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 .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1, 3-6, 8-9, 11-13, 15, 17, 20-26, 37-38 are pending.
Claim Rejections - 35 USC § 112
Claims 21 recites “the polyester”. However, claim 1 has been amended to require the polymer is polyethylene terephthalate. Therefore, claim 21 does not include all the limitations required by claim 1.
Claim Rejections - 35 USC § 103
Claims 1, 3-6, 8-9, 11-13, 15, 17, 20-22, 24-26, 37 are rejected under 35 U.S.C. 103 as being unpatentable over Murschall et al. (US 2001/0031802) in view of Cahill et al. (6,083,585).
Regarding claim 1: Murschall is directed to a film used for packing, comprising:
(i) a polymer which is a polyethylene terephthalate and a cyclic olefin copolymer COC
(ii) wherein said COC includes cyclic olefin copolymer ([0058] Murschall).
A container body is defined as an object that can be used to hold or transport something. Therefore, the film used for packaging food is equivalent to a container body.
The COC comprises monomer units of the formulas:
PNG
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157
239
media_image1.png
Greyscale
and
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media_image2.png
99
152
media_image2.png
Greyscale
Wherein R1-R4 include hydrogen (equivalent to the formula (I) and formula (II). Particular preference is given to norbornene-ethylene copolymers ([0066]) (equivalent to formulas (I) and (II)).
While the L* value measured on the CIELAB scale is not specifically mentioned, the whiteness value is at least 80% ([0011]). Further, the whiteness can be adjusted and adapted to a particular requirement by varying the amount and nature of COC added ([0016] Murschall). Hence, the choice of a particular amount and nature of COC resulting a L* value on the CIELAB scale of at least 85 is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
The film includes antiblocking agent (also known as pigments) including mixtures of two or more and of titanium dioxide, barium sulfate, calcium carbonate, and metal oxides ([0072]-[0073]). Titanium dioxide or barium sulfate are specifically disclosed as additional pigments at [0074] (equivalent to a second light shielding pigment). Selection of different first and second pigments and/or different elements is well within the scope of Murschall.
Murschall doesn’t mention a contain body or the container body defines a bottle.
Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). One skilled in the art would have been motivated to have included the oxygen scavenging copolymer in Murschall to absorb oxygen in packaging walls for use with perishable foods and perishable items (col. 21 ll. 14-40 Cahill). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included the oxygen scavenging copolymer in Murschall to arrive at claim 1 of the present invention.
Regarding claim 3: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows a ratio of polymer to COC of 8-65 is well within the scope of Murschall. For instance, an amount of 10 wt% COC copolymer and 90 wt% of the polymer results in a ratio of 10. Therefore, it is clear the amounts at least overlap. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 4: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows a ratio of polymer to COC of 30-39 or 9-15 is well within the scope of Murschall. For instance, an amount of 3 wt% or 10 wt% COC copolymer and 97 wt% or 90 wt% of the polymer results in a ratio of 32 or 10, respectively. Therefore, it is clear the amounts at least overlap. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 5: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows the amount of COC includes 1-10 wt% COC, and therefore the amounts at least overlap. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 6: The COC comprises monomer units of the formulas:
PNG
media_image1.png
157
239
media_image1.png
Greyscale
and
PNG
media_image2.png
99
152
media_image2.png
Greyscale
Wherein R 1-R4 include hydrogen or are substituted (equivalent to the formula (I) and formula (II). Particular preference is given to norbornene-ethylene copolymers ([0066]). The copolymer including norbornene-ethylene copolymers preferably have a 10-60% by weight ethylene.
When equimolar amount of each of ethylene and norbornene are utilized, a copolymer comprising 50 mol% of formula I and 50 mol% of formula II results in a copolymer comprising about 23 wt% ethylene, which falls squarely within the amounts recited in the present claim 6 as well as Murschall.
Regarding claim 8: The glass transition temperature is preferably above 110 ˚C ([0067]).
Regarding claim 9: The container body comprises COC, and 0.01-5 wt% of a UV stabilizer. It follows the container body comprises at least 95 wt% of the thermoplastic polymers.
Regarding claims 11-13, 15: The composition comprises titanium dioxide pigment or barium sulfate pigment ([0074]) in an amount of 0-25 wt% ([0073]).
Regarding claim 17: The container body of a packing food film includes antiblocking agent (also known as pigments) including mixtures of two or more and of titanium dioxide, barium sulfate, calcium carbonate ([0072]-[0073]). Titanium dioxide or barium sulfate are specifically disclosed as additional pigments at [0074].
Regarding claims 20-21: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows the polyethylene terephthalate is present in an amount of 85-95 wt% . A pigment of titanium dioxide is present in an amount of 1-25 wt% (0074]). The pigment including aluminum powder can be included in an amount of 0-25 wt% ([0072]-[0073]). An amount of 0 wt% of a polymer incompatible/immiscible is well within the scope of Murschall. Therefore, it is clear the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 22: Murschall is directed to a film used for packing food or other consumable items (equivalent to a container body), comprising:
(i) a polymer which is a polyethylene terephthalate and a cyclic olefin copolymer COC
(ii) wherein said COC includes cyclic olefin copolymer ([0058] Murschall).
A container body is defined as an object that can be used to hold or transport something. Therefore, the film used for packaging food is equivalent to a container body.
The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows a ratio of polymer to COC of 8-65 is well within the scope of Murschall. For instance, Example 1 of Murschall comprises an amount of 10 wt% COC copolymer and 90 wt% of the polymer results in a ratio of 10. A single layer embodiment arrive at the claimed ratio (A).
Murschall doesn't specifically recite a L*. However, the container body produced in Murschall is substantially identical to the container body produced in the invention.
While the L* value measured on the CIELAB scale is not specifically mentioned, the whiteness value is at least 80% ([0011]). Further, the whiteness can be adjusted and adapted to a particular requirement by varying the amount and nature of COC added ([0016] Murschall). Hence, the choice of a particular amount and nature of COC resulting a L* value on the CIELAB scale of at least 85 is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Murschall doesn’t mention a contain body or the container body defines a bottle.
Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). One skilled in the art would have been motivated to have included the oxygen scavenging copolymer in Murschall to absorb oxygen in packaging walls for use with perishable foods and perishable items (col. 21 ll. 14-40 Cahill). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included the oxygen scavenging copolymer in Murschall to arrive at claim 1 of the present invention.
Regarding claim 23: Murschall doesn’t mention the container body incorporates an oxidizable organic material for scavenging oxygen in use.
Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). One skilled in the art would have been motivated to have included the oxygen scavenging copolymer in Murschall to absorb oxygen in packaging walls for use with perishable foods and perishable items (col. 21 ll. 14-40 Cahill). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included the oxygen scavenging copolymer in Murschall to arrive at claim 23 of the present invention.
Regarding claim 24: The films are used for further processing such as biaxially stretched ([0076]) (equivalent to a preform for making a container body) comprising the polyester and COC. The polyester is polyethylene terephthalate.
Regarding claim 25: The container body comprises the polyester, COC, and 0.01-5 wt% of a UV stabilizer. It follows the container body comprises at least 95 wt% of the thermoplastic polymers.
A single layer embodiment is disclosed ([0050]).
The container body of a packing food film includes antiblocking agent (also known as pigments) including mixtures of two or more and of titanium dioxide, barium sulfate, calcium carbonate, and metal oxides ([0072]-[0073]). Titanium dioxide or barium sulfate are specifically disclosed as additional pigments at [0074] (equivalent to a second light shielding pigment). Selection of different first and second pigments and/or different elements is well within the scope of Murschall.
Regarding claim 26: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows a ratio of polymer to COC of 8-65 is well within the scope of Murschall. For instance, an amount of 10 wt% COC copolymer and 90 wt% of the polymer results in a ratio of 10. Therefore, it is clear the amounts at least overlap. A single layer embodiment arrive at the claimed ratios (C) and (D).
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows the preform can include 80-98 wt% polyester.
The composition comprises a titanium dioxide pigment ([0074]).
While a preform including an injection molding which is test tube shaped is not mentioned, it has been held by the courts that a change in shape or configuration, without any criticality, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. See In re Dailey, 149 USPQ 47 (CCPA 1976). See MPEP 2144.04(IV)(B).
Regarding claim 37: Murschall is directed to a film used for packing (equivalent to a container body) comprising:
(i) a polymer which is a polyethylene terephthalate
(ii) a cyclic olefin copolymer ([0058] Murschall).
The base layer comprises 70-96% by weight of the polyester ([0052].
The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall).
The composition comprises titanium dioxide pigment or barium sulfate pigment ([0074]) in an amount of 0-25 wt% ([0073]).
While the L* value measured on the CIELAB scale is not specifically mentioned, the whiteness value is at least 80% ([0011]). Further, the whiteness can be adjusted and adapted to a particular requirement by varying the amount and nature of COC added ([0016] Murschall). Hence, the choice of a particular amount and nature of COC resulting a L* value on the CIELAB scale of at least 85 is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Murschall doesn’t mention the container body defines a bottle.
Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). One skilled in the art would have been motivated to have included the oxygen scavenging copolymer in Murschall to absorb oxygen in packaging walls for use with perishable foods and perishable items (col. 21 ll. 14-40 Cahill). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included the oxygen scavenging copolymer in Murschall to arrive at claim 1 of the present invention.
Claims 26, 38 are rejected under 35 U.S.C. 103 as being unpatentable over Murschall as applied to claim 1 above, and further in view of Hosokoshiyama (US 2015/0210420).
Regarding claim 26: The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows a ratio of polymer to COC of 8-65 is well within the scope of Murschall. For instance, an amount of 10 wt% COC copolymer and 90 wt% of the polymer results in a ratio of 10. Therefore, it is clear the amounts at least overlap. A single layer embodiment arrive at the claimed ratios (C) and (D).
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The base layer comprises 2-60 wt% by weight of the cycloolefin copolymer ([0010] Murschall). It follows the preform can include 80-98 wt% polyester.
The composition comprises a titanium dioxide pigment ([0074]).
A preform including an injection molding which is test tube shaped is not mentioned.
Hosokoshiyama is directed to an injected molded test tube shaped preform. One skilled in the art would have been motivated to have made an injection molded preform in Murschall to make a molded container for use in a wide variety of applications ([0077] Hosokoshiyama). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have made an injection molded preform in Murschall to arrive at claim 26 of the present invention.
Regarding claim 38: A container body includes a screw threaded neck arranged to cooperate with a screw threaded closure is not mentioned by Murschall.
The container body includes a screw threaded neck arranged to cooperate with a screw threaded closure (Fig. 1 Hosokoshiyama). One skilled in the art would have been motivated to have made an injection molded container body includes a screw threaded neck arranged to cooperate with a screw threaded closure in Murschall to make a molded container for use in a wide variety of applications ([0077] Hosokoshiyama). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have made an injection molded container body includes a screw threaded neck arranged to cooperate with a screw threaded closure in Murschall to arrive at claim 38 of the present invention.
Response to Arguments
Applicant's arguments filed 10/20/2025 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 8 – 9 Remarks) the Examiner contends a film used for packaging food is equivalent to a container body.
The Examiner disagrees a film for packaging food is not equivalent to a container body. A container body is defined as a receptacle for holding goods for holding a product used in storage packaging and transportation. Further, it is well settled that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." MPEP 2111. Nevertheless, the rejection of record relies on the combination of Murschall and Cahill, wherein Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). Bottles are defined as a container body by the present invention.
Applicant argues (p. 9 Remarks) in the penultimate paragraph on page 20, the Examiner acknowledges Murschall does not provide a bottle of claim 1. No support for any argument that Murschall discloses a bottle is provided. While the Examiner states opacity is not mentioned in the claims, and the combination of Murschall arrives at claim 1, the above statement is conclusionary without any support. The Examiner has glossed over that Murschall does not disclose a bottle.
This argument is not found persuasive since the rejection of record relies on the combination of Murschall and Cahill, wherein Cahill is directed to a copolymer for scavenging oxygen used for food packaging of cups and bottles (abstract Cahill). Bottles are defined as a container body by the present invention.
Applicant argues (p. 9 Remarks) on page 21 of the office action the Examiner provides further arguments against claim 1 but again does not deal with the fact that Murschall does not disclose a bottle.
This argument is not found persuasive since the rejection relies on the combination of Murschall in view of Cahill, wherein Cahill discloses a bottle. 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).
Applicant argues (p. 9-10 Remarks) that while Murschall does not specifically recite an L*, contrary to the Examiners assertions, there is no teach or motivation to adjust whiteness by varying the amount of COC. Moreover, Murschall provides no teaching regarding the particular problem solvent by Applicant as illustrated in Figure 2. Without awareness of the problem, the skilled artisan has no motivation to modify Murschall. Murschall provides no motivation or appreciation that the bottles including high L* can be produced. In particular, Example 3 of Applicant’s specification illustrates that very high L* results can be achieved in monolayer bottles, which is desirable when packaging milk or milk products, as examples, as referred to at [0001] of the specification.
This argument is not found persuasive since Murschall specifically teaches whiteness, and thus L*, can be adjusted and adapted to a particular requirement by varying the amount and nature of COC added. ([0016] Murschall). Further, “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant”, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). See MPEP 2144 (IV). In other words, one skilled in the art does not need to be aware of Applicants problem to adjust the whiteness, and the resulting L* value.
Applicant argues (p. 11 Remarks) Cahill is referred to in Example 7 of Applicant’s specification, which demonstrates the COC containing bottle the AMOSORB is activated normally (i.e. rapidly). Further, it is not clear why Cahill is cited. There is no viable explanation as to why the skilled person would combine Murschall and Cahill and submits the combination is based on hindsight since it is referred to in Example 7 of Applicant’s specification. Without Applicant’s teaching, the skilled artisan could have selected from any of almost infinite number of examples of PET bottles.
This argument is not found persuasive since “[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant”, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Further, Cahill was clearly cited because a bottle is not specifically mentioned in Murschall. Finally, case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention. Moreover, mention of a reference in the present specification does not exclude said reference from consideration.
Applicant argues (p. 12 Remarks) firstly, there is no motivation because a skilled artisan could not have not have appreciated Example 7 of Applicant’s specification. Secondly, the Examiner still does not overcome the fact that Murschall does not disclose “wherein said container defines a bottle” and does not describe “L*” described in claim 1. Applicant’s invention addresses the problem described above and produces a container of a bottle which is substantially white and opaque. Neither Murschall nor Cahill solves this problem and lacks insight or motivation.
This argument is not found persuasive since it is not necessary for Murschall to disclose a bottle nor an L*. Rather, the combination of Murschall and Cahill arrives at the present claims because it suggests the claimed L* and the motivation to produce a bottle is taught in Cahill.
Applicant argues (p. 13 Remarks) claim 22 has been amended to require a bottle, and therefore not anticipated by Murschall.
The anticipation rejection has been withdrawn and recast above as obvious over Murschall and Cahill.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764