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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 Apr 2026 has been entered.
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 17 Apr 2026 has been entered.
Claims 1-7 remain pending in the application.
Claim 1 is amended.
Claims 4-7 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-3 are under consideration.
Rejections Maintained
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.
The rejection below was made previously and is reapplied below to address the claim amendments.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Yasutaka et al. (JP 2018-153193, published 04 Oct 2018, listed in IDS filed 28 Nov 2023).
Yasutaka teaches a soil film ([0023]) with a pest repellent function ([0030]) and for preventing damage by slugs ([0058]), rendering obvious a gastropod repellent film as recited. For the invention, Yasutaka teaches a laminate comprising an inorganic filler and a thermoplastic resin and the outermost layer comprising an inorganic filler and thermoplastic resin ([0022]). Yasutaka teaches the inorganic filler is partially or entirely calcium carbonate ([0022]) and used calcium carbonate particles in example formulations ([0065]). Yasutaka teaches the material with at least 50 percent by weight of the inorganic filler (abstract-Solution, [0030]). Yasutaka teaches the thermoplastic resin as a polyolefin resin ([0035], [0038]) such as a polyethylene resin ([0040]). Yasutaka teaches inflation molding as a method for forming the films ([0055]). The instant specification indicates that the filler layer formed by inflation increases voids and reduces density ([0056]) and provides examples where films formed from polyethylene resin and calcium carbonate particles with the inflation method had densities of 1.16 and 1.20 g/cm3 in contrast to a film formed from the same materials with t-die molding having densities of 1.35-1.50 g/cm3 ([0076] Table 2). Thus, the density and voidage of the film is a result of both the components of the film and the method of production. As Yasutaka teaches films with the same components and amounts as the instant claims and as demonstrated in the specification and teaches a production method of inflation molding, the resulting films obvious over Yasutaka would necessarily have a density of at least 1.16-1.20 g/cm3 and a voidage of 15-20% by volume, as evidenced by the instant specification.
Yasutaka does not expressly teach selecting the at least 50.0% by mass inorganic filler with polyolefin thermoplastic resin as part of the film layer with sufficient specificity to rise to the level of anticipation.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed a soil film for repelling slugs with at least 50% by weight of an inorganic filler layer of calcium carbonate particles a thermoplastic resin of polyolefin as an outermost layer. One of ordinary skill in the art would have been motivated to do so as soil films are taught by Yasutaka and each of these components are taught as suitable for such films. One of ordinary skill in the art would have a reasonable expectation of successfully forming a soil film as taught by Yasutaka since the modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions. Regarding the limitation that the film is at least 1.16 and no greater than 1.20 g/cm3 and has a voidage of 15-20% by volume, as described above, the density and voidage of the films formed by Yasutaka with an inflation method would necessarily meet this requirement.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Yasutaka.
Response to Arguments
Applicant's arguments filed 17 Apr 2026 have been fully considered but they are not persuasive. Applicant argues for unexpected results with improved gastropod repellency shown for films with lower density (1.10-1.20 g/m3) vs high density as shown in table 2 of the specification. Applicant argues that the claimed upper limit for the density range has been reduced to 1.20 and thus the results are commensurate in scope with the claims.
The examiner is not persuaded by these arguments and maintains that the results are not commensurate in scope with the claims and that the applicant has not provided sufficient data to establish that the results are truly unexpected. For example, data is only shown for a single resin material, polyethylene, whereas the claim is open to any thermoplastic resin. Similarly, claim 1 is open to any particle diameter for calcium carbonate. Additionally, the inorganic filler has to be greater than 50.0% by mass but there is no upper limit on the percentage of inorganic filler, although the data in Table 2 only shows the filler up to 60%. Further, the claim is broad in merely requiring that the inorganic filler (which contains calcium carbonate) is greater than 50.0% as this does not require that the calcium carbonate itself is above 50%. Nothing has been provided to indicate that the same performance would be expected across different thermoplastic resin materials and across any calcium carbonate particle diameter and concentration and with no upper limit to the inorganic filler. Additionally, while the data in Table 2 presents films prepared from inflation and T-die methods, it is not evident that the applicant has made a comparison to the closest prior art. Yasutaka teaches calcium carbonate films formed with an inflation method ([0069], see Table 1 examples 1 and 2 translation provided on last page of attached updated copy of Yasutaka art reference) and it seems that a better comparison would be the instant invention with the calcium carbonate films formed by inflation as taught by Yasutaka.
Further, it is not evident that the applicant has sufficiently demonstrated that the results are truly unexpected. The examiner notes that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). It appears that each data point is a single test result and thus it is not clear if there is a significant difference between the high and low density results presented. Simlarly, 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). See MPEP 716.02(d). The claimed range is from 1.16 to 1.20 and the results seem to indicate that the values on the lower side (1.10 g/m3) have the same performance inside the claimed range. While the applicant has amended the claimed upper range to match the highest upper density limit of 1.20 g/m3, the question previously posed regarding what happens between densities 1.20 g/m3 and 1.35 g/m3 is still pertinent for establishing that the claimed range is actually significant. For example, it is not clear if there would be a gradual decrease of slugs detected as the density is varied from 1.35 g/m3 to 1.20 g/m3 or if there is sudden decrease at the upper limit, which would be more indicative of a truly unexpected result for the range. The examiner further notes that Table 2 compares films of higher density formed by the T method and films of lower density formed by the inflation method. This raises the question of how would the repellency with high density films respond when formed with high calcium carbonate percentage and increased density when using the inflation method? It is not clear what level of gastropod repellency the films would demonstrate when formed from the inflation method with density and calcium values outside the claimed ranges. There is an expectation from Yasutaka to use the films for repelling slugs ([0093]). Is the slug repellent data in Table 2 merely an example of optimizing the film for slug repellency for a particular production method or is there something actually unexpected about the claimed density range? Overall, the data presented by the applicant is not sufficient to truly establish unexpected results and is not persuasive in overcoming the prima facie case of obviousness presented from Yasutaka for at least the reasons discussed above.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yasutaka et al. (JP 2018-153193, published 04 Oct 2018, listed in IDS filed 28 Nov 2023) as applied to claims 1 and 2 above and in view of Sturm et al. (WO 2016/096907, published 23 June 2016).
The teachings of Yasutaka are described supra.
Yasutaka does not teach the particle size of calcium carbonate. This deficiency is made up for in the teachings of Sturm.
Sturm teaches the use of calcium carbonate for plant protection (title). Sturm teaches that the calcium carbonate plant protection product controls a pest during plant growth (page 3 lines 19-21) and that the pest may be a gastropod (page 5 lines 26-28). Sturm teaches that the calcium carbonate is in the form of particles having a particle size from 1 to 50 micrometers (page 4 lines 11-13).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have used calcium carbonate particles with a particle size from 1 to 50 micrometers in the soil films of Yasutaka. It is obvious to form soil films for repelling pests such as slugs where the films comprise calcium carbonate particles from the teachings of Yasutaka. A particle size of 1 to 50 micrometers is a suitable size range for calcium carbonate particles used in protecting plants from pests such as gastropods, as known from Sturm. Thus, it would have been obvious to use a size of 1 to 50 micrometers as this is a known calcium carbonate particle size and there would have been a reasonable expectation of success in using such a particle size as it is known for use in compositions for protecting plants from pests such as gastropods and the films of Yasutaka have a similar purpose of protecting plants from pests such as slugs. The size range of 1 to 50 micrometers renders obvious the range of no greater than 20 micrometers. 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).
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/EDWIN COLEMAN MITCHELL/Examiner, Art Unit 1619
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