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 .
Claim Rejections - 35 USC § 112
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 2-3 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. Claims 2-3 recite antiblock amount including 0 while claim 1 recites antiblock amount greater than 0. 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 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.
Claim(s) 1-3, 7, 11-17, 25-28 and 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Larter et al. (US 6689857) in view of O’Donnell et al. (US 2015/0104627) or Lockhart et al. (US 2014/0154498).
Regarding claims 1, 25-28 and 32, Larter discloses multilayer film having three layer structure (col. 3, line 62) containing core layer containing at least 90 wt% of HDPE and minor amount of LLDPE, i.e. 10 wt% or less, (col. 8, lines 47-55), and additive (col. 4, line 28), printable skin layer located directly on a first side of the core layer and a skin layer located directly on a second side of the core layer (col. 11, lines 40-55), wherein the film is oriented biaxially (title, abstract) in machine direction about 5:1 to 8:1 and in transverse direction about 6:1 to 15:1 (abstract), has directional modulus of 440,000 psi (3033 MPa), has an increased gloss and reduced haze (col. 4, lines 2-3) and has a polyethylene in each layer (col. 12 , line 30).
Larter discloses that anti-blocking agent and slip agent can be incorporated in the skin layers (col. 4, lines 27-29, col. 12, lines 63-67). However, Larter does not disclose any specific amount of anti-blocking agent.
Since the instant specification is silent to unexpected results, the specific amount of anti-blocking agent is not considered to confer patentability to the claims. As the anti-blocking is a variable that can be modified, among others, by adjusting the amount of anti-blocking agent, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of anti-blocking agent in in the skin layers of Larter to obtain the desired anti-blocking property (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Larter is silent regarding LLDPE in the printable skin layer and skin layer.
O’Donnell discloses multilayer film comprising skin layers wherein the skin layers containing LLDPE, i.e. consists of LLDPE, to obtain certain properties such as softer to the touch, less stiff and less noisy (paragraph 0068).
Given that Larter discloses a polyethylene in each layer, it would have been obvious to one of ordinary skill in the art to use the LLDPE of O’Donnell in the skin layers of Larter to obtain certain properties such as softer to the touch, less stiff and less noisy.
Alternatively, Lockhart discloses multilayer film comprising skin layers (paragraphs 0037, 0064) wherein the skin layers comprise LLDPE, i.e. consists of LLDPE, to obtain impervious to a wide range of chemicals and solvents and to provide abrasion resistance (paragraph 0037 and claim 8).
It would have been obvious to one of ordinary skill in the art to use the LLDPE of Lockhart in the skin layers of Larter to obtain impervious to a wide range of chemicals and solvents and to provide abrasion resistance.
Given that Larter in view of O’Donnell/Lockhart discloses skin layers containing LLDPE, anti-block agent and optionally slip agent, it is clear that the skin layers of Larter in view of O’Donnell/Lockhart meet the presently claimed limitation of consisting essentially of and consists of.
Given that the multilayer film of Larter in view of O’Donnell/Lockhart discloses the same composition as claimed in the present claims and optionally discloses dye or pigment (col. 4, lines 26-27), it is clear that the multilayer film of Larter in view of O’Donnell/Lockhart is transparent and it would have the same properties as claimed in present claims. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Regarding claims 2-3, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 1, wherein the skin layers of Larter in view of O’Donnell/Lockhart consists of the LLDPE and anti-blocking agent as explained above.
Regarding claim 7, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 1, wherein the transparent film has a thickness of 0.25 mil to 10 mil (6.35 to 254 microns) (col. 11. Lines 3-4).
Regarding claim 11, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 1, wherein the transparent film is coextruded (col. 5, lines 15-20).
Regarding claim 12, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 1, further comprising additional laminated layers, i.e. laminated substrate, wherein the transparent film is laminated to the laminating substrate to product a laminated film (col. 11, line 30 to col. 12, line 27).
Regarding claim 13, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 12, wherein given that the laminating substrate does not comprise dye or pigment, it is clear that the laminating substrate of Larter is transparent.
Regarding claim 14, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 12, given that Larter discloses the layer can be applied to the film after biaxial orientation (col. 11, lines 30-60), it is clear that the laminating substrate is a non-oriented film.
Regarding claims 15-16, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 12, wherein the laminated substrate is metallized, i.e. coated. (col. 12, lines 55-60).
Regarding claim 17, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 12, further comprising adhesive between the film and substrate (col. 11, line 65 to col. 12, line 5).
Regarding claim 33, Larter in view of O’Donnell/Lockhart discloses the transparent film of claim 32, wherein Larter discloses the use of the film is in bag (col. 3, lines 5-7 and col. 6, lines 52-53). Given that the transparent film of Larter in view of O’Donnell/Lockhart discloses the same composition as claimed in present claims, it is clear that the transparent film of Larter in view of O’Donnell/Lockhart would be recyclable.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Applicant argues that the examiner asserts that Larter’s casting promoter layer is equivalent to applicant’s LLDPE only printable skin layer and skin layer and this is incorrect. However, it is noted that the examiner never stated that Larter’s casting promoter layer is equivalent to applicant’s LLDPE only printable skin layer and skin layer. Rather, examiner stated that the casting promoter layer of Larter is optional. Applicant’s attention is drawn to col. 4, line 65 to col. 5, line 10 of Larter which makes it clear that the casting promoter layer is not required and printable skin layer and skin layer are present. Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Applicant argues that O’Donnell cannot supply the missing LLDPE skin layers. However, it is noted that Larter’s does disclose skin layers as explained above. O’Donnell is only used to teach LLDPE resin of the skin layers not the skin layers themselves. Further, note that while O’Donnell does not disclose all the features of the present claimed invention, O’Donnell is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely the skin layers containing LLDPE, i.e. consists of LLDPE, to obtain certain properties such as softer to the touch, less stiff and less noisy, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Lockhart does not teach skin layer as presently claimed. However, it is noted that Lockhart is only used for LLDPE of skin layers not the skin layers themselves. Further, note that while Lockhart does not disclose all the features of the present claimed invention, Lockhart is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely multilayer film comprising skin layers wherein the skin layers comprise LLDPE to obtain impervious to a wide range of chemicals and solvents and to provide abrasion resistance, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Larter does not disclose any antiblock concentration at all and the antiblock range is defined for achieving transparency, printability and modulus and the invention includes a haze, direction modulus and transparent printable surfaces as presently claimed. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding antiblock range is defined for achieving transparency, printability and modulus must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”. Further, there is no evidence, i.e. data, to support applicant’s position.
Applicant argues that examiner’s proposed modification would destroy Larter’s purpose and O’Donnell’s purpose and the conclusory statements are insufficient. However, as noted above Larter’s and O’Donnell are only used as a secondary references for LLDPE resin.
Applicant argues that the examiner ignores the properties as claimed in present claims. However, the examiner did state that given that the multilayer film of Larter in view of O’Donnell/Lockhart discloses the same composition as claimed in the present claims and optionally discloses dye or pigment (col. 4, lines 26-27), it is clear that the multilayer film of Larter in view of O’Donnell/Lockhart is transparent and it would have the same properties as claimed in present claims.
Applicant argues that none of the cited references teach or suggest applicant’s claimed transparent HDPE/LLDPE/LLDPE films. However, it is noted that the present claims recite transparent LLDPE/HDPE/LLDPE films. Applicant never claimed transparent HDPE/LLDPE/LLDPE films.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787