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 .
Response to Amendment
Applicant’s claim amendments and remarks filed February 27, 2026 are entered and have
been fully considered. Applicant has cancelled claims 12-23 and added new claims 27-38. Examiner’s previous claim interpretation is withdrawn in light of the remarks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25-26 and 38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 25 recites the limitation "the polymer composition" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner presumes the claim is referring to the polymer composition of claim 24.
Claim 25 recites the phrase “further comprising” in line 2, but it is unclear what the composition is further comprising from because it is written in independent form and does not have a claim it is dependent from and the instant specification does not clarify the issue.
Claim 26 is rejected due to its dependency on claim 25.
Claims 30 and 31 recite the limitation "the polyether additive" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 38 recites the limitation "the polyether additive" in the second to last line. There is insufficient antecedent basis for this limitation in the claim. Examiner presumes it is referring to the polyalkylene glycol barrier additive (B).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 38 recites the broad recitation “a polyalkylene glycol of the formula H-(OR)n-OH in which R is a linear or branched alkylene group having 2 to 10 carbon atoms”, and the claim also recites “the polyether additive is polyethylene oxide (PEO)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. The PEO is one type of barrier additive and limits the R to 2 rather than 2 to 10; additionally examiner notes that a molecular weight up to 2,000,000 g/mol exceeds the number of repeat units, n, being from 4 to 1000. The maximum molecular weight the PEO can be is about 44,000 g/mol, where n=1000.
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.
Claim 31 is 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. Claim 31 fails to further limit claim 24 because it states the molecular weight is up to 2,000,000 g/mol which exceeds the number of repeat units, n, being from n to 1000. The maximum molecular weight the PEO can be is about 44,000 g/mol, where n=1000.
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
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 24-28, 30-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the doctoral thesis “Polyethylene Terephthalate (PET) Films Surface Modification Through Blending” by Ahmed Kolahchi, 2014.
Regarding claims 24-28, 30, Kolahchi teaches a method of making PET/PEG films for articles such as packaging and bottles, sec. 4.2 page 53. A method of making the films is explained in sec. 4.3.1 page 59, where the materials are melt blended in a twin-screw extruder and then the films are extruded.
The polymer composition comprises a blend of polyethylene terephthalate (PET) and polyethylene glycol with a molecular weight of 8 kDa (equal to 8000 g/mol), see section 4.3.1, page 58-59. The PEG has an R of 2, and an n of about 182, because the repeat unit is 44 g/mol and 8000/44 = 182, which satisfies part B of claims 24 and 25. The PEG8,000 also reads on claims 28 and 30.
Kolahchi teaches a blend of 95wt.% PET and 5wt.% PEG8000, sec. 4.3.1 page 59, which anticipates the weight percent range of claims 24 and 25. Kolahchi does not add polyamide, other additives that are susceptible to catalytic oxidation, or inorganic compounds, which satisfies claims 25-27.
Kolahchi additionally teaches a 95/5 blend of rPET and PEG8000, sec. 5.3.1 pages 87-88, which also satisfies claims 24-28 and 30.
Kolahchi teaches the PET/PEG blend is semi-crystalline, with 26% crystallinity, sec. 4.4.3.7 page 76. Because the films are extruded, they obtain a mono-oriented or bi-oriented structure, satisfying claim 26.
Kolachi is silent as to the barrier properties of the films and the claimed reduced permeability to oxygen and carbon dioxide of at least 10% compared to the same composition that does not comprise the barrier additive. As evidenced by applicant’s as-filed specification, page 16 table 1, example 6 is a single layer film comprised of the blend of PET/PEG8000 in a ratio of 95/5 weight percent and has the barrier improvement factors (BIF) of 5.67 for oxygen and 4.26 for carbon dioxide. Kolahchi teaches PET with the claimed intrinsic viscosity, and teaches melt blending in an extruder and extruding the films, same as applicant. Therefore, it is reasonably suggested to one of ordinary skill in the art that the PET/PEG8000 blend of Kolahchi in the 95/5 ratio must have the claimed barrier properties because applicant’s example 6 with the same composition has these properties.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See also MPEP 2112.01. Furthermore, “the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation." Abbot Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999).
Regarding claim 31, this dependent claim is directed to an optional limitation, indicated by using the word “if,” as such, the PET/PEG blend of Kolahchi anticipates this optional limitation because it is not required in the composition. Furthermore, Kolahchi also blends PEG35,000 with the PET, 4.3.1 page 59, which reads on the claimed PEO because it has a molecular weight greater than 20,000 g/mol, and based on applicant’s definition, PEO is polyethylene glycol (same structure) with a molecular weight greater than 20,000 g/mol, page 9 of the instant specification.
Regarding claims 32-37, Kolahchi does not teach the carbon dioxide or oxygen permeability ratios. But as evidenced by applicant’s as-filed specification, page 16 table 1, example 6 is a single layer film comprised of the blend of PET/PEG8000 in a ratio of 95/5 weight percent and has the barrier improvement factors (BIF) of 5.67 for oxygen and 4.26 for carbon dioxide. Kolahchi teaches the PET with the claimed intrinsic viscosity, and teaches melt blending in an extruder and extruding the films, same as applicant. Therefore one of ordinary skill in the art is reasonably suggested that the PET/PEG8000 blend of Kolahchi must have the claimed properties because applicant’s example with the same composition has these properties.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the doctoral thesis “Polyethylene Terephthalate (PET) Films Surface Modification Through Blending” by Ahmed Kolahchi, 2014, as evidenced by the Eastman 9921W PET Datasheet.
Regarding claim 15, Kolahchi teaches the PET used is Eastman 9921W, page 58, which has an intrinsic viscosity of 0.75-0.82, as evidenced by the Eastman 9921W PET datasheet, which anticipates the claim.
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.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over the doctoral thesis “Polyethylene Terephthalate (PET) Films Surface Modification Through Blending” by Ahmed Kolahchi, 2014.
Regarding claim 38, Kolahchi teaches a composition comprising 95 wt.% PET with 5 wt.% PEG 35,000 in sec. 4.3.1 page 58-59. The PEG 35,000 reads on the claimed polyethylene oxide (PEO) because it has a molecular weight of 35,000 g/mol which is greater than 20,000 g/mol, and applicant has defined PEO as a polyethylene glycol (same structure) having a molecular weight greater than 20,000 g/mol on page 9 of the instant specification. The PEG35,000 has an R of 2 and has an n of about 795, because the repeat unit is 44 g/mol and 35000/44 = 795.45. Kolahchi also does not add polyamide, additives that are susceptible to catalytic oxidation, or inorganic compounds.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Although Kolahchi exemplifies a 95/5 ratio, the amount of 5 wt.% PEG is just outside the claimed range of 0.5-4.9 wt.%, the difference being only 0.1 wt.%. A person skilled in the art would adjust the amount of PEG35,000 in the blend to adjust the surface properties of the films, such as hydrophilicity, disclosed by Kolahchi, Sec. 4.4.2.1, through routine optimization.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Kolahchi but adjusting the amount of PEG35,000 and blending less than 5 wt.% with the PET with a reasonable expectation of success of creating another permutation of a thermoplastic film for packaging that has an increase in hydrophilicity compared to the PET film without PEG additives.
Response to Arguments
The 102 rejection over Chaos is withdrawn due to the amendments.
Applicant's arguments filed 2/27/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the prior art does not disclose the oxygen and carbon dioxide barrier properties, examiner points to the composition of Kolahchi which has the exact composition as applicant’s example 6. As explained above, PET with the claimed intrinsic viscosity is blended with PEG8000 in a 95/5 ratio, which is identical to applicant’s example 6 composition and method of mixing, therefore the prior art composition inherently has the claimed barrier properties. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable.
In response to applicant’s argument that Kolahchi is directed to a different purpose and fails to recognize and describe the improvement in barrier properties resulting from the PET/PEG blend, examiner reminds applicant that the prior art need not recognize the same feature or purpose as applicant to anticipate the claim, the prior art is identical to the claimed invention and inherently has the claimed properties. Furthermore, "[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art". In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971). See MPEP 2114. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
Applicant’s argument regarding the rejection over Chaos is persuasive, and therefore the rejection over Chaos is withdrawn.
In response to applicant’s argument that the claims are directed to recycled PET and Kolahchi only teaches virgin PET, examiner respectfully disagrees. As stated above and in the previous office action, Kolahchi also teaches blending rPET with PEG8000, sec. 5.3.1 and 5.3.2 pages 87-88. Furthermore, claim 29, contrary to applicant’s assertion, lists recycled PET as a selection, not as the only required PET. The claim clearly lists three possibilities, 1) virgin PET, 2) recycled PET, or 3) a combination thereof, therefore Kolahchi anticipates the claim.
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Applicant’s argument regarding the definition of polyethylene oxide is persuasive. Polyethylene oxide refers to polyethylene glycols (same structure) with molecular weights greater than 20,000 g/mol. With that definition, Kolahchi then renders obvious claim 38 because Kolahchi blends PEG35,000 with PET in section 4.3.1 page 58-59. Although Kolahchi does not call it PEO, based on applicant’s definition, it is considered PEO because the molecular weight is greater than 20,000 g/mol. As explained above, while the blend is exemplified as 95/5, this is very close to the claimed 0.5-4.9% of PEO, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). It is within the ambit of the skilled artisan to decrease or increase the amount of PEG35,000 in order to find the optimal amount that provides surface properties such as a certain amount of hydrophilicity in the film. Therefore claim 38 is rejected under 103.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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