DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 3, 2025 has been entered. Claims 1 and 11 have been amended and claims 1 – 19 are pending. In view of Applicant’s amendments, all previously set forth rejections are withdrawn. The invention as currently claimed is not found to be patentable for reasons herein below.
Response to Arguments
Applicant’s arguments with respect to claims 1 – 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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.
Claims 1 – 19 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.
Applicant has amended claims 1 and 11 to require “said sheet is self-adhering to itself without application of artificially created heat”. Although the Specification does support the concept of the disclosed membrane eliminates the need to apply heat or flame to the membrane [0029] and the membrane may be self-adhesive and may meld with a membrane of the same type [0039], the disclosure does not support the concept of without application of artificially created heat.
Claims 1 – 19 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.
Applicant has amended claims 1 and 11 to require “said sheet is self-adhering to itself without application of artificially created heat”. What temperatures or conditions are considered to be “artificially created heat” vs. “non-artificially created heat” to determine the meets and bounds of the claim?
Claim Rejections - 35 USC § 103
Claims 1 – 7 and 9 - 10 are rejected under 35 U.S.C. 103 as being unpatentable Wilson (US 5,019,315).
Wilson is directed to a multi-layer coextruded polyolefin stretch wrap film useful for the packaging or palletizing of goods (Abstract).
Wilson teaches the object of the present invention is to provide a novel multi-layered coextruded film which exhibits good stretched cling and sufficient machine direction force to stretch which is useful in industrial pallet wrapping applications. Additionally, another object of the present invention is to provide novel multi-layered coextruded stretch wrap films in which the amount of force required to stretch the film is controlled by regulating the thickness of the intermediate layer of the film. Other objectives of Wilson include providing novel multi-layered coextruded stretch wrap films in which the amount of force required to stretch the film is controlled by the melt index and/or molecular weight distribution of the intermediate layer. In general, Wilson notes that a wide variety of stretch wrap films have been disclosed for use in packaging or palletizing operations, virtually all suffer from one or more notable deficiencies. Not all films known in the art possess good on-load stretched cling properties. Other films are deficient in their tensile properties, including the force required in the machine direction (MD) to stretch the film. Still, not all end use applications require the same film characteristics, necessitating the complex production of a broad range of films to suit these applications. (column 4, lines 25 – 65).
Some properties that Wilson notes are desired of a good stretch wrap film include:
Good cling or cohesion properties.
Good transparency.
Good opacity.
Low stress relaxation with time.
Good puncture resistance.
High resistance to transverse tear when under machine direction tension.
Producible in thin gauges.
Low specific gravity and thus high yield in area per pound.
Good tensile toughness.
High machine direction ultimate tensile strength.
High machine direction ultimate elongation.
High modulus of elasticity.
High tear resistance in the transverse direction.
High puncture resistance.
Wilson specifically notes that properties that are particularly significant for the successful use of thermoplastic films in stretch wrap applications include their puncture resistance, their elongation characteristics, their toughness, and their resistance to tearing while under tension. In general, tensile toughness is measured as an area under a stress-strain curve developed for a thermoplastic film, and it may be considered as the tensile energy absorbed, expressed in units of ft.-lbs./cu.in. to elongate a film to break under tensile load. In turn, this toughness characteristic is a function of the capacity of such films to elongate. The process of stretching the film decreases that capacity. Accordingly, the stretch wrap process will decrease the toughness of the film while it is in its stretched condition as an overwrap as compared to unstretched counterparts, including such materials as shrink wrap. Generally this loss of toughness is proportional to the amount of stretch imparted to the film as it is overwrapping a load of goods (column 1, lines 55 – 69 and column 2 lines 1 – 30).
Specifically, Wilson teaches the formation of thermoplastic film using linear low density polyethylene (column 5, lines 29 – 68 and column 6, lines 1 – 68). Specifically, Wilson teaches film compositions of the invention have been found to provide good stretched cling and high machine direction force to stretch (column 7, lines 1 – 5). The film can additionally have other conventional film additives such as UV stabilizers (column 6, lines 50 – 55). Wilson notes that the tensile properties of the multi-layered films of the invention can be controlled or varied by controlling the melt index and/or molecular weight distribution of the HPLDPE intermediate layer and the amount of force required to stretch the multi-layered film is directly proportional to the intermediate layer thickness as a percentage of the overall film thickness (column 7, lines 1 – 50). The films of the invention can be capable of undergoing stretch from about 50 to 500 during the overwrapping operation (column 8, lines 1 – 10). In Wilson’s examples, it is demonstrated that films exhibited good load retention characteristics as well as good resistance to puncture and tear (column 10, lines 10 – 21). Wilson teaches the film thickness of the multi-layer films can vary widely and in general can be a thickness which is typical for stretch wrap films (column 7, lines 50 - 55).
Regarding the preamble, the limitation "for a roof” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Wilson teaches the same structure as Applicant’s claims. Since Wilson teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
Wilson teach the claimed invention above but fail to teach that the membrane is water impermeable, has a modulus of elasticity is at least 4 megapascals, stretch percentage of a least 5% and the overlapping portions of the sheets bond with a tensile adhesion strength of at least 1 psi as required by claim 1, the membrane has a coefficient of friction of 0.4 as required by claim 3, the membrane has a tear strength of at least 220 grams force per mil as required by claim 4, the membrane has a tensile strength of at least 3100 psi as required by claim 5, the membrane has a dart impact strength of at least 3100 psi as required by claim 6 and the membrane is ultraviolet light resistant for at least 24 months as required by claim 7.
The Examiner notes that Wilson teaches the claimed invention, specifically, the LLDPE-based cling membrane having good puncture resistance, elongation characteristics, toughness, and resistance to tearing while under tension among other properties and as such it would be expected to have the claimed properties above. The examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). Specifically, the LLDPE-based cling membrane having water impermeability, good puncture resistance, elongation characteristics, toughness, and resistance to tearing while under tension among other properties would have the claimed properties as described.
Alternatively, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the water impermeability, modulus of elasticity, stretch percentage, tensile adhesion strength, coefficient of friction, membrane tear strength, tensile strength, dart impact strength and ultraviolet light resistance to include the claimed range. One would have been motivated to provide the claimed properties in order to have a stretch wrap film with the desired properties. It should be noted that Wilson reasonably recognizes the properties desired for stretch cling films and the parameters to manipulate those parameters to create the ideal film for the desired use. See discussion of Wilson above. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The burden upon Applicant to demonstrate the claimed parameters are critical and produce unexpected results.
As to claims 2 and 9, Wilson teaches the claimed invention above but fail to specify that the sheet is has a thickness of 12 mils and is at least 4 feet wide. it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the sheet width to include the claimed range. One would have been motivated to provide the claimed thickness and width in order to have a stretch wrap film with the desired properties. It should be noted that Wilson reasonably recognizes the properties desired for stretch cling films and the parameters to manipulate those parameters to create the ideal film for the desired use. See discussion of Wilson above. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The burden upon Applicant to demonstrate the claimed width is critical and produces unexpected results.
As to claim 10, Wilson teaches the claimed invention above. Regarding the limitation of “configured to securely attach to an adhesive”, the limitation defines the invention by what it does, rather than what it is. This is a functional limitation, and therefore was not evaluated on its own, but in conjunction with the remainder of claim. See MPEP 2173.05(g). Wilson teaches the claimed structure as stated in the above rejection, and therefore would be capable of performing in the manner claimed.
Claims 8 and 11 - 19 are rejected under 35 U.S.C. 103 as being unpatentable Wilson (US 5,019,315) in view of Manrique et al. (EP 2,883,683).
Wilson is directed to a multi-layer coextruded polyolefin stretch wrap film useful for the packaging or palletizing of goods (Abstract).
Wilson teaches the object of the present invention is to provide a novel multi-layered coextruded film which exhibits good stretched cling and sufficient machine direction force to stretch which is useful in industrial pallet wrapping applications. Additionally, another object of the present invention is to provide novel multi-layered coextruded stretch wrap films in which the amount of force required to stretch the film is controlled by regulating the thickness of the intermediate layer of the film. Other objectives of Wilson include providing novel multi-layered coextruded stretch wrap films in which the amount of force required to stretch the film is controlled by the melt index and/or molecular weight distribution of the intermediate layer. In general, Wilson notes that a wide variety of stretch wrap films have been disclosed for use in packaging or palletizing operations, virtually all suffer from one or more notable deficiencies. Not all films known in the art possess good on-load stretched cling properties. Other films are deficient in their tensile properties, including the force required in the machine direction (MD) to stretch the film. Still, not all end use applications require the same film characteristics, necessitating the complex production of a broad range of films to suit these applications. (column 4, lines 25 – 65).
Some properties that Wilson notes are desired of a good stretch wrap film include:
Good cling or cohesion properties.
Good transparency.
Good opacity.
Low stress relaxation with time.
Good puncture resistance.
High resistance to transverse tear when under machine direction tension.
Producible in thin gauges.
Low specific gravity and thus high yield in area per pound.
Good tensile toughness.
High machine direction ultimate tensile strength.
High machine direction ultimate elongation.
High modulus of elasticity.
High tear resistance in the transverse direction.
High puncture resistance.
Wilson specifically notes that properties that are particularly significant for the successful use of thermoplastic films in stretch wrap applications include their puncture resistance, their elongation characteristics, their toughness, and their resistance to tearing while under tension. In general, tensile toughness is measured as an area under a stress-strain curve developed for a thermoplastic film, and it may be considered as the tensile energy absorbed, expressed in units of ft.-lbs./cu.in. to elongate a film to break under tensile load. In turn, this toughness characteristic is a function of the capacity of such films to elongate. The process of stretching the film decreases that capacity. Accordingly, the stretch wrap process will decrease the toughness of the film while it is in its stretched condition as an overwrap as compared to unstretched counterparts, including such materials as shrink wrap. Generally this loss of toughness is proportional to the amount of stretch imparted to the film as it is overwrapping a load of goods (column 1, lines 55 – 69 and column 2 lines 1 – 30).
Specifically, Wilson teaches the formation of thermoplastic film using linear low density polyethylene (column 5, lines 29 – 68 and column 6, lines 1 – 68). Specifically, Wilson teaches film compositions of the invention have been found to provide good stretched cling and high machine direction force to stretch (column 7, lines 1 – 5). The film can additionally have other conventional film additives such as UV stabilizers (column 6, lines 50 – 55). Wilson notes that the tensile properties of the multi-layered films of the invention can be controlled or varied by controlling the melt index and/or molecular weight distribution of the HPLDPE intermediate layer and the amount of force required to stretch the multi-layered film is directly proportional to the intermediate layer thickness as a percentage of the overall film thickness (column 7, lines 1 – 50). The films of the invention can be capable of undergoing stretch from about 50 to 500 during the overwrapping operation (column 8, lines 1 – 10). In Wilson’s examples, it is demonstrated that films exhibited good load retention characteristics as well as good resistance to puncture and tear (column 10, lines 10 – 21). Wilson teaches the film thickness of the multi-layer films can vary widely and in general can be a thickness which is typical for stretch wrap films (column 7, lines 50 - 55).
Regarding the preamble, the limitation "for a roof” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Wilson teaches the same structure as Applicant’s claims. Since Wilson teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
Wilson fail to teach that the film is flame retardant as required by claim 8 and has a flame spread index of 0 as required by claim 11.
Manrique et al. is directed to a pre-stretch packaging film (Title). Manrique et al. teach the film can be made of LLDPE [0016]. The LLDPE resin can have one or more additive such as a UV stabilizer and flame retardant among other additives that are desirable for a packing film [0022].
It would have been obvious to one of ordinary skill in the art at the date of effective filing to include a flame retardant additive as suggested by Manrique et al. to the film of Wilson motivated by the desire to impart additional desirable properties for a wrapping film.
Wilson in view of Manrique et al. teach the claimed invention above but fail to teach that the membrane is water impermeable, has a flame spread index of 0, has a modulus of elasticity is at least 4 megapascals, stretch percentage of a least 5% and the overlapping portions of the sheets bond with a tensile adhesion strength of at least 1 psi as required by claim 11, the membrane has a coefficient of friction of 0.4 as required by claim 13, the membrane has a tear strength of at least 220 grams force per mil as required by claim 14, the membrane has a tensile strength of at least 3100 psi as required by claim 15, the membrane has a dart impact strength of at least 3100 psi as required by claim 16, the membrane is ultraviolet light resistant for at least 24 months as required by claim 17.
The Examiner notes that Wilson teaches the claimed invention, specifically, the LLDPE-based cling membrane having good puncture resistance, elongation characteristics, toughness, and resistance to tearing while under tension among other properties and as such it would be expected to have the claimed properties above. The examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). Specifically, the LLDPE-based cling membrane having water impermeability, good puncture resistance, elongation characteristics, toughness, and resistance to tearing while under tension among other properties would have the claimed properties as described.
Alternatively, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the water impermeability, flame index spread, modulus of elasticity, stretch percentage, tensile adhesion strength, coefficient of friction, membrane tear strength, tensile strength, dart impact strength and ultraviolet light resistance to include the claimed range. One would have been motivated to provide the claimed properties in order to have a stretch wrap film with the desired properties. It should be noted that Wilson reasonably recognizes the properties desired for stretch cling films and the parameters to manipulate those parameters to create the ideal film for the desired use. See discussion of Wilson above. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The burden upon Applicant to demonstrate the claimed parameters are critical and produce unexpected results.
As to claims 12 and 18, Wilson teaches the claimed invention above but fail to specify that the sheet is has a thickness of 12 mils and is at least 4 feet wide. it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the sheet width to include the claimed range. One would have been motivated to provide the claimed thickness and width in order to have a stretch wrap film with the desired properties. It should be noted that Wilson reasonably recognizes the properties desired for stretch cling films and the parameters to manipulate those parameters to create the ideal film for the desired use. See discussion of Wilson above. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The burden upon Applicant to demonstrate the claimed width is critical and produces unexpected results.
As to claim 19, Wilson teaches the claimed invention above. Regarding the limitation of “configured to securely attach to an adhesive”, the limitation defines the invention by what it does, rather than what it is. This is a functional limitation, and therefore was not evaluated on its own, but in conjunction with the remainder of claim. See MPEP 2173.05(g). Wilson teaches the claimed structure as stated in the above rejection, and therefore would be capable of performing in the manner claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER A BOYD whose telephone number is (571)272-7783. The examiner can normally be reached M-F 8 am - 5 pm with alternating Fridays off.
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, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786