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 .
Claims 1-15 are pending as amended on 5/8/2025. Claims 1-7 and 15 stand withdrawn from consideration.
The modifications to the rejections under 35 USC 103(a) and the new ground of rejection under 35 USC 112(a) below were necessitated by Applicant’s amendment to the claims limiting the article of claim 8 to a film, and, deleting the requirement for determining properties on a 40 micron blown film from claims 10-14. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
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 10-14 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.
Claims 10-14 as originally filed further limited a film of independent claim 8 by requiring the film to exhibit certain properties. Claims 10-14 originally specified that the properties were to be determined on a 40 micron thick blown film.
As presently amended, claims 10-14 no longer require the recited properties to be measured on a 40 micron thick blown film. Neither the claims nor specification as originally filed describes determining the various properties recited in claims 10-14 on any type of film other than a 40 micron thick blown film. Therefore, the claims as presently drafted (which do not limit the thickness nor the type of film which possesses the recited properties) are not commensurate in scope with the support provided by the specification (which limits both the thickness and type of film which exhibits the recited properties). Because Applicant has not demonstrated that the inventor, at the time the application was filed, had possession of films within the full scope of claims 10-14, the written description requirement of 35 USC 112(a) has not been complied with.
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) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lehtinen et al (US 2008/0139749).
Lehtinen discloses various articles, including a blown film, cast film, or extrusion coated substrates [0001], corresponding to a film as recited in claim 8 and further corresponding to the species of film recited in instant claim 9, respectively, formed using a polyethylene copolymer composition [0001, 0012-13].
Lehtinen discloses that the VLDPE is multimodal and comprises at least a LMW (low molecular weight) fraction and a HMW (high molecular weight) fraction [0013], and discloses embodiments wherein the VLDPE composition is bimodal [0016]. As further discussed below, Lehtinen’s bimodal VLDPE composition corresponds to the “base resin” as recited in claim 8.
Lehtinen discloses that the polyethylene copolymer is prepared with at least one C4-10-alpha olefin comonomer in a process comprising a first stage of polymerizing ethylene with at least one comonomer in the presence of a single site catalyst (corresponding to a “single site catalyst system” as recited in claim 8) to form a LMW component [0065], and then transferring the resulting mixture to a gas phase reactor and polymerizing ethylene and at least one comonomer in the gas phase to form a HMW component [0066], which yields a multimodal copolymer having a density of less than 920 kg/m3 [0067]. Lehtinen teaches that the density of the VLDPE composition is preferably at least 905 kg/m3 [0024]. Lehtinen’s range of 905-920 kg/m3 encompasses the presently claimed range of 913.0-920.0 kg/m3. See also Lehtinen’s composition of Example 3, which has a density of 915 kg/m3, falling within the presently claimed range.
Lehtinen discloses an embodiment wherein the VLDPE composition comprises only one comonomer [0073-74, 0081], and names butene as an example comonomer [0073]. Lehtinen teaches that the overall comonomer content in the VLDPE composition is 0.5-15 mol% [0028], which encompasses the presently claimed range of 8.0 to 13.0 wt%. Lehtinen further exemplifies VLDPE compositions comprising only butene as comonomer, with butene contents of 8.1 and 10.5 wt% (see Tables 1 and 2, examples 1-3), which fall within the range of 8.0 to 13.0 wt% recited in claim 8. Therefore, Lehtinen discloses a bimodal VLDPE composition comprising a LMW fraction which is a first ethylene-1-butene copolymer (corresponding to instant (A)) and a HMW fraction which is a second ethylene-1-butene copolymer (corresponding to instant (B)).
Lehtinen discloses a comonomer content in the LMW fraction of up to 5 mol%, most preferably 0.5 to 1.5 mol% [0028]. As calculated by the examiner (based on the molecular weights of ethylene and butene; i.e., 28 g/mol and 56 g/mol, respectively), Lehtinen’s disclosed range of 0.5 to 1.5 mol% comonomer content corresponds to an ethylene-1-butene copolymer having 1.0 wt% to 3.0 wt% butene, which falls within the presently recited butene content range (for fraction (A)) of 0.5 to 7.5 wt%.
Lehtinen further teaches that in the HMW polymer, the comonomer content is preferably 3.5 to 6 mol% [0028], which is a higher comonomer content (i.e., in the case of ethylene-1-butene copolymer, a higher 1-butene content) than in the LMW (“first”) fraction (satisfying the recited butene content requirement for instant (B)).
As to the presently recited melt flow rate MFR2 of fraction (A):
Lehtinen teaches typical MFR2 values (according to ISO 1133 at 190 C and 2.16 kg) for the bimodal polymer depend on the intended application: for extrusion coating the MFR2 is 5-20 g/10 min, while for a blown film, the MFR2 is preferably 0.1 to 3.0 g/10 min [0021] (or 0.01 to 2 g/10 min [0081]). The density and MFR2 of each fraction can be controlled by adjusting various process conditions [0033]. Lehtinen further teaches that the LMW fraction has a MFR2 of 1 to 300 g/10 min [0022], which overlaps the presently claimed range of 1.0 to less than 50.0 g/10 min. Considering Lehtinen’s disclosure, the person having ordinary skill in the art would have been motivated to select any appropriate MFR2 for Lehtinen’s LMW fraction within the disclosed range in order to adjust the MFR2 of the final composition as desired for a given type of intended application. One would have further recognized that, in addition to the MFR2 of the LMW fraction, the MFR2 of the final composition must depend on the MFR2 of the HMW fraction and the weight ratio of LMW:HMW fractions. It would have been obvious to the person having ordinary skill in the art, therefore, to have prepared Lehtinen’s LMW fraction having any appropriate MFR2 within the disclosed range of 1 to 300 g/10 min (by taking into account, e.g., the MFR2 of the HMW fraction, as well as the weight ratio of LMW:HMW fractions), including an MFR2 within the presently claimed range of 1.0 to less than 50.0 g/10 min. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lehtinen et al (US 2008/0139749) in view of Miranda et al (US 2019/0002676).
The rejection of claims 8 and 9 over Lehtinen are incorporated here by reference. As set forth above, Lehtinen suggests a film according to claims 8 and 9.
[Instant claims 10-14 depend from claim 8, and recite various properties of the film. In each of the examples of the instant specification (both the inventive examples exhibiting the recited properties, and comparative examples), the films are formed from a polyethylene composition as presently recited blended with a commercial linear low density polyethylene.]
Lehtinen discloses that the multimodal VLDPE composition can be extruded onto a substrate, cast, or blown as a film [0081, 0100], and that it is possible to blend with other polymers, such as 0-50% LDPE [0100] or up to 30 wt% in the case of HDPE, MDPE or LLDPE [0105]. Lehtinen discloses that films formed from the polymer of the invention have good hot-tack and/or tear properties [0107], and that the polymers allow a broader sealing window such that the sealing operation can take place at a lower temperature [0108]. However, Lehtinen fails to disclose each of the properties recited in instant claims 10-14.
Miranda discloses that polyethylene is the most widely used thermoplastic polymer in the world, being made into a wide range of products [0001]. Miranda teaches that films include blown or cast films useful as shrink film, fling film, stretch film, sealing film, etc… [0114]. Miranda teaches that blending of two or more polymers is often applied to control the overall property profile of materials and/or to aim for cost reduction. For polyethylene resins, blending primarily aims at improving the balance of processability and mechanical properties of the final product [0005]. Miranda discloses methods of making a polymer composition that may include melt blending a plurality of polyethylenes in the molten state [0010].
Miranda teaches films which exhibit sealing properties including a seal initiation temperature of 60 to 100 C [0097] (which encompasses the range of 90-100 C recited in claim 11) and a hot tack sealing temperature in the range of 80-125 C [0101] (which encompasses the range of 88-97 C recited in claim 12). Miranda further teaches other film properties such as tear resistance, improved processability and better optical properties, including a MD Elmendorf tear strength of at least 230 gF (i.e., at least 2.3 N, which falls within the range of at least 0.6 N recited in claim 10) and TD Elmendorf tear strength of at least 800 gF (i.e., at least 7.8 N, which falls within the range of at least 5.0 N recited in claim 10) [0105], a haze of less than 8% [0113], which falls within the range of not more than 14.0% recited in claim 13, and a gloss of at least 85% [0111], which encompasses the range of at least 92.0% recited in claim 14.
Considering Miranda’s disclosure (e.g., in [0114]), one having ordinary skill in the art would have recognized that polyethylene is utilized to form a wide range of types of films intended for a wide range of applications. Miranda discloses various ranges in [0096-0113] which establish values which one would have considered “improved” or “beneficial” for a polyethylene intended for use in various film applications. One would have further understood that an optimum combination of properties for a polyethylene film depends on the intended application thereof. The person having ordinary skill in the art would have been motivated, therefore, to tailor the properties of a film comprising polyethylene within the various ranges disclosed by Miranda in order to achieve a desired balance between sealing properties, tear resistance, processability and optical properties as appropriate for any given application. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a film from a blend comprising multimodal VLDPE having good hot tack, sealing, and tear properties, as suggested by modified Lehtinen, having any appropriate properties within the ranges taught by Miranda, including properties which fall within the presently claimed ranges.
Response to Arguments
Applicant's arguments filed 5/8/2025 have been fully considered.
Applicant argues (p 6) that in view of Lehtinen’s teaching in [0073] that “typically for film applications hexene is preferably used as the comonomer,” and in view of Lehtinen’s exemplified films wherein hexene is included, there is no motivation to arrive at a claimed film (comprising a polyethylene composition wherein butene is utilized as the only comonomer).
However, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123). Lehtinen broadly discloses [0073] an embodiment of an invention wherein “only one comonomer is used,” and names “hexene or butene” as examples of the comonomer. Lehtinen’s disclosure that hexene is preferably used for typical film applications does not teach away from using the other named comonomer (butene) instead of hexene for film applications. To further illustrate that Lehtinen’s teaching in [0073] is not a teaching away from using butene as the only comonomer for film applications: Lehtinen claims a blown film (claim 25) and a cast film (claim 26) which comprise an ethylene copolymer as recited in claim 24. The ethylene copolymer recited in Lehtinen’s claim 24 encompasses copolymers of ethylene and “at least one… comonomer,” with no limitation placed on the comonomer species. Therefore, Applicant’s argument that one would not have arrived at a film as claimed due to Lehtinen’s disclosed examples and preferred embodiment is not persuasive for at least the reason that Lehtinen broadly discloses a VLDPE composition comprising one comonomer used for a cast or blown film [0081], and does not teach away from selection of butene as the one comonomer.
Additionally: as acknowledged by Applicant, Lehtinen exemplifies polyethylene compositions wherein butene is the one comonomer (Examples 1-3), and the compositions are used for extrusion coating. A coating (i.e., layer) of a polyethylene composition on a substrate is reasonably considered a “film” of polyethylene composition, absent a special definition of “film” which would exclude such a coating. Therefore, Applicant’s argument that one would not have arrived at a film as claimed due to Lehtinen’s disclosed examples and preferred embodiment is not persuasive for at least the reason that an extrusion coating is considered encompassed by the term “film.”
Applicant further argues (pp 6-7) that Lehtinen does not teach or suggest that a film with the ethylene-butene copolymer fractions as recited is able to achieve comparable properties to copolymers including hexene. However, the fact that the inventor may have recognized latent properties in the prior art, or another advantage which would flow naturally from following the suggestion of the prior art, does not render nonobvious an otherwise known invention. See MPEP 2145 II.
To the extent that Applicant’s argument may be construed as an allegation of unexpected results associated with the presently claimed composition, the following discussion is provided:
Applicant’s examples show that a film comprising a polyethylene composition with butene and no hexene (IE1 and IE2) have a seal initiation temperature (SIT) of 96, while a comparative example with butene and hexene (RE3) has a SIT of 91. Applicant argues that IE1 and IE2 were expected to have a significantly higher SIT compared to RE3, and it is surprising that the films have an SIT comparable to RE3. Applicant further argues improved properties relative to instant comparative example CE4.
Applicant’s allegations of unexpected results are not sufficient to overcome the prima facie case of obviousness for any of the following reasons:
Applicant has not provided any reasoning or explanation as to why the SIT of IE1 and IE2 would have been expected to be significantly higher than the values obtained, and therefore, Applicant has not established that IE1 and IE2 have unexpectedly low SIT values. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)II).
Because Lehtinen exemplifies a polyethylene composition wherein butene is the only comonomer, neither instant comparative RE3 nor instant comparative example CE4 is representative of the closest prior art. Applicant must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness (MPEP 716.02(e)).
Evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). The instant films which have properties (including SIT) as summarized in instant Table 2 are films comprising a polyethylene composition as claimed, blended with a commercial LLDPE. The films are 40 micron thick 5 layer coextruded blown films (see instant spec p 45). In contrast, the present claims are not limited to any particular film thickness or preparation method, and do not require any further component to be blended with the claimed composition. Because Applicant has not provided sufficient evidence to show that the results in Table 2 would be obtained for all species encompassed by the present claims, Applicant has not overcome the present rejection by showing unexpected results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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