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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/22/26 has been entered.
Election/Restrictions
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the product of Group I (i.e., claim 1) could be made via a different process than that of claim 11, such as by using a stretching step at different temperatures than those claimed. Please see MPEP 806.05(f).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1, 2, 4, 5, 7, 8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawada et al. (JP 2017226161, “Sawada” a machine translation of which has been appended and is used as the citation copy) in view of Osada et al. (US 2004/0247879, “Osada”) in view of Potter et al. (US 2016/0304681, “Potter”).
Regarding claims 1 and 2, Sawada teaches a biaxially oriented polypropylene film (pp. 1-2) having a half width of a peak from an oriented crystal in a width direction of the film in an azimuth dependence of a 110 plane of polypropylene (and measured by X-ray diffraction) of 25o or less (see p. 6 final paragraph – p. 7). Sawada additionally teaches that the heat shrinkage ratio in both machine and transverse directions of 2.0% or less (p. 6 lines 5-20, additionally the longitudinal shrinkage may be smaller than the transverse shrinkage). The Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05. Sawada fails to specifically teach the tensile elongation at break of the film. However, in the same field of endeavor of polypropylene films ([0009], [0018]), Osada teaches that it is known to provide a polypropylene film with elongation properties such that its tensile elongation at break is on the range of from 100% to 300% in order to provide good protective properties when used on glass ([0065]). It therefore would have been obvious to have adjusted the tensile elongation at break of the film of Sawada to within the range of from 100% to 300% in order to provide a film that is effective as a protective film for glass to prevent glass from scattering on breakage (Osada [0065]). Sawada fails to specifically teach the tensile strength at break of the film. However, in the same field of endeavor of biaxially oriented polypropylene films ([0002]), Potter teaches that it is known to provide a polypropylene film with greater toughness or stiffness and a tensile strength in the transverse direction of from 300 to 450 N/mm^2 (or 300 to 450 MPa, [0056], [0057]). Potter teaches that such properties provide favorable mechanical properties like high stiffness and high toughness compared with other biaxially oriented polypropylene films ([0002] – [0004], [0056], [0057]). It therefore would have been obvious to have adjusted the tensile strength in the transverse direction of from 300 to 450 N/mm^2 (or 300 to 450 MPa, [0056], [0057]) in order to provide the film with favorable mechanical properties like high stiffness and high toughness compared with other biaxially oriented polypropylene films ([0002] – [0004], [0056], [0057]).
Regarding claim 4, modified Sawada additionally teaches that the haze should be kept below 5.0% in order to ensure that objects are visible through the film and therefore such a haze would have been obvious to the person of ordinary skill in the art at the time of filing (Osada, [0023]).
Regarding claim 5, Sawada additionally teaches that the mesopentad fraction of the polypropylene may be greater than 97.0% (Sawada, p. 6 lines 25-60).
Regarding claim 7, Sawada additionally teaches that the melt flow rate may be greater than 4.0g/10mins (Sawada, p. 6, last paragraph).
Regarding claim 8, Sawada additionally teaches that the propylene resin component having a molecular weight of 100,000 or less may be 35 mass% or more (see, e.g., p. 7, lines 5-50).
Regarding claim 10, Although Sawada does not disclose the claimed process steps, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed method and given that the teachings of modified Sawada meet the requirements of the claimed invention as described above, the film of claim 10 (i.e., the film of claim 1 but made by the process of claim 10) is considered to be taught by the applied references.
Claim(s) 3 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawada in view of Osada in view of Potter as applied to claim 1, above, and further in view of Kinoshita et al. (WO 2017221781, “Kinoshita”).
Regarding claim 3, Sawada fails to specifically teach the refractive index of the polypropylene film. In the same field of endeavor of biaxially oriented polypropylene films (pp. 1-2), Kinoshita teaches a polypropylene film having a refractive index Ny in a lateral direction of greater than 1.523 (p. 6, Refractive Index section, lines 35-50) and Nx, Ny, and Nz substantially similar to those of the present specification such that ΔNy would necessarily be substantially similar and read on the presently claimed range (Kinoshita, p. 6, Refractive Index section, lines 35-50; and see present specification at [0053] – [0056]). For example Kinoshita teaches values such as an Nx of 1.4950, an Nz of 1.4960, and an Ny of 1.5230, which results in an ΔNy of 1.339 (i.e., ΔNy = Ny-((Nx+Nz)/2) = 1.5230-((1.4950+1.4960)/2) = 0.0275) and thus reads on the claimed range of values for ΔNy. It therefore would have been obvious to have adopted the refractive index properties for a polypropylene film as described by Kinoshita as these refractive index properties are suitable for use in a film for various application such as packaging, insulating films, and the like (see Kinoshita, p. 21).
Regarding claim 10, while Sawada fails to specifically teach the claimed processing steps, Potter teaches a transverse draw step on the range of from Tm-20 to Tm+8 at a ratio of from 6.0 to 12.0 in order to obtain good tensile strength and modulus of elasticity in the transverse direction ([0086], [0087], [0097] – [0100]) and to cool the film to within the range of from 80C to 100C (e.g., [0082]) for a film having a melting temperature of around 165C ([0009]). Further, Osada teaches that it is known to control the cooling and/or heating steps after stretching in order to, for example, control the optical properties of the film ([0081] – [0083]). Osada teaches that controlling these temperatures are considered conventional in the art and modifying such a process in order to control the properties of the film therefore would have been obvious to the person of ordinary skill in the art (Osada, [0081] – [0083]). Therefore, it would have been obvious to the ordinarily skilled artisan to have adopted similar steps in order to provide the film with good tensile strength and modulus of elasticity in the transverse direction and suitable optical properties (Potter, [0086], [0087], [0097] – [0100]; Osada, [0081] – [0083]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawada in view of Osada in view of Potter as applied to claim 1, above, and further in view of Denifl et al. (US 2014/0220236, “Denifl”).
Regarding claim 6, Sawada teaches that the melt temperature may be higher than 160C (see, e.g., p. 9, paragraph 4) but Sawada fails to specifically teach the crystallization temperature is 105C or higher. In the same field of endeavor of biaxially oriented polypropylene films (e.g., [0056]), Denifl teaches that it is known to provide such a film with a crystallization temperature of 105C or more in order that the film may be used as a capacitor film and thus the adjustment of the crystallization temperature to that range would have been obvious to the person of ordinary skill in the art at the time of filing ([0121], [0122] and see properties associated with such films such as good mechanical properties, self-healing character etc., [0002]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawada in view of Osada in view of Potter as applied to claim 1, above, and further in view of Ikeda et al. (JP 2017-186561, “Ikeda,” a machine translation of which has been appended and is used as the citation copy).
Regarding claim 9, Sawada fails to specifically teach that the orientation degree of the film is 0.85 or more. However, in the same field of endeavor of polypropylene films (p. 2), Ikeda teaches that such films may have an orientation degree of greater than 85% or more in order to improve the mechanical properties of the film and thus in order to improve the mechanical properties of the film of Sawada it would have been obvious to the person of ordinary skill in the art at the time of filing to have adjusted the orientation degree of the film to greater than 85% (Ikeda, p. 2 lines 12-30).
Response to Arguments
Applicant's arguments filed 4/22/26 have been fully considered but they are not persuasive.
Applicant argues that the present inventors have discovered a method of forming a polypropylene film resulting in the claimed properties. While this appears to be the case, the claims under examination are drawn to the oriented polypropylene film, not the process for making it. Applicant argues that the references fail to teach the combination of features presently claimed. That is, Applicant argues that the references fail to anticipate the claimed invention. 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). The Examiner first maintains that the claimed properties are well known in the prior art as described in the rejections above. Furthermore, it is within the capacity of the person of ordinary skill in the art at the time of filing to adjust the production parameters of the film of modified Sawada in order to produce a film having these properties. For example, see the rejection of claim 10, above, wherein substantially similar processes are employed in order to modify the properties of a polypropylene film. Therefore, the Examiner maintains that the claimed polypropylene film would have been obvious to the ordinarily skilled artisan at the time of filing as described above.
Therefore, claims 1-10 are rejected as described above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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