DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/1/2026 has been entered.
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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 5-16 and 18-23, in the reply filed on 8/11/2025 is acknowledged. The examiner notes claim 17 is dependent upon claim 1 and, thus, should have been included in Group I, not Group II, of the restriction. Thus, claim 17 is herein understood to be withdrawn as part of non-elected Group I. The examiner further notes that, after further consideration, the species election has been withdrawn.
Claims 1-4, 17, and 24-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/11/2025.
Drawings
The drawings filed 8/12/2022 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 7, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regards to claims 6, 7, and 23, said claims are held to be indefinite because it is unclear what is meant by “processed to reduce any filler or additive that is hydrophilic.” The term “hydrophilic” in said claims is a relative term which renders the claim indefinite. The term “hydrophilic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, it is unclear how a skilled artisan would distinguish between filler/additives that need to be reduced and those that do not. Furthermore, applicant provides no examples or explanations of what is meant by “processed to reduce” any filler or additive that is hydrophilic-is the hydrophilicity of the filler/additive being altered, is the “hydrophilic” filler or additive being removed from the film, etc. Does the process have to “reduce” the amount of each filler or additive that is hydrophilic or reduce the total amount of filler or additive that is hydrophilic?
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) 5-7, 9, 11-16, 18-23 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagrodia et al (US 2001/0008699) in view of Wrosch et al (US 2007/0135552) and Tsai et al (US 2009/0317627).
Bagrodia teaches a film product (abstract), comprising a core layer between inner and outer layers (claim 3-said inner and outer layers read on the claimed “a cap layer positioned atop the core layer so that the cap layer forms a top layer”). The core layer (0024) and the inner and outer layers (claims 7) may comprise PVC (see also paragraph 0049 wherein it is taught the core and outer/inner layers may comprise the same resin). The core further comprises platelet particles (claim 1-herein understood to read on the claimed “a 2D filler”). Said particles are smaller than 7 microns (0055-herein understood to read on the claimed “micro- or nano- scale”). Bagrodia teaches the 2D filler may comprise clay, mica, montmorillonite, silicate clays or combinations thereof (0052+).
Bagrodia teaches the 2D filler may comprise clay, mica, montmorillonite, silicate clays or combinations thereof (0052+), but does not teach said clay may further comprise graphite or graphene. However, Tsai teaches the clay may be modified with a modifier to improve the thermal resistance and flame resistance (0022) of said polymer composition (abstract). The modifier may comprise carbon nanotubes, or graphite (0027). Thus, it would have been obvious to utilize the modified clay disclosed in Tsai in place of the clay disclosed in order to improve the flame resistance of the film disclosed herein. The examiner notes said modified clay is understood to read on the claimed 2D filler which “comprises graphene, graphite…”
Bagrodia teaches the film has reduced oxygen permeability, but does not teach the film product has a water vapor permeance as measured by ASTM E96 of 0.030 perm or less. However, Wrosch teaches the inclusion of dispersed platelets or clay create improved polymeric barrier films with regards to both oxygen and water vapor (0037). The improvement in barrier properties is a result of the size, dispersion, and amount of platelet in the resin (see Bagrodia (all)). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of platelet filler added to the core layer of Bagrodia in order to optimize the water vapor permeance of the film.
With regards to claims 6, 7, and 23, the limitation “processed to reduce any filler or additive that is hydrophilic” is understood to be a method limitation. The courts have held that a claimed method limitation does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a distinct product. In the present application, no such showing has been made. Thus, said limitation is not understood to patentably distinguish the claimed product from the product disclosed in the prior art.
With regards to claim 9, Bagrodia teaches the 2D filler may be present in an amount from 0.01 wt.% to 50 wt.%, based on the total weight of the layer (claim 12).
With regards to claim 11, Bagrodia teaches the core layer may have a thickness of from 5 microns to 100 microns (table 1).
With regards to claim 12, Bagrodia teaches the cap layer may have a thickness of from 5 microns to 100 microns (table 1).
With regards to claim 13, , the limitation “recycled PVC” is understood to be a method limitation. The courts have held that a claimed method limitation does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a distinct product. In the present application, no such showing has been made. Thus, said limitation is not understood to patentably distinguish the claimed product from the product disclosed in the prior art.
With regards to claim 14, Bagrodia teaches the core layer may further comprise a dispersing agent (0066).
With regards to claim 15, Bagrodia teaches the core layer further comprises a surfactant (0055).
With regards to claim 16, Bagrodia teaches the core layer further comprises a surfactant (0055). The skilled artisan at the time of filing would have at once envisaged (MPEP 2132.02) the use of a cationic surfactant, an anionic surfactant, a zwitterionic surfactant, a nonionic surfactant, or combinations thereof.
With regards to claim 18 and 19, Bagrodia teaches the film has reduced oxygen permeability, but does not teach the film product has a water vapor permeance as measured by ASTM E96 of 0.030 perm or less. However, Wrosch teaches the inclusion of dispersed platelets or clay create improved polymeric barrier films with regards to both oxygen and water vapor (0037). The improvement in barrier properties is a result of the size, dispersion, and amount of platelet in the resin (see Bagrodia (all)). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of platelet filler added to the core layer of Bagrodia in order to optimize the water vapor permeance of the film. When optimizing water vapor permeance as measured by perms, one would also necessarily optimize the water vapor permeability based upon perms / inch.
With regards to claim 20, Bagrodia teaches the 2D filler has an average particle size of less than 7um (0055)-herein understood to anticipate the claimed rage of “50 nm to 10 um.” Alternatively, Bagrodia teaches the size of the particles is a result effective variable effecting the haze and barrier properties of the composition (0004). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the size of the platelet materials disclosed in Bagrodia in order to optimize the haze and barrier properties of the composition.
With regards to claim 21, Bagrodia teaches the 2D filler has a thickness of less than 2nm and a diameter in the range of 10-10000nm (0052). Thus, said filler is understood to have an aspect ratio of 10 to 10,000, as measured by the ratio between the larger size and the smaller size.
With regards to claims 22 and 29, Bagrodia teaches a film product (abstract), comprising a core layer between inner and outer layers (claim 3-said inner and outer layers read on the claimed “a cap layer positioned atop the core layer so that the cap layer forms a top layer”). The core layer (0024) and the inner and outer layers (claims 7) may comprise PVC (see also paragraph 0049 wherein it is taught the core and outer/inner layers may comprise the same resin). The core further comprises platelet particles (claim 1-herein understood to read on the claimed “a 2D filler”). Said particles are smaller than 7 microns (0055-herein understood to read on the claimed “micro- or nano- scale”).
Bagrodia teaches the film has reduced oxygen permeability, but does not teach the film product has a water vapor permeance as measured by ASTM E96 of 0.030 perm or less. However, Wrosch teaches the inclusion of dispersed platelets or clay create improved polymeric barrier films with regards to both oxygen and water vapor (0037). The improvement in barrier properties is a result of the size, dispersion, and amount of platelet in the resin (see Bagrodia (all)). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the amount of platelet filler added to the core layer of Bagrodia in order to optimize the water vapor permeance of the film. When optimizing water vapor permeance as measured by perms, one would also necessarily optimize the water vapor permeability based upon perms / inch.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bagrodia et al (US 2001/0008699) in view of Wrosch et al (US 2007/0135552), as applied to claims 5-7, 9, 11-16, and 18-23 above, and further in view of Compton et al US 2011/0223405.
Bagrodia in view of Wrosch is relied upon as above, but does not teach the cap layer should also comprise a 2D filler incorporated at the micro or nano scale. However, Compton teaches that graphene-based nanosheets may be dispersed in a polymer for the reduction of gas permeability (abstract). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to disperse graphene nanosheet in the inner and outer layers of the film disclosed in Bagrodia in order to reduce the gas permeability of the film.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
Rejection under 35 U.S.C. §112(b)
With regards to the rejection of claim 6, 7, and 23 were rejected because the term "hydrophilic" was indefinite, applicant respectfully submits that the term hydrophilic is a commonly used and understood term in the field that means substances that can be mixed with or dissolved in water. Said argument is noted but is not persuasive as applicant has failed to provide evidence supporting their proposed amendment. Applicant proposes using the sessile drop method and understanding any material with a contact angle less than 90 degrees to be hydrophilic. However, applicant provides no evidence supporting said argument. Furthermore, applicant has not addressed the determination the term is indefinite because “hydrophilic” is a relative term not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regards to the rejection of claims 6, 7, and 23 because it is unclear what "processed to reduce" any filler or additive that is hydrophilic, Applicant respectfully submits that this means that any process known to one of ordinary skill in the art that reduces the amount of filler or additive that is hydrophilic in the PVC mentioned can be used. Said argument is not persuasive as said argument fails to address the concerns set forth in the rejection. Specifically, applicant provides no examples (and the examiner is not aware) of what is meant by “processed to reduce” any filler or additive that is hydrophilic. Applicant also does not explain if the hydrophilicity of the filler/additive is being altered, is the “hydrophilic” filler or additive being removed from the film, and whether the process reduces the amount of each filler or additive that is hydrophilic or reduce the total amount of filler or additive that is hydrophilic.
Rejection under 35 U.S.C. §103
With regards to the rejection of Claims 5-7, 9-16, and 18-23 are rejected under 35 U.S.C. §103 as allegedly being unpatentable over U.S. Publication No. 2001/0008699 to Bagrodia et al. ("Bagrodia") in view of U.S. Publication No. 2007/0135552 to Wrosch et al. ("Wrosch") and Tsai, Applicant argues Tais is relied upon to teach the modification of clay with a modifier such as carbon nanotubes. Applicant argues because Tais is direct to adding material to clay as opposed to a PVC cap/core layer as claimed, said teaching fails to render obvious the claimed invention. The examiner respectfully disagrees for reasons of record. Specifically, Bagrodia in view of Wrosch teach a PVC cap/core layer wherein said layers comprise clay. Since the claims merely require that the cap or core layer “comprise” the 2D filler, said filler may be present anywhere in the core/cap layer, including within the clay particles present therein.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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