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 7/28/25 have been entered. Claims 1, 3, and 11 have been amended. No claims have been newly added or cancelled.
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 1-20 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 and 3-7, 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. 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 included in an amount of 0.5-5 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, in an amount of 0.5-5 parts by mass (wt%)po 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.
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.
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, see Remarks, filed 7/25/25, with respect to the objections to claims 1 and 3, and the 112(b) rejection to claim 11 have been fully considered and are persuasive. The objections/rejections of claims 1, 3, and 11 have been withdrawn.
Applicant's arguments, regarding the 103 rejections, filed on 7/28/25 have been fully considered but they are not persuasive.
Applicant argues on pages 6-8 that Narita is not combinable with Bastioli because while both address freshness-retentive films, Narita is not explicitly biodegradable polyester, and therefore, Bastioli and Narita are not combinable, even for additives like anti-fog agents.
The Examiner respectfully disagrees. Bastioli and Narita are in the same general field of endeavor, freshness-retaining films, and both teach the use of polyesters to that end. That Bastioli and Narita are not exactly the same polyester, or that they are not both biodegradable has no effect on if one of ordinary skill in the art would be able to look at two freshness-retentive films, note they both utilize polyester, and conclude that additives would possess the same functionalities, such as anti-fogging behavior.
Applicant argues on page 7 that there is no need to improve the clarity of the film of Bastioli.
The Examiner respectfully disagrees. Improving antifogging, especially from condensation, as taught by Narita is itself an improvement applicable to a film desiring clarity as in Bastioli. That Bastioli desires high clarity is itself a nexus for desiring antifogging behavior. Further improving a desired property is still an improvement.
Applicant argues on page 8 that the film of the secondary reference Narita relies upon an antibacterial coating for the bulk of its advantages. Applicant appears to be arguing that the Examiner either did or should have imported the entire layer of Narita into Bastioli.
The Examiner respectfully disagrees. Narita was not utilized to teach the freshness-retention, as implied by the antibacterial coating, nor the antibacterial coating itself. Narita was utilized to teach that anti-fog additives are useful in polyester based freshness-retaining films. Other features of Narita were not cited and are not part of the present rejection.
Applicant argues on pages 8-9 that there is no reason to select the non-stearate option for antifogging agent from Narita’s list of antifogging agents.
The Examiner respectfully disagrees. It would be within the skill of one of ordinary skill in the art to look at suggested antifogging agents and select from a provided list.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA B FIGG whose telephone number is (571)272-9882. The examiner can normally be reached M-Th 9a-6p Mountain.
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/L.B.F/Examiner, Art Unit 1781 11/1/25
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781