratio of polyolefin to EVA overlaps with that of the present invention (see paragraph 0028 of published application). The polyolefin can be high density polyethylene (HDPE) and low density polyethylene (LDPE) (see paragraph 0053). The polyolefin can only comprise polyolefin and EVA (see paragraphs 0050, 0052). Accordingly, the polyethylene component can comprises only HDPE and EVA or only LDPE and EVA.
In light of motivation for using polyolefin film comprising blend of polyethylene and ethylene vinyl acetate disclosed by Kian et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polyolefin film of Kian et al. as the outer layer in Sorem et al. in order to improve laser cutting and effective shaping and patterning by the laser, and thereby arrive at the claimed invention.
Sorem et al. in view of Kian et al. do not disclose “co-extruded therewith to form at last one blended layer” or “the polyethylene component and the ethylene vinyl acetate component are co-extruded to form the blended layer”.
However, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Sorem et al. in view of Kian et al. meets the requirements of the claimed product, Sorem et al. in view of Kian et al. clearly meet the requirements of present claims.
Sorem et al. in view of Kian et al. do not disclose that the film product comprises ethylene vinyl acetate component in an amount sufficient to increase laser absorption of the film product such that a feature produced by laser scoring can be torn without the use of a tool and in an amount sufficient enough to prevent laser transmission from damaging a barrier layer.
However, given that the film product and amount of ethylene vinyl acetate disclosed by Sorem et al. in view of Kian et al. is identical to that of the present invention, it is inherent or obvious the film product of Sorem et al. in view of Kian et al. comprises ethylene vinyl acetate component provided in an amount sufficient to increase laser absorption of the film product such that a feature produced in the film product with the barrier sealant layer laminated thereto by laser scoring can be torn without the use of a tool and in an amount sufficient enough to prevent laser transmission from damaging the barrier sealant layer laminated to the film product.
Further, given that the packaging (film product) including outer layer (polyethylene film) and barrier layer (barrier sealant layer) of Sorem et al. in view of Kian et al. is identical to that presently claimed, the packaging of Sorem et al. in view of Kian et al. is recyclable due to the similarity of the components in each of the film product and the barrier sealant layer.
Regarding claim 22, Sorem et al. in view of Kian et al. disclose the film product as set forth above. Sorem et al. disclose the film product comprises an outer layer 110 (blend layer comprising polyethylene and ethylene vinyl acetate), encapsulation layer 104 comprising polyethylene, barrier layer 102 (blend layer comprising ethylene vinyl alcohol and polyethylene), inner layer 114 comprising polyethylene and outer layer 118 comprising polyethylene (see Figure 1A and paragraphs 0019, 0021, 0022, 0026, 0031). Given that there are three layers comprising polyethylene (104, 114 and 118) in comparison to blend layer comprising polyethylene and ethylene vinyl acetate (110) and/or blend layer comprising ethylene vinyl alcohol and polyethylene (102), the film product comprises more polyethylene layers than blended layers.
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Sorem does not disclose the blending of the polyethylene and EVA into a layer via co-extrusion.
While Sorem does not disclose “the blending of the polyethylene and EVA into a layer via co-extrusion”, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Sorem et al. in view of Kian et al. meets the requirements of the claimed product, Sorem et al. in view of Kian et al. clearly meet the requirements of present claims.
Applicants argue that in contrast, in Kian, the film layers were produced suing a conventional multilayer cast film co-extrusion process wherein each of four extruders (A, B, C, and D) supply a melt formulation to a feed block where the melts were combined to form “a single molten stream consisting of four different layers” and this process is not the same as co-extruded materials into the blend layer as claimed.
While Kian does not disclose “the blending of the polyethylene and EVA into a layer via co-extrusion”, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Sorem et al. in view of Kian et al. meets the requirements of the claimed product, Sorem et al. in view of Kian et al. clearly meet the requirements of present claims.
Further, Kian et al. is only used as teaching reference in order to teach a polyolefin film comprising blend of polyethylene and ethylene vinyl acetate not for its teaching of co-extrusion. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787