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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/03/2025 has been entered.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (5,589,561 cited in IDS) in view of Plastics Technology (November, 2019), as evidenced by Prospector (2024).
Regarding claims 1-10, Barry et al. disclose a film consisting of 75 to 100 wt% of Linear ethylene/alpha olefin copolymer (i.e. LLDPE) and 0 to 25 wt% of high density linear polyethylene (i.e. HDPE) (see Abstract, col. 6, lines 37-39 and col. 10, Example 3). The film is produced to form a cast film (solid), followed by biorientation (see page 7, lines 45-52). That is, the film is bioriented film, wherein the orientation is introduced in the solid state. The film has a thickness of 5 to 100 microns (see col. 8-9, lines 66-2).
Further, the film can be a single layer or of several layers, wherein all layers comprise LLDPE and HDPE (see col. 7, lines 15-18). Accordingly, Barry et al. discloses film comprising three layers, wherein each layer consists LLDPE and HDPE. That is, Barry et al. meets film comprising two outer layers and an inner layer, wherein the inner layer consists of LLDPE and HDPE (polymer formulation A).
The linear ethylene/alpha olefin copolymer comprises ethylene and a-olefin having 3 to 12 carbons (see col. 6, lines 21-23). The LLDPE copolymer can comprise up to 25 wt% of a-olefin comonomer such as 1-hexene (see col. 6, lines 46-60). Accordingly, the amount of ethylene is 75 to 100 wt%. The linear ethylene/alpha olefin copolymer has a density of 0.890 to 0.930 g/cm3, i.e. 890 to 930 kg/m3 (see col. 4, lines 40-44). The density is measured according to ASTM D-792 (see col. 9, lines 19-21). While Barry et al. do not disclose density measured with ASTM D792 (2008), given the broad range of density, Barry et al. necessarily meets density measured at ASTM D792 (2008). The linear ethylene/alpha olefin copolymer has a melt index of 0.1 to 30 dg/min, i.e. 0.1 to 30 g/10 min measured by ASTM-D-1238, condition E (see col. 6-7, lines 65-2). As evidenced by Prospector, condition E is melt flow measured at 190 C under a load of 2.16 kg. While Barry et al. do not disclose ASTM-D-1238 (2013), given the broad range of melt index and given the identical conditions (190 C, 2.16 kg), Barry et al. necessarily meets melt flow measured with ASTM-D-1238 (2013) at 190 °C under a load of 2.16 kg.
The high density polyethylene (HDPE) is a homopolymer of ethylene (see col. 7, lines 8-10 and col. 10, Example 3. The high density polyethylene (HDPE) has a density of 0.935 to 0.960 g/cm3, i.e. 935 to 960 kg/m3 (see col. 7, lines 3-4). While Barry et al. do not disclose density measured with ASTM D792 (2008), absent criticality of method of determining density, Barry et al. meets the density as presently claimed. The high density polyethylene (HDPE) has a melt index of 0.5 to 25 dg/min, i.e. 0.5 to 25 g/10 min (see col. 7, lines 6-8). While Barry et al. do not disclose melt index measured with ASTM-D-1238 (2013) at a temperature of 190 °C under a load of 2.16 kg, absent criticality of method of measuring density, Barry et al. meets the melt index as presently claimed.
Barry et al. do not disclose LLDPE having a-TREF as presently claimed.
Plastics Technology discloses BX202 LLDPE by Sabic that provides very good printability, high mechanical properties, toughness and high level of sealing integrity (see page 33, col. 1, SABIC). As evidenced by the present specification, BX202 LLDPE is LLDPE comprising 89 wt% of ethylene units and 11 wt% of C6 comonomer units (1-hexene) (see paragraphs 0070 and 0071). Further, BX202 has a-TREF (as well as density and melt index) as presently claimed (see paragraph 0071).
In light of motivation for using BX202 LLDPE disclosed by Plastics Technology as described above, it therefore would have been obvious to one of the ordinary skill in the art to use BX202 LLDPE as the LLDPE in Barry et al. in order to provide very good printability, high mechanical properties, toughness and high level of sealing integrity, and thereby arrive at the claimed invention.
Accordingly, Barry et al. in view of Plastics Technology disclose a film comprising a layer consisting of a polymer formulation (A) comprising linear low density polyethylene (LLDPE) and high density polyethylene (HDPE) as presently claimed. Given that the polymer formulation including LLDPE and HDPE of Barry et al. in view of Plastics Technology is identical to that presently claimed, it is inherent or obvious that the polymer formulation has density and/or melt mass-flow rate as presently claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/284,990. Although the claims at issue are not identical, they are not patentably distinct from each other because of following reasons.
The copending application disclose a multilayer film. The inner system of the multilayer film reads on a film as presently claimed. The only differences between the copending claims and the present claims are that copending claims disclose a first layer, a second layer and a coating layer. While the copending claims disclose a first layer, a second layer and a coating layer not recited in the present claims, in light of the open language of the present claims, i.e. comprising, it is clear that the present claims are open to the inclusion of additional layers including a first layer, a second layer and a coating layer as disclosed in the copending claims, and thereby one of ordinary skill in the art would arrive at the present invention from the copending one.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 06/03/2025 have been fully considered. In light of persuasive arguments and amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that independent Claim 1 has been amended to recite features of the polymer formulation. Similarly, Claim 4 recited features of the polymer formulation. Claim 4 was not rejected on the ground of nonstatutory double patenting as allegedly unpatentable over claims 1-9 of copending Application No. 18/284,990. Accordingly, it is respectfully requested that the provisional rejection of Claims 1-3 and 7-10 on the ground of nonstatutory double patenting be reconsidered and withdrawn.
However, claim 1 has not been amended to recite features of claim 4. Therefore, the double patenting rejection is maintained.
In light of amendments, claim objections are withdrawn.
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