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
Applicant's arguments filed 1-6-26 have been fully considered and are persuasive in part. Claims 1-20 were rejected under 35 U.S.C. 103(a) as being unpatentable over US Pub 20040024102 and the arguments are persuasive and the claims are allowable over the prior art. However, newly amended claims 1-20 continue to be rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No.12180331. The amendments do not appear to obviate the ODP rejection and such arguments have not been fully addressed in applicants arguments.
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No.12180331.
Newly amended claims 1-20 continue to be rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No.12180331. The amendments do not appear to obviate the ODP rejection and such arguments have not been fully addressed in applicants arguments.
It is clear that all the elements of the application claims are to be found in patent claims (as the application claims fully encompasses patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is, thus, much more specific. Thus, the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29USPQ2d2010 (Fed. Cir. 1993). Since application claims is anticipated by claims of the patent, it is not patentably distinct from claims of the patent.
Claims 1-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Applications No. 18958754 and/or 17501107. Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention. It is clear that all the elements of the application claims are to be found in related application claims (as the application claims fully encompasses related application claims). The difference between the application claims and the related application claims lies in the fact that the related application claim includes many more elements and is, thus, much more specific. Thus, the invention of claims of the related application is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29USPQ2d2010 (Fed. Cir. 1993). Since application claims is anticipated by claims of the related application, it is not patentably distinct from claims of the related application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Allowable Subject Matter over Prior Art of Record
The following is an Examiner's statement of reasons for the indication of allowable subject matter:
Applicant(s) claimed invention is directed to:
A multilayer, coextruded film formed from polymer consisting of polyester and copolyester, said film comprising at least one outer layer (A) and a base layer (B), wherein the at least one outer layer (A) consists to an extent of at least 60 wt% of a copolyester consisting of units derived from dicarboxylic acids and diols, wherein - the units derived from dicarboxylic acids comprise at least 65 mol% of units derived from terephthalic acid and at least 5 mol% of units derived from 5-sulfo- isophthalic acid and - the units derived from diols comprise at least 90 mol% of units derived from ethylene glycol, the polyester is formed from dicarboxylic acid consisting of terephthalic acid and optional isophthalic acid and the copolyester is formed from dicarboxylic acid consisting of terephthalic acid, 5- isophthalic acid and optional isophthalic acid.
The crux of the invention lies in the discovery that a polyester film with a copolyester containing outer layer in a multilayer biaxially oriented polyester film enables simple washing based removal of adherent contamination while preserving coating functionality thereby permitting direct recycling into film grade polyester while avoiding the problems commonly associated therewith. Such has neither been anticipated by nor made obvious from the prior art. Moreover, in claim 5, applicants have advantageously found that, the at least one outer layer (A) has a thickness of 0.5 µm to 6 µm, as recited in Claim 5. Applicants have found that the foregoing outer layer (A) thickness range imparts an expedient balance of impurity removal during washing with minimal recyclate loss..
Claims 1-20 were rejected under 35 U.S.C. 103(a) as being unpatentable over US Pub 20040024102. Note applicants arguments filed 1-6-26 discuss that US Pub 20040024102 is solely directed to aliphatic-aromatic polyether esters, particularly biodegradable aliphatic-aromatic polyether esters, for use in food packaging, disposable diapers or mulch films. US Pub 20040024102 discloses processes to produce oriented film, process to produce films laminated onto substrates and processes to produce films coated onto substrates. US Pub 20040024102, solely directed polyether esters that include up to 80 mol% aliphatic dicarboxylic acid, does not teach or suggest inventive films formed from polymer consisting of polyester and copolyester, in which the polyester is formed from dicarboxylic acid consisting of terephthalic acid and optional isophthalic acid and the copolyester is formed from dicarboxylic acid consisting of terephthalic acid, 5-isophthalic acid and optional isophthalic acid. The art of record demonstrates other polymers produced in the art which do not however, contain the advantages as mentioned and neither avoid the problems as mentioned above.
Any comments considered necessary by applicant must be submitted no later
than the payment of the Issue Fee and, to avoid processing delays, should
preferably accompany the Issue Fee. Such submissions should be clearly
labeled "Comments on Statement of Reasons for Allowance."
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765