DETAILED ACTION
This Office Action is responsive to the amendment filed on 2/19/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 (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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/19/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15, 16, 21, and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 15: Claim 15 depends from claim 12, and states that the hydrocarbon group in the fatty acid has 8 to 22 carbon atoms. As amended, claim 12 requires the fatty acid ester is a derivative of lauric acid, caprylic acid, oleic acid, or behenic acid (see lines 12-16). Note that each of these names refers to a specific compound having a specific number of carbon atoms in its structure. Claim 15 therefore impermissibly broadens the scope of the parent claim to read on fatty acids other than those recited in the independent claim.
Regarding claim 16: Claim 16 depends from claim 12, and states that the polyhydric alcohol is propylene glycol, glycerin, or a glycerin condensate. Note that “glycerin condensate” reads on structures wherein any number of glycerin molecules are oligomerized. In contrast, claim 12 as amended limits the polyhydric alcohol to species which include diglycerin, tetraglycerin, and decaglycerin (see lines 12-16). The phrase “glycerin condensate” as recited in claim 16 impermissibly broadens the scope of the claimed invention to read on glycerin condensates other than those specifically named in independent claim 12.
Regarding claim 21: Claim 21 depends from claim 18, and states that the hydrocarbon group in the fatty acid has 8 to 22 carbon atoms. As amended, claim 18 requires the fatty acid ester is a derivative of lauric acid, caprylic acid, oleic acid, or behenic acid (see lines 12-16). Note that each of these names refers to a specific compound having a specific number of carbon atoms in its structure. Claim 21 therefore impermissibly broadens the scope of the parent claim to read on fatty acids other than those recited in the independent claim.
Regarding claim 22: Claim 22 depends from claim 18, and states that the polyhydric alcohol is propylene glycol, glycerin, or a glycerin condensate. Note that “glycerin condensate” reads on structures wherein any number of glycerin molecules are oligomerized. In contrast, claim 18 as amended limits the polyhydric alcohol to species which include diglycerin, tetraglycerin, and decaglycerin (see lines 12-16). The phrase “glycerin condensate” as recited in claim 22 impermissibly broadens the scope of the claimed invention to read on glycerin condensates other than those specifically named in independent claim 18.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claim(s) 12-16, 18-22, 29, and 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al, JP2007045855 (of record).
A machine translation of Tanaka was used for the preparation of this Action.
Example 6 of Tanaka (¶0046, Table 4) discloses the production of a multilayer film (for claim 12) comprising intermediate layers and surface layers, wherein the intermediate layers are prepared from a composition (for claim 18) comprising a polymer blend and an antifogging agent.
Regarding the claimed non-modified polyolefin: The polymer blend of the intermediate layer comprises a blend comprising a crystalline propylene resin, an amorphous propylene resin, and an ethylene/olefin copolymer. Note that these are all non-modified olefin copolymers. This blend therefore corresponds to the claimed non-modified polyolefin (for claims 12, 18). Further note that the ethylene/olefin copolymer is reported to have a density of 0.904g/cm3 and a melt index of 4.00 (Table 4); based on this information it is concluded that this polymer corresponds to polymer (D) which is identified as a copolymer of ethylene and 1-hexene (i.e., a C6 olefin) (for claims 13, 14, 19, 20) (see ¶0043 for description of copolymer (D)), corresponding to the claimed non-modified polyolefin resin which comprises (for claims 12, 18) an ethylene/olefin copolymer (for claims 13,14, 19, 20).
Regarding the claimed ethylene/vinyl acetate copolymer (EVA): The polymer blend in the intermediate layer comprises 23 parts of a second EVA having a vinyl acetate content of 15 wt% and MI of 1. Based on the molecular weights of ethylene (28.05 g/mol) and vinyl acetate (86.09 g/mol), it is calculated that this polymer has a vinyl acetate content of about 5.3 mol% (for claims 12, 18). The prior art second EVA therefore corresponds to the claimed EVA (for claims 12, 18).
Regarding the claimed fatty acid ester: The antifogging agent used in the prior art example comprises glycerin monooleate (for claims 12, 18) and diglycerol laurate (Table 4; ¶0042). Note that oleic acid and lauric acid are fatty acids containing 18 caron atoms and 12 carbon atoms, respectively (for claims 15, 21). Glycerin monooleate therefore corresponds to the claimed antifogging agent wherein the polyhydric alcohol is glycerin (for claims 12, 16, 18, 22) and diglycerol laurate corresponds to the claimed antifogging agent when the polyhydric alcohol is a glycerin condensate (for claims 12, 16, 18, 22).
Regarding the amount of EVA relative to the non-modified polyolefin: As noted above, the composition of the intermediate layer of prior art Example 6 comprises 100 parts of a blend of 67 wt% ethylene/olefin copolymer and 23 wt% of a second EVA. Based on these numbers, an ordinary artisan can calculate that the prior art composition comprises about 40.3 parts second EVA per 100 parts polyolefin (for claims 12, 18).
Regarding the amount of fatty acid ester relative to non-modified polyolefin: The intermediate layer of Example 6 comprises 100 parts of a polymer blend that comprises 67 wt% non-modified polyolefin blend and 2.0 part of an additive blend that comprises 40 wt% glycerin monooleate and 40 wt% diglycerol laurate (Table 4). The overall composition therefore comprises 67 parts non-modified polyolefin(s) and a total of 1.6 parts antifogging agent (i.e., 0.8 parts glycerin monooleate and 0.8 parts diglycerol laurate). Based on these numbers, it is calculated that the prior art composition comprises about 2.4 parts antifogging agent per 100 parts polyolefin(s) (for claim 12, 18).
Regarding claims 29, 32, and 33: As noted above, the prior art composition is molded (for claim 29 into a multilayer film (¶0046) comprising an intermediate layer comprising the composition discussed above, corresponding to the resin layer (for claim 32) and two surface layers, corresponding to the other layers (for claim 32). Said surface layers comprise an ethylene/olefin copolymer, corresponding to the claimed polyolefin resin (for claim 33) (Table 4). Not that the outer surface layer would correspond to a lamination on the intermediate layer and inner surface layer (for claim 33).
Claim Rejections - 35 USC § 103
Claim(s) 24-27 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al, JP2007045855 (of record).
As discussed earlier in this Action, the intermediate layer of the multilayer film (for claim 30) of Tanaka’s Example 6 was prepared from a composition comprising a blend of polyolefins, corresponding to the claimed non-modified polyolefin; an EVA, corresponding to the claimed EVA; and an antifogging agent, corresponding to the claimed fatty acid ester (for claim 24).
Regarding the first non-modified polyolefin: As noted earlier in this Action, the blend of polyolefins comprises an ethylene/hexene copolymer, corresponding to the first non-modified polyolefin resin which is part of the of the non-modified polyolefin(for claim 24).
Regarding the first EVA: As noted above, the EVA in the intermediate layer has a vinyl acetate content of about 5.3 mol% (for claim 24). The prior art EVA therefore corresponds to the claimed first EVA which is part of the EVA copolymer (for claim 24).
Regarding the ratio of EVA to first non-modified polyolefin: The amount of ethylene/hexene copolymer is 50 parts and the amount of EVA is 23 parts; the prior art composition therefore comprises about 46 parts EVA per 100 parts of the ethylene/hexene copolymer (for claim 24).
Regarding the ratio of fatty acid ester to first non-modified polyolefin: Tanaka teaches that the amount of antifogging agent is 0.3 to 5.0 parts relative to 100 parts of the polyolefin (¶0012). Given that 1) the prior art composition may comprise 0.3 to 5.0 parts relative to 100 parts of the polyolefin and 2) the polyolefin used in the intermediate layer of example 6 comprises 50 parts ethylene/hexene copolymer, an ordinary artisan will recognize that the prior art intermediate layer may comprise 0.6 to 10 parts antifogging agent per 100 parts of the ethylene/hexene copolymer, overlapping the claimed range (for claim 24).
Regarding claims 25-26. The composition of the intermediate layer further comprises a crystalline propylene resin which is a copolymer comprising ethylene, corresponding to the second non-modified polyolefin (for claim 25). As both this resin and the ethylene/hexene copolymer are olefin copolymers comprising ethylene and an olefin, it is maintained that they are the same type of resin (for claim 26).
Regarding claim 27: Claim 27 does not contain any language requiring a second EVA to be present in the claimed composition. As noted above with respect to claim 25, the prior art composition corresponds to the claimed invention comprising a second non-modified polyolefin.
Tanaka does not specifically disclose the production of a composition comprising the claimed amount of fatty acid ester relative to the amount of first non-modified polyolefin or the use of a masterbatch.
Regarding the amount of fatty acid ester: It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05). The prior art range overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was filed to prepare a composition comprising the claimed amount of antifogging agent in view of the teachings of Tanaka (for claim 24).
Regarding the use of a masterbatch: Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). The difference between the claimed invention and the prior art is that it requires that a portion of the components are pre-blended with one another to form a masterbatch prior to their mixture with the remainder of the components. One of ordinary skill in the art will recognize that, upon mixing the masterbatch with the other components, the contents of the masterbatch are dispersed are dispersed throughout the final composition. As discussed in the previous paragraphs, the prior art teaches a composition that comprises the same components combined in the same ratio as required of the overall resin composition. It is therefore reasonably expected that the prior art composition corresponds to the composition obtained using a masterbatch as recited in the instant claim (for claim 24).
Alternatively, it has been held that the “[S]election of any order of mixing ingredients is prima facie obvious”; see In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results) (MPEP § 2144.04(IV)(C)). The prior art renders obvious a composition comprising the same components combined in the same ratios as the recited in the claimed invention. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the process of Tanaka by combining the ethylene/hexene copolymer, EVA, and antifogging agent-resulting in the production of a masterbatch (for claim 24)- prior to mixing them with the other components of the intermediate layer of Example 6.
Claim(s) 17, 23, 28, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al, JP2007045855 (of record), as applied to claims 12-16, 18-22, 24-27, 29-30, and 32-33 above, and further in view of Sakata, JP2018177983 (of record).
A machine translation of Sakata was used to prepare this rejection.
The disclosure of Tanaka is discussed earlier in this Action. Briefly, Example 6 of Tanaka discloses the production of a multilayer film (for claim 31) wherein the intermediate layer comprises a blend of polyolefin resins, an EVA, and fatty acid esters as an antifogging agent.
Tanaka is silent regarding the inclusion of a sodium alkylsulfonate having 13 to 18 carbon atoms.
Sakata discloses an antifogging agent used in polyolefin films (abstract), wherein said antifogging agent comprises a component (C) which is may be an alkali metal alkyl sulfonate having 6 to 22 carbon atoms (¶0021). Sodium alkyl sulfonate salts having 12 to 18 carbon atoms (for claims 17, 23, 30) are taught to be a preferred embodiment of this component (¶0022). Further note that Sakata teaches compounds wherein the alkyl group is a tridecyl, tetradecyl, pentadecyl, hexadecyl, or heptadecyl group (¶0022); one of ordinary skill in the art will recognize that these names refer to straight chain alkyl groups (for claims 17, 23). Said antifogging agent comprises 0.9 to 50 mass% of component (C) (¶0006), and is present in the final polyolefin composition in an amount of 0.2 to 9.4 mass%.. Based on these numbers, it is therefore calculated that addition of Sakata’s antifogging additive to the polyolefin results in a final blend comprising .0018 to 4.7 mass% of sodium alkyl sulfonate (C).
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…. [T]he idea of combining them flows logically from their having been individually taught in the prior art;” see In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Both Tanaka and Sakata are disclosed to the production of polyolefin films comprising antifogging agents. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Tanaka by combining the fatty acid ester-based antifogging agent with the antifogging agent comprising a sodium alkyl sulfonate salt, as taught by Sakata, with the reasonable expectation of obtaining an additive blend suitable for use as an antifogging agent in the polyolefin-based film of Tanaka (for claims 17, 23, 28).
Regarding the amount of sodium alkyl sulfonate: As noted above, the composition of Tanaka comprises 0.3 to 5.0 parts fatty acid ester antifogging agent relative to 100 parts of the polyolefin. The addition of the antifogging additive of Sakata results in a composition comprising 0.0018 to 4.7 parts of sodium alkyl sulfonate. Combining the prior art additives would therefore result in a ratio of sodium alkyl sulfonate to fatty acid ester in the range of 0.036 to 1566.7 parts sodium alkyl sulfonate per 100 parts fatty acid ester, overlapping the claimed range (for claim 28).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The range rendered obvious by the prior art overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising the claimed amount of sodium alkyl sulfonate in view of the combined teachings of Tanaka and Sakata (for claim 28).
Claim(s) 12-16, 18-22, 24, 29, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Noro et al, JP H08300582 (of record).
A machine translation of Noro was used for the preparation of this Action.
Noro discloses the production (for claims 29, 30) of a laminated film (for claims 32) comprising an inner layer, corresponding to the claimed other layer(s) (for claim 32) and inner and outer layers (abstract, ¶0008, 0011). Said inner and outer layers are made from a composition (for claim 18) comprising a polyolefin and an antifogging agent (for claims 1, 7, 8) (abstract, ¶0008).
Regarding the claimed non-modified polyolefin resin: The prior art polyolefin comprises a linear ethylene/olefin copolymer, corresponding to the claimed non-modified polyolefin resin (for claims 12, 13, 18) (¶0011) which is all of the non-modified polyolefin (for claim 24). Said olefin comonomer preferably has 4 to 8 carbon atoms (for claims 13, 14, 19, 20) (¶0011).
Regarding the claimed EVA: The prior art polyolefin may comprise 0.5 to 40 wt% of an EVA having a vinyl acetate content in the range of 5 to 30 wt% (¶0017). Based on the molecular weights of ethylene (28.05 g/mol) and vinyl acetate (86.09 g/mol), it is calculated that the vinyl acetate content of the prior art EVA is about 1.7 to 12.3 mol%, overlapping the claimed range (for claims 12, 18). The prior art EVA therefore corresponds to the claimed EVA (for claims 12, 18) which is all of the EVA (for claim 24).
Regarding the claimed fatty acid ester: The prior art antifogging agent is an ester prepared from an alcohol and a fatty acid having 10 to 22 carbon atoms (for claims 12, 15, 18, 21). Glycerin oleate, corresponding to the partial ester of glycerin and oleic acid (for claims 16, 18) and polypropylene glycol oleate, corresponding to the claimed partial ester of polypropylene glycol and oleic acid (for claims 16, 18) are taught as embodiments of said antifogging agent (¶0019). Note that glycerin oleate is a derivative of glycerin (for claims 16, 22) and oleic acid which is a C18 compound (for claims 15, 21). The prior art antifogging agent therefore corresponds to the claimed fatty acid ester (for claims 12, 18).
Regarding the amount of EVA relative to the polyolefin: As noted above, the composition comprises 0.5 to 40 wt% EVA and (deduced) 60 to 99.5 wt% ethylene/olefin copolymer. This corresponds to an EVA content of about 0.5 to 66.7 parts per 100 parts ethylene/olefin copolymer, overlapping the claimed range (for claims 12, 18).
Regarding the amount of fatty acid ester relative to the polyolefin: As noted in the previous paragraphs, the prior art composition comprises 60 to 99.5 parts ethylene/olefin copolymer. Noro further teaches that the amount of antifogging agent is 0.1 to 10 wt% (¶0019). Based on these numbers, it is calculated that the prior art composition comprises about 0.1 to 16.7 parts antifogging agent per 100 parts ethylene/olefin copolymer, overlapping the claimed range (for claims 12, 18).
Noro does not particularly point to the production of compositions comprising the claimed amounts of EVA and antifogging agent.
The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was filed to prepare a composition comprising the claimed amount of antifogging agent in view of the teachings of Noro; see In re Wertheim, In re Woodruff, and In re Peterson cited earlier in this Action.
Regarding the use of a masterbatch: The difference between the claimed invention and the prior art is that it requires that a portion of the components are pre-blended with one another to form a masterbatch prior to their mixture with the remainder of the components. One of ordinary skill in the art will recognize that, upon mixing the masterbatch with the other components, the contents of the masterbatch are dispersed are dispersed throughout the final composition. As discussed in the previous paragraphs, Noro teaches a composition that comprises the same components combined in the same ratio as required of the overall resin composition. It is therefore reasonably expected that the prior art composition corresponds to the composition obtained using a masterbatch as recited in the instant claim (for claim 24); see In re Marosi cited earlier in this Action.
Claim(s) 17, 23, 28, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Noro et al, JP H08300582 (of record), as applied to claims 12-16, 18-22, 24, 29, and 32 above, and further in view of Sakata, JP2018177983 (of record).
A machine translation of Sakata was used to prepare this rejection.
The disclosure of Noro is discussed earlier in this Action. Briefly, Noro discloses the production of a multilayer film wherein the inner and outer layers comprises a blend of ethylene/olefin copolymer, an EVA, and fatty acid esters as an antifogging agent.
Noro is silent regarding the inclusion of a sodium alkylsulfonate having 13 to 18 carbon atoms.
As discussed earlier in this Action, Sakata discloses an antifogging agent used in polyolefin films (abstract), wherein said antifogging agent comprises a component (C) which is may be an alkali metal alkyl sulfonate having 6 to 22 carbon atoms (¶0021). Sodium alkyl sulfonate salts having 12 to 18 carbon atoms (for claims 17, 23, 30) are taught to be a preferred embodiment of this component (¶0022). Further note that Sakata teaches compounds wherein the alkyl group is a tridecyl, tetradecyl, pentadecyl, hexadecyl, or heptadecyl group (¶0022); one of ordinary skill in the art will recognize that these names refer to straight chain alkyl groups (for claims 17, 23). Said antifogging agent comprises 0.9 to 50 mass% of component (C) (¶0006), and is present in the final polyolefin composition in an amount of 0.2 to 9.4 mass%. Based on these numbers, it is therefore calculated that addition of Sakata’s antifogging additive to the polyolefin results in a final blend comprising .0018 to 4.7 mass% of sodium alkyl sulfonate (C).
Both Noro and Sakata are directed towards the production of polyolefin films comprising antifogging agents. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Noro by combining the fatty acid ester-based antifogging agent with the antifogging agent comprising a sodium alkyl sulfonate salt, as taught by Sakata, with the reasonable expectation of obtaining an additive blend suitable for use as an antifogging agent in the polyolefin-based film of Tanaka (for claims 17, 23).
Regarding the amount of sodium alkyl sulfonate: As noted above, the composition of Noro comprises 0.1 to 16.7 parts fatty acid ester antifogging agent relative to 100 parts of the ethylene/olefin copolymer. The addition of the antifogging additive of Sakata results in a composition comprising 0.0018 to 4.7 parts of sodium alkyl sulfonate. Combining the prior art additives would therefore result in a ratio of sodium alkyl sulfonate to fatty acid ester in the range of 0.01 to 4700 parts sodium alkyl sulfonate per 100 parts fatty acid ester, overlapping the claimed range (for claim 28).
The range rendered obvious by the prior art overlaps the claimed range. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising the claimed amount of sodium alkyl sulfonate in view of the combined teachings of Noro and Sakata (for claim 28); see In re Wertheim, In re Woodruff, In re Peterson cited earlier in this Action.
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
Regarding the rejection under 35 U.S.C. 102(a)(1) over Tanaka: Applicant argues that the prior art does not teach a composition comprising one of the specific fatty acid esters recited in the instant claims.
In response, Tanaka’s Example 6 discloses the production of a multilayer film comprising intermediate layers and surface layers, wherein the intermediate layers are prepared from a composition comprising a polymer blend and an antifogging agent. As noted in paragraph 19 of this Action, the anti-fogging agent used in the intermediate layer comprises glycerin monooleate and diglycerol laurate. Glycerin monooleate has the structure shown below.
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Glycerin monoleate
One of ordinary skill in the art will recognize that this structure is a fatty acid ester derived from glycerin and oleic acid. Furthermore, note that only one of the three hydroxyl groups of the glycerin moiety is esterified; the prior art use of glycerin monooleate therefore corresponds to the claimed fatty acid ester which is a partial ester of glycerin and oleic acid. The prior art therefore anticipates the claimed invention.
To the extent that applicant alleges that the claimed invention yields unexpected results (remarks page 9: lines 7-14), evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based; see In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) (MPEP 2131.04). Arguments that the claimed invention allegedly yields unexpected results therefore are not relevant to the rejection of claims under 35 U.S.C. 102 over Tanaka.
Regarding the rejections under 35 U.S.C. 103 over Tanaka: As noted above, applicant alleges that the claimed invention yields unexpected results.
“[W]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
As reported in the instant specification, all of the examples were prepared using an ethylene/olefin copolymer wherein the olefin comonomer is 1-butene, 1-hexene, or 1-octene (specification ¶0058). As written, however, the claimed invention recites the use of non-modified polyolefin resin, which reads on any olefin-based polymer. The examples therefore are not commensurate in scope with the broad range of compounds that fall within the scope of the generic term “non-modified polyolefin”.
Applicant can rebut a prima facie case of obviousness by showing that there are new or unexpected results relative to the prior art; see Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). As discussed earlier in this Action, Tanaka discloses a film wherein the intermediate layer contains a polyolefin, EVA, and antifogging agent wherein the EVA 1) is present in an amount within the recited range and 2) has a vinyl acetate content in the claimed range. Furthermore, as discussed in paragraph 28 of this Action, Tanaka renders obvious the inclusion of 0.6 to 10 parts antifogging agent per 100 parts polyolefin in the intermediate layer. The difference between the claimed invention and the prior art therefore is selection of the amount of fatty acid ester.
Referring to applicant’s specification (See Tables 3, 5, 7), the comparative examples
do not contain one of either an EVA (2-4, 4-4) or antifogging agent (2-2, 4-2),
contain an EVA having a vinyl acetate content outside the claimed range (2-3, 3-2, 3-3), or
contain antifogging agent in an amount outside the range rendered obvious by Tanaka (2-1, 3-1, 3-4, 4-1, 4-3).
The comparative examples therefore do not correspond to the closest prior art as required.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)). Finally, note that the ranges exemplified in the comparative examples are not commensurate in scope with the claimed invention. As written, the claimed invention recites the inclusion of 0.200 to 42.00 parts EVA and 0.20 to 12.00 parts fatty acid ester per 100 parts non-modified polyolefin. With regards to the antifogging agent, the provided examples contain this component in an amount primarily in the lower half of the claimed range. No data has been presented from compositions containing from more than 5.21 to less than 10.94 parts antifogging agent; note that this range covers almost half the claimed range of 0.20 to 12.00. Similarly, most of the compositions comprise the EVA in an amount of 6.48 parts or less; the single example at 41.03 parts does not demonstrate that the allegedly unexpected results may be obtained over the entire range, particularly in view of the fact that there is no data presented for any compositions representing from about 6 to 18 parts and about 18 to 41 parts (i.e., more than half the claimed range).The cited examples therefore are not commensurate in scope with the claimed invention.
Regarding the rejection under 35 U.S.C. 103 over Noro: Applicant argues that Noro does not render the claimed invention obvious, alleging that Noro does not teach one of the required fatty acid esters. This is not persuasive because, as noted in paragraph 49 of this Action, Noro teaches that the fatty acid ester may be glycerin oleate or polypropylene glycol oleate (¶0019), both of which fall within the scope of the instant claims. It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). It therefore would have been obvious to one of ordinary skill in the art to prepare a composition comprising either glycerin oleate or polypropylene glycol oleate as the antifogging agent in view of the teachings of Noro.
Applicant’s arguments that the claimed invention yields unexpected results are not persuasive per the same rationale as outlined above with respect to the rejection over Tanaka
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765