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 .
Response to Arguments
In the response filed 6/4/2026 the applicants’ provided arguments directed at Semen reference as applied against instant claims as well as declaration of Dr. Armita V. Poyekar.
Instant claim 1 recites following:
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The scope of claim 1 is very broad as it includes any slip agent, any antiblocking agent, of any shape and size. Other than the ratio, there is nothing in claim 1 that would further limit the scope of the claimed polymer additive powder.
Declaration of Dr. Amirta V. Poyekar
In paragraph 4 of the declaration Dr Poyekar states that “…silica exhibit challenges such as non-uniform morphology, tendency of agglomeration and more. Further, a conventional melt blend of slip and antiblock additives often results in a non-uniform surface as evident from the SEM image of the melt blend in Figure 1…. This may result in light scattering on film surfaces, resulting in increased haze in base polymer film.”
This statement is viewed as generic description of what may happen which statement does not provide any factual evidence, especially one that would distinguish over the prior art of record. Nowhere in the description of drawings or the declaration does it say that this is what happens in the teachings of Semen. Additionally terms such as “often results…”, “may result…” are viewed as opinion of what may be happening in the prior art of Semen. Furthermore, the aspects such as non-uniform morphology is viewed as aspect that would affect all silica including that of applicants, agglomeration, haze and light scattering – none are included in instant claims as filed.
In paragraph 5, Dr Poyekar summarizes the features of the free flowing powder of the instant invention, without any indication as to how such free flowing powder compares to specifically the powder taught by Semen. The declaration compares instant process with conventional melt blending without comparing it to the process of Semen.
Consequently, Dr Poyekar’s declaration does not distinguish over the prior art of record.
Applicant’s arguments
Applicants argued that while patentability of a product does not depend on its method of production, the structure implied by the process steps should be considered when assessing patentability of the process.
The examiner agrees with this statement; however, the applicants have not met the burden of providing any factual evidence showing that the product obtained by Semen is different from the product of the instant invention. The structure is the antiblocking agent that is encapsulated by slip agent, which is what Semen is teaching. The claimed additive has no structural limitations and it applies to any antiblock agent (not just silica) and any slip agent. Applicants further rely on a declaration which does not distinguish over the prior art of record but provides rather general description of melt blending process referred to in the declaration as conventional melt-blend.
However, Semen may melt the slip agent but is it not required. The process of Semen blends silica powder and fatty component to form a pre-blend. Next, Semen discloses using solvent to the blend to form granules [0009], which means that the formed pre-blend is subjected to process that results in granules having pre-selected average size. In other words, Semen teaches controlling the particle size of the additive. The solvent is removed and the dried particulates are classified based on particle size [0013].
Silica powders of Semen are powders having average particle size of 0.5-10 microns sold under tradename Sylobloc which is also a series of silica utilized by the applicants, powders especially engineered as antiblocking compounds. Applicant’s examples use specifically sylobloc 45H wherein the only difference between sylobloc 45H and exemplified by Semen sylobloc 47 is particle size. Sylobloc 45H particle size if 4.4-5.4 microns and sylobloc 47 has a particle size in a range of 5.5-6.7 microns. Both are high purity synthetic silicas having narrow particle size, and based on overall particle size the invention of Semen can include both types of silicas. In both cases fatty component will coat the surface of silica increasing surface hydrophobic character. The intense mixing of silica as disclosed by applicant is a process step which controls the products’ final structure, specifically pore size, which is key in its function as anti-blocking agent. This is achieved by varying rotor speed, residence time, temperatures and the like [0018]. Blending is further conducted in conditions which would ensure that the combined components effectively form a pre-blend [0020]. The blend is homogenized (uniform) [0021] such that final mixture is homogeneous. Drying process is conducted at low temperatures to prevent melting of any components and to maintain the desired granular morphology. Resulting particle is a free flowing powder.
In summary, based on the broad scope of independent claim 1, the applicants failed to show that structure of the particulates of the instant invention is different from the structure obtained by Semen. The declaration failed to provide evidence that would distinguish the additive of the instant invention over the additive of Semen.
Further the applicants’ claims encompass the type of the fillers and various structures, which are not shown in applicant’s specification, which would allow applicant to say that each antiblocking agent and each slip agent will provide the same result.
Consequently, the teachings of Semen are not overcome and rejection of record are incorporated here by reference.
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.
Claims 9-13 and 14-18 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims:
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Specification:
Examples 1-6 displaying the results of the testing of polymeric film, Example 1 disclosing contents of the additive powder listing amount ranges in lieu of specific content. Example 2 discloses properties of LDPE films no specific tradename or type of polymer is disclosed. Example 3 discloses properties of the LLDPE (Octene grade) films. Example 4, discloses properties of PP film (specific type of PP was not mentioned. Example 5, discloses properties of LLDPE (butene grade) polymer film with MFI of 0.9, the silica utilized in this example is of different tradenames and different amounts.
Page 5 of the specification lists examples of slip agents and antiblock agents that are not limited to the list alone because of the term “and the like”. Exemplary compounds are as follows:
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Page 5 of the specification further discloses list of other components encompassed by claim 1, however for the ease of the rejection only slip agent and antiblocking agent will be addressed. The examiner notes that although these additional compounds are not addressed, depending what these additives are the properties of the film as a hole may actually be affected.
Page 6 of the specification recites the properties of the instant claims 9-13 and 15-18, wherein the inventive values are not limited to any specific antiblock agent or slip agent.
On page 7 the specification teaches following:
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The maximum or minimum content of the two components of the additives are not reported and term “such as” only exemplifies the types of polymers to be used. Only requirement is that the polymers have to form transparent film.
Analysis:
Claims 9-13 and 15-18 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a polymeric additive comprising slip agent and antiblock agent, where the slip agent encapsulates the antiblock agent, does not reasonably provide enablement for any polymer or mixture of polymers nor for any content of the polymer additive as reflected in independent claim 1. The specification further does not support any LDPE, LLDPE or PP to be used in the polymeric film, with additive content being any amount, wherein as it is seem from applicants’ own data the type of the polymer and its molecular weight do affect the properties. This will be explained below. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It should be noted that while all Wands factors have to be considered, not all Wands factors need to be addressed in every case (MPEP 2164). The analysis is fact-dependent, and the decision to reject a claim based on scope of the claim relative to the scope of enablement must identify the claimed subject matter for which the specification is not enabling.
Scope of the claims with respect to polymers:
Applying these factors to claims 9-13 and 15-18, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any polymer other than specific LDPE 3MFI, LLDPE (octene grade 2MFI), PP homopolymer and LLDPE (butene grade). The example further disclose only silica sold under tradename Sylobloc 45H and Finaslip EAB. According to the examples, the slip agent is erucamide (see examples)
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) on which claims 9-13 and 15-18 depend, the claims encompass polymers that are very structurally and chemically distinct from exemplified polymers. This distinction also applied to different polyolefins. The claims encompass PP, LLDPE and LDPE copolymers, graft polymers or otherwise modified polymers, with various molecular weights, any content of grafting, and any catalyst. One of ordinary skill in the art would readily understand that exemplified polyolefins can be made, for example, using Ziegler-Natta or metallocene catalyst, and both will provide the same type of polymer with very different properties. Applicants’ own examples show that higher molecular weight polyethylene (LDPE) will result in different properties that lower molecular weight polyethylene (LLDPE) which signifies that molecular weight and structure of the polymer make a difference.
The specification states that transparent films are produced, however claim 1 being broad encompasses other polymers which are capable of forming transparent films. These include PET, PETG, polycarbonates, acrylics, PVC, PETG, fluorinated polyolefins, polyurethanes and cellulose, all of which are mutually structurally different, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed. Specification does not provide guidance on how the content of the additive with all polymers of encompassed by instant claims should be adjusted in order to achieve claimed properties.
Scope of the claims with respect to the slip agent and antiblock agent:
Applying these factors to claim 1, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for any slip agent and any antiblock agent. Specification lists several examples of both antiblock agents and slip agents. Examples utilizes specific silicas (sylobloc 45H and Finaslip with Erucamide as the only slip agent.
Additionally, in view of the breadth of claim 1 (cf. factor (a)) on which claims 9-13 and 15-18 depend, the claims encompass any slip agent and any antiblock agent. Specification further only disclose examples of both, with use of term “such as” the scope is not limited even in the specification. Even with the exemplified antiblock agents and slip agents there is no guidance if the same content of each will meet the claimed properties. Claims 11 and 13 are especially questioned, since the polymer additive in these claims can utilize any antiblocking agent encompassed by independent claim 1, while comparing it to the results obtain with treated and untreated silica.
As depicted above specification defines slip agents and antiblock agents in following manner:
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The list for both components is exemplary and not exhaustive.
Antiblocking agents can further include diatomaceous earth, graphite, carbon nanotubes, ceramics, glass spheres as well as organic compounds such as natural and polymeric waxes. In fact claimed fatty acid amides can perform both functions.
Slip agents in addition to what was exemplified in the specification can include waxes, fatty acid salts, silicon based compounds, polymeric compounds and plasticizers.
All the possible compounds encompassed by instant claim 1 and equally usable in claims 9-13 and 15-18 have different chemical properties and chemical structure, it is urged that the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Furthermore claims 10-13 disclose any content of the additive which includes any slip agent and any antiblock agent, are utilized with any polymer or mixtures of polymers, while specification discloses a very specific components.
Claims 9 and 15-18, discloses specific type of LDPE, LLDPE and PP. In claims 9 and 15 the content of the additive is not limited and the type of LDPE and LLDPE can include any LDPE and LLDPE known. These include polyethylenes having various molecular weights and their distribution. They can be homopolymers of have small content of another monomer, which is undefined. Additionally term “comprising” does not limit LDPE and LLDPE to just one polymer. Mixtures are encompassed.
Claims 10-13 are open to any polymer resin or mixtures thereof with any content of the additive wherein the additive can comprise any antiblocking agent and any slip agent or mixtures of each.
Claims 16-18 are open to any type of LLDPE, LDPE and PP, which further can include other polymers due to recitation of term “comprising”. While content of the additive is limited to 1000ppm, the additive can be slip agent, any antiblock agent as well as mixtures of both.
Note:
The invention is chemical in nature, dealing with polymer additive wherein such additive can be utilized in any chemical composite, film or other molded articles requiring use of slip agents and antiblocking agents. One of ordinary skill in the art has a bachelor’s or master’s degree and 5 years or less of work experience (NC State Science and Research – Polymer Chemist, 2021, p. 1-6). This allows one of ordinary skill to conduct routine experimentation under the guidance and direction of individuals with significantly higher levels of education and/or experience exceeding the level of ordinary skill in the art (D – level of one of ordinary skill). As discussed in MPEP 2164.03, chemistry is recognized as an unpredictable art (E – level of predictability in the art).
It should also be noted that while instant claims recite haze value of about 13.5 or about 30, the specification recites exact values of 13.5 and 30. The specification does not provide support for the term “about”
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.
Claim Rejections - 35 USC § 102
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 1-13, 15-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Semen (WO 2008/103560).
With respect to claims 1 and 2, Semen discloses polymer additive granules formed by mixing silica powder (antiblocking agent) and fatty component (slip agent) to form a preblend. The preblend is combined with at least one polymer additive to form granules (Abstract).
The combination of silica and slip agent form a synergistic densification of the feed powder resulting from pre-blending because fatty derivative components coats silica particles, in turn the coating densifies silica [0017]. The fatty component in the preblend is preferably 15-95 wt. % [0018]. Silica content is in a range of 15-50 wt. % [0026]. The resulting composition is a powder or granule whereas the use of spray tower is viewed as process, which renders claim as product by process claim wherein patentable weight is given to the product not to the process by which it is made.
With respect to claim 3, Examples disclose use of silica Sylobloc M-150 which has particle size of 150 microns before it is coated by the slip agent. Sylobloc 47 (examples) has particle size of 5.5-6.7 microns, wherein the particle size of the encapsulated particle is at minimum 6.7 microns. As such the particle sizes of the coated silica are from 150 microns to 8 mesh [0041]. Claim 4 of Semen further states that the particle sizes and granule sizes are pre-selected, which mean one can choose the particle size that is needed. Sylobloc 150 is also a silica utilized in the instant invention and melt processed with fatty amide which is also the process of the instant invention. Combined with statement in Semen that one of ordinary skill in the art can preselect particle size the particle size of Semen will encompass particle size of the instant invention.
With respect to claim 4, slip agents are selected from primary and secondary amides [0015], wherein examples include oleamide, stearamide and erucamide (Table 1, [0036]).
With respect to claim 5, antiblocking agent is silica (see examples).
With respect to claim 6, the other components added to the additive include antioxidants, acid neutralizers, stabilizers, nucleating agents, antistatic agents, lubricants Semen’s claim 7).
With respect to claim 7, instant claim 1 on which claim 7 is a polymer additive claim not a polymer composition for making films, consequently one of ordinary skill in the art can add the additive in claimed amount to any polymer of claim 1. Even though claim 7 is definite, it fails to limit the scope of the additive of claim 1.
With respect to claim 8, instant claim 1 on which claim 8 is a polymer additive claim not a polymer composition, consequently one of ordinary skill in the art can utilize any polymer including olefins. Even though claim 8 is definite, it fails to limit the scope of the additive of claim 1.
With respect to claims 9-13 and 15-18, these claims as well as claim 1 on which claims 9-13 and 15-18 are directed to a polymer additive not to the polymer composition. Consequently, the properties cited within these are definite, claims fail to further limit scope of instant claim 1. Consequently additive only has to be capable of producing film with the claimed properties when added to a polyolefin. Consequently claims 9-13 and 15-18 are met.
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.
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 7, 8, 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Semen (WO 2008/103560) in view of Li (CN 108690222) in view of Luers (AU 1985040342).
In the event applicants do not agree with inherency statement following rejections are presented.
Discussion of Semen from paragraph 1 of this office action is incorporated here by reference. While Semen discloses use his additive in polymer composition, wherein term polymer is broad and encompasses many polymers known in the art.
The difference between Semen and instant invention includes more specific polymers in which such additive can be utilized.
Luers discloses another composition comprising combination of antiblocking agent and lubricant in polyolefins. Luers specifically state that content of each antiblocking agent and lubricant is determined by the intended use.
The antiblocking agent of Luers includes silica and slip agent is fatty amide just like those of Semen are utilized in a concentrate (1a), wherein lubricant is deposited on the surface of silica (p. 5) by combining lubricant and silica to obtain fine particles (p. 6, p. 7 top), wherein antiblocking agent having particle size of 1-7 microns (encompasses particle size of Semen) results in particle having 1-100 microns (p. 7 bottom). The content of the concentrate depends on the article that is to be formed.
With respect to claim 7, in case of polyolefin film, the concentrate comprises 0.001-0.5 wt.% of antiblocking agent and 0.001-0.5 wt.% of slip agent. More preferred range is 0.04-0.2 wt.% or 500-2000 ppm each. See also claim 19 of Luers.
With respect to claim 8, polyolefin is defined as polyethylene LDPE (example 1, bottom of page 13). Polypropylene is disclosed on p. 20.
With respect to claims 10 and 11, LLDPE comprising the claimed amount of concentrate results affect friction coefficient. On p. 15, Luers discloses that the coefficient of friction without the additive for LLDPE is between 0.5-0.8. With the additive, the coefficient of friction is presented in Figure 2. While figures are not well preserved, Figure 2 shows that coefficient of friction for the example without additive is 0.58, while the concentration of the additive lowers the coefficient of friction dramatically. The coefficient of Friction for the sample with additives is approximately 0.4 to 0.1. encompassing claimed range. In turn if silica is added without being treated with slip agent, the coefficient of friction is expected to be higher because, the slip agent is what reduces coefficient of friction. Luers states that antiblocking agents have sliding action when used alone which translates to high coefficient of friction (p. 19, l. 10).
With respect to claims 12 and 13, Figure 1, discloses film without any addition of the concentrate had a blocking force of 1N (p. 14). Addition of the concentrate resulted in decreased blocking force (1N = 0.1 kg or 1000 gm), rendering this property dependent on the content of the additive. While load under which film of Luers was tested is conducted at different load and different temperature, if subject to the same condition the composition of Semen is expected to be within the same range. As Figure 1 shows, the blocking property is dependent on the concentration of the additive as well as content of both lip agent and antiblocking agent.
With respect to claims 15-18, since any LDPE, LLDPE and PP is encompassed by instant claim 2 on which claims 15-18 depend, content of the Fisheyes should also be within the same for the specific amount of any antiblocking agent and any slip agent encompassed by instant claim 1. This is because compounds and their properties are mutually exclusive.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize the additive of Semen in the amount taught by Luers and thereby obtain the claimed invention. Such amount would result in a polyolefin fil which has reduced coefficient of friction which is maintained, because when slip agents are adsorbed onto silica, the problems of slip agents leaching out of the film are minimized.
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Semen (WO 2008/103560) in view of Li (CN 108690222) in view of Li (CN 108690222) and in view of evidence in Luers (AU 1985040342).
Discussion of Semen from paragraph 1 of this office action is incorporated here by reference. While Semen discloses use his additive in polymer composition, wherein term polymer is broad and encompasses many polymers known in the art.
The difference between Semen and instant invention is in reciting other attributes of polyolefin films with small amounts of composite additive.
In his claim 8, Li discloses a polyolefin film comprising 0.05-0.5 parts of composite additive (see also [0072]. The composite additive comprises silica, fatty acid and additives known in the art [0014], wherein the fatty acid will have slip properties and due to its hydrophobic character will decrease coefficient of friction. While Li refers to treated silica as nucleating agents and Semen as anti-blocking agent, silica can perform both functions and still be utilized in the same amounts as evidenced in Luers. Treatment of silica with fatty acid component will reduce coefficient of friction due to presence of its hydrophobic chain also as evidenced by Luers. Figure 1 discloses SEM image of the additive which is of uniform diameter and roundness.
With respect to claims 9, the amount of additive within claimed range results in a polymer film having high transparency. Table 1 discloses optical properties such as transparency and haze, wherein films of the inventive process of Li disclose Have of 13.5 or less. While the method of measuring the transparency is not provided, transparency is physical property and would be within the same range if subject to the same test.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art that use of composite particles of Semen would provide film with transparency when added to the polyolefin.
With respect to claim 14, Semen discloses antiblock particle that is encapsulated by slip agent. The method of Semen includes mixing the two components which may include melting the components, wherein granulation is achieved with use of solvent. The solvent is introduced by spraying.
However, this is not the only way to form flowing powder or granule. The components of the particle can be premixed and the and granules are formed by spray drying at elevated temperature. The dried powder is collected in a cyclone separator (see examples).
Consequently, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed to utilize a method known method of Li to form particles of Semen where the powder or granules are formed using spray drying the components in lieu of utilizing a solvent. In fact Li discloses making composite utilizing the same components that include silica, sodium stearate which is a slip agent along with other additives encompassed by term “optional one or more component” and term “comprising”.
Relevant Art
Other references found during updated search include DE 4424775, EP 138203 and ZA 9505271 all of which are directed to a method of making antiblocking agent encapsulated by slip agent.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 1, 2026
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