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 .
Status of Claims
Applicant’s amendments dated 5/1/26 have been entered. Claims 1 and 18 have been amended. Claims 5 and 8 have been cancelled. Claims 21 and 22 have been newly added. This leaves claims 1-4, 6, 7, and 9-22 currently active and pending.
The rejection below has been updated to reflect the amendments.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-4, 6, 7, 9-22 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli et al. (US 2013/0217836) in view of Narita et al. (US 2015/0359217), as evidenced by Google.
Regarding claims 1, 3, 4, 6, 7, 21 and 22, Bastioli teaches a packaging film with a coefficient of static friction (COF) > 10 (Bastioli para 13), where the film comprises a biodegradable polyester where the film comprises a biodegradable polyester per EN 13432 (Bastioli para 14, 44) that has a melt strength of 1-3.5g (Bastioli para 16) where the melt strength was measured according to International Standard ISO 16790:2005, at 180° C. and γ=103.7 s. A capillary of diameter 1 mm and L/D=30 is used for the measurement, at a constant acceleration of 12 mm/sec and a stretching length of 110 mm (Bastioli para 17). The polyester further comprises units of at least one a diacid, such as a dicarboxylic acid (Bastioli para 8, 29) and at least one diol (Bastioli para 8) where the Mn ≥ 40000 and the Mw/q ≤ 90000 (Bastioli para 9, 10), where q is the q-weight percentage of polyester oligomers having molecular weight by GPC1000 (Bastioli para 12). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Bastioli is silent with respect to the presence of an anti-fogging agent, specifically one that is an ester of a polyfunctional alcohol, provided the ester is not a stearate, in an amount of 1.0-2.0% relative to the polyester. The claimed esters are polyglycerol laurate, sorbitan monolaurate, and sorbitan polyoxyethylene monolaurate ester (claim 7). It is noted that what Applicant calls ‘sorbitan polyoxyethylene monolaurate ester’ appears to be more commonly known as polyoxyethylene sorbitan monolaurate. These forms will be used interchangeably.
Bastioli and Narita are related in the field of polyester packaging films. Narita teaches the addition of anti-fogging agents to polyester packaging films (Narita para 22, 34), particularly fatty acid esters, for example, sorbitan compounds, polyglycerol laurate compounds, and polyoxyethylene compounds (Narita para 144). Narita further specifically calls out polyoxyethylene monolaurate ester and diglycerol laurate ester (Narita para 144). Google search evidences that polyoxyethylene is an alternate name for Polysorbate/Tween 20, which are trade names for poly(oxyethylene) sorbitan monolaurate ester (see previously attached Google search). The antifogging agent of Narita is included in an amount of 1-2.5 parts by mass, relative to 100 parts by mass of the total amount of the primary polymer (i.e. wt%) (Narita para 145). Finally, Narita teaches that the addition of the antifog additive is to prevent fogging of the film caused by condensation of the moisture content in the ambient air (Narita para 144).
It would be obvious to one of ordinary skill in the art to modify the film of Bastioli to include the antifog agent of Narita, such as sorbitan polyoxyethylene monolaurate ester and/or a polyglyceryl laurate, in an amount of 1-2.5 parts by mass (wt%) because this is an effective amount of the additive to provide antifogging behavior in the polyester film.
Further, one of ordinary skill in the art would have considered the invention to have been obvious because the amount of antifog agent taught by Bastioli in view of Narita overlaps with the instantly claimed amount of antifog agent and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Additionally, Bastioli further teaches that the polyester may be made by mixture or extrusion processes (Bastioli para 45), but is silent with respect to the anti-fogging agent being added by extrusion or masterbatch, ensuring the presence within the film.
Narita teaches adding the anti-fogging agent as part of an initial masterbatch to ensure presence within the film to achieve the effect at the surface (Narita para 130, 144-145, 276, 312). It would therefore be obvious to one of ordinary skill in the art to add the anti-fogging agent to the polyester of Bastioli as taught by Narita as part of an initial masterbatch because this would ensure presence of the anti-fogging agent within the film and thus that the desired anti-fogging effect is achieved.
Regarding claim 2, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the film should have a thickness of 3-50 µm (Bastioli para 23). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Regarding claim 8, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the polyester may be made by mixture or extrusion processes (Bastioli para 45). Further, “even 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, 227 USPQ 964,966). 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 unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 9, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the biodegradable polyester has an aromatic moiety comprising at least one polyfunctional aromatic acid and an aliphatic moiety comprising at least one aliphatic diacid and at least one aliphatic polyester (Bastioli para 28).
Regarding claim 10, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the biodegradable polyester comprises a biodegradable aliphatic aromatic polyester and an aliphatic polyester (Bastioli para 57).
Regarding claim 11, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 9. Bastioli further teaches that the polyfunctional aromatic acid may be aromatic dicarboxylic compounds that comprise phthalic acid and its esters, and heterocyclic dicarboxylic aromatic compounds of renewable origin and mixtures thereof (Bastioli para 29).
Regarding claim 12, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the biodegradable polyester comprises at least 50% by mol of sebacic acid, azelaic acid, or mixtures thereof in comparison with the total moles of aliphatic diacids (Bastioli para 32).
Regarding claims 13 and 14, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches that the biodegradable polyester may be mixed with one or more synthetic or natural polymers, which in turn may also be biodegradable (Bastioli para 45, 71-73).
Regarding claims 15 and 16, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 13. Bastioli further teaches that the biodegradable polyester may be mixed with poly-L-lactic acid, poly-D-lactic acid, and/or poly D-L lactic acid stereo complex (Bastioli para 41, 67) in an amount of 1-15 wt% containing at least 75% of L- or D- lactic acid or combinations thereof with a molecular weight of over 30,000 (Bastioli para 69). Further, one of ordinary skill in the art would have considered the invention to have been obvious because the amount of L- or D- lactic acid and the molecular weight thereof taught by Bastioli in view of Narita overlaps with the instantly claimed amount of L- or D- lactic acid and the molecular weight thereof and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Regarding claim 17, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 1. Bastioli further teaches using the film for packaging food, industrial packaging, baling, and wrapping of waste (Bastioli para 1, 2, 121).
Regarding claim 18, Bastioli teaches a packaging film with a coefficient of static friction (COF) > 10 (Bastioli para 13), that has a melt strength of 1-3.5g (Bastioli para 16) where the melt strength was measured according to International Standard ISO 16790:2005, at 180° C. and γ=103.7 s. A capillary of diameter 1 mm and L/D=30 is used for the measurement, at a constant acceleration of 12 mm/sec and a stretching length of 110 mm (Bastioli para 17). The polyester further comprises units of at least one a diacid, such as a dicarboxylic acid (Bastioli para 8, 29) and at least one diol (Bastioli para 8) where the Mn ≥ 40000 and the Mw/q ≤ 90000 (Bastioli para 9, 10), where q is the q-weight percentage of polyester oligomers having molecular weight by GPC1000 (Bastioli para 12). Bastioli further teaches that the film should have a thickness of 3-50 µm (Bastioli para 23). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Bastioli is silent with respect to the presence of an anti-fogging agent, specifically one that is an ester of a polyfunctional alcohol, provided the ester is not a stearate. The claimed esters are esters of fatty acids with 8-18 carbon atoms (claim 5); more specifically, polyglycerol laurate, and sorbitan monolaurate (both of claim 6); and, most specifically, sorbitan polyoxyethylene monolaurate ester (claim 7). It is noted that what Applicant calls ‘sorbitan polyoxyethylene monolaurate ester’ appears to be more commonly known as polyoxyethylene sorbitan monolaurate. These forms will be used interchangeably.
Bastioli and Narita are related in the field of polyester packaging films.
Narita teaches the addition of anti-fogging agents to polyester packaging films (Narita para 22, 34), particularly fatty acid esters, for example, sorbitan compounds, glycerol compounds, and polyoxyethylene compounds (Narita para 144). Narita further specifically calls out polyoxyethylene monolaurate ester (Narita para 144). Google search evidences that this is an alternate name for Polysorbate/Tween 20, which are trade names for poly(oxyethylene) sorbitan monolaurate ester (see attached Google search). The antifogging agent of Narita is preliminarily mixed to form a masterbatch (admixed) in an amount of 0.5-5 parts by mass, relative to 100 parts by mass of the total amount of the primary polymer (Narita para 145). Finally, Narita teaches that the addition of the antifog additive is to prevent fogging of the film caused by condensation of the moisture content in the ambient air (Narita para 144).
It would be obvious to one of ordinary skill in the art to modify the film of Bastioli to include the antifog agent of Narita, such as sorbitan polyoxyethylene monolaurate ester, in an amount of 0.5-5% by mass because this is an effective amount of the additive to provide antifogging behavior in the polyester film.
Further, one of ordinary skill in the art would have considered the invention to have been obvious because the amount of antifog agent taught by Bastioli in view of Narita overlaps with the instantly claimed amount of antifog agent and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Additionally, Bastioli further teaches that the polyester may be made by mixture or extrusion processes (Bastioli para 45), but is silent with respect to the anti-fogging agent being added by extrusion or masterbatch, ensuring the presence within the film.
Narita teaches adding the anti-fogging agent as part of an initial masterbatch to ensure presence within the film to achieve the effect at the surface (Narita para 130, 144-145, 276, 312). It would therefore be obvious to one of ordinary skill in the art to add the anti-fogging agent to the polyester of Bastioli as taught by Narita as part of an initial masterbatch because this would ensure presence of the anti-fogging agent within the film and thus that the desired anti-fogging effect is achieved.
Additionally, Bastioli further teaches that the polyester may be made by mixture or extrusion processes (Bastioli para 45), but is silent with respect to the anti-fogging agent being added by extrusion or masterbatch, ensuring the presence within the film.
Narita teaches adding the anti-fogging agent as part of an initial masterbatch to ensure presence within the film to achieve the effect at the surface (Narita para 130, 144-145, 276, 312). It would therefore be obvious to one of ordinary skill in the art to add the anti-fogging agent to the polyester of Bastioli as taught by Narita as part of an initial masterbatch because this would ensure presence of the anti-fogging agent within the film and thus that the desired anti-fogging effect is achieved.
Regarding claim 19, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 2. Bastioli further teaches that the biodegradable polyester comprises a biodegradable aliphatic aromatic polyester and an aliphatic polyester (Bastioli para 57).
Regarding claim 20, Bastioli in view of Narita teaches a packaging film with a COF of >5 as above for claim 3. Bastioli further teaches that the biodegradable polyester comprises a biodegradable aliphatic aromatic polyester and an aliphatic polyester (Bastioli para 57).
Response to Arguments
Applicant's arguments, regarding the 103 rejections, filed on 5/1/26have been fully considered but they are not persuasive.
Applicant argues on pages 6 and 7 that the Narita reference does not teach the anti-fogging agent within the film itself, rather that it is only present on the surface of the film. Applicant cited paragraph 112 and 130 to support this.
The Examiner respectfully disagrees. Narita teaches at paragraph 145 that the anti-fogging agent should be admixed in a masterbatch to with the primary polymer (Narita para 145, example para 276) Narita goes on to teach that this preliminary mixing is what allows it to be at the surface of the film, see for example paragraph 312. (Note as this is a new limitation, this has been added to the rejections, above.)
Applicant argues on pages 7 and 8 that Narita’s broader disclosure of ‘polyester’ is not sufficient for combinability with Bastioli’s bio-degradable polyester, and further cites the instant Application that one would not utilize antifog agents in bio-degradable polyesters.
The Examiner respectfully disagrees. To the first point, Narita is not limited to the more specific examples of polyethylene terephthalate or polybutylene terephthalate, as the broader disclosures is the generic ‘polyester,’ see MPEP 2123. To the second, it is respectfully noted that in meeting the claimed limitations and matching the antifog agent used, it would be expected to be fully capable of behaving the same when applied to a biodegradable polyester, as in Bastioli.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., clingability and unwinding) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Were Applicant to argue that the claimed property of the COF causing those by being greater than 5, it is respectfully noted that Bastioli teaches this as above for claim 1.
Applicant argues on pages 8 and 9 that there are so many possible examples of antifogging agents within Narita it would be unreasonable to test or select the specific ones.
The Examiner respectfully disagrees. While Narita provides alternates, there is no serious burden to test the explicitly named examples, such as polyglycol laurates and the sorbitan polyoxyethylene compounds. Further, it is well within the skill of one of ordinary skill in the art to test a discrete list of provided options.
Conclusion
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/LAURA B FIGG/Examiner, Art Unit 1781 6/15/26
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