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 Amendments and Arguments
Applicant’s amendments and arguments, filed December 22, 2025, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Park et al. and Kang et al. (cited in the previous Office Action) have been fully considered but are not persuasive. Applicant has amended claim 1 to recite wherein the (a) polyolefin blend comprises a polyolefin selected from the group consisting of, inter alia, a single polyethylene having a density of less than 0.925 g/cc. Applicant argues that Park requires 2 to 10 wt% of high density polyethylene and further argues that Kang teaches embodiments comprising optional low density polyethylene and optional polyolefin-based water pressure resistance improving components in addition to the required LLDPE. However, it is the position of the Office that amended claim 1 does not exclude the presence of additional components beyond the “single polyethylene” as the claim recites a “breathable film comprising: (a) a polymer blend, the polymer blend comprising: (i) a polyolefin…” which is construed to not further limit the claim to only polyolefins listed in the subsequent Markush grouping (see MPEP 2111.03 I.). That is, while the claimed “polyolefin” group is construed as closed to unrecited polyolefins, the claim transition “comprising” allows for additional component(s) that are functionally similar to members of the Markush grouping. The claims are therefore found to not exclude the presence of other polymers recited by Park or Kang. However, the Examiner notes that the transitional phrase “consisting of” recited in new claim 10 is found to sufficiently exclude the presence of additional components beyond the species within the polymer blend groups (a)(i) and (a)(ii) and is addressed within the new grounds of rejection below.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (KR100773737B1, cited in the previous Office Action, English translation provided for citations, hereinafter referred to as “Park”).
As to Claim 1: Park teaches a sanitary film comprising 40 to 60 wt% of a C6, C8, or metallocene linear low-density polyethylene resin (LLDPE) (i.e., a polyolefin), 1 to 10 wt% of ethylene-ethyl acrylate copolymer (EEA) (i.e., an ethylene copolymer), and 20 to 40 wt% of an inorganic filler (pg. 3, para. 2) wherein said inorganic filler reads on the claimed filler which may be, inter alia, calcium carbonate (pg. 6, para. 1) and exhibit an average particle size of 0.5 to 3 µm, which is within the claimed range for the particle diameter for a filler. Park further teaches an exemplary film comprising 45 parts of a C6 LLDPE (density = 0.923 g/cc), 5 parts of an EEA copolymer, and 35 parts calcium carbonate (Table 1, Example 3 of the Foreign Document). It is noted that Example 3 of Park includes other components (e.g., LDPE and HDPE polymer components), the instant claim recites “the polymer blend comprising” which is interpreted to not exclude these components. It is the position of the Office that amended claim 1 does not exclude the presence of additional components beyond the “single polyethylene” as the claim recites a “breathable film comprising: (a) a polymer blend, the polymer blend comprising: (i) a polyolefin…” which is construed to not further limit the claim to only polyolefins listed in the subsequent Markush grouping (see MPEP 2111.03 I.). That is, while the claimed “polyolefin” group is construed as closed to unrecited polyolefins, the claim transition “comprising” allows for additional component(s) that are functionally similar to members of the Markush grouping. Therefore, the claims are found to not exclude the presence of other polymers recited by Park. The amounts for the components which read on the claimed polyolefin, ethylene copolymer, and filler anticipate the claimed ranges for an amount of the same when accounting for the additional amounts of LDPE and HDPE in Example 3 as well as when excluding these components (i.e., only considering the amounts of the components which read on the claimed components, example calculation shown below).
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The films of Park are construed to read on the claimed “breathable film” as the films of Park exhibit a moisture permeability of, e.g., 460 g/m2*day (Example 3, Table 2), which meets the definition of a breathable film provided in the instant specification (see para. [0039]). Furthermore, the polymeric blend and filler contemplated by Park amount to 100 wt% of a film (see, e.g., Table 1, Example 3 of the Foreign Document).
Claims 1-3, and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (KR 20170028569, English translation provided for citations, hereinafter referred to as “Kang”).
As to Claim 1: Kang teaches a breathable film comprising:
a metallocene olefin polymer which may be linear low density polyethylene (i.e., a polyolefin (i)) ([0016]-[0017] and [0036]) (density = 0.925 g/cc or 0.923 g/cc, see [0060]),
a polyolefin-based water pressure resistance improver ([0009]) which may be a copolymer comprising C2-18 alpha olefins ([0015]) including a copolymer of ethylene and one comonomer selected from the group comprising methyl acrylate ([0028]), and
inorganic particles (i.e., a filler) having an average particle diameter (D50) of 3 µm to 5 µm ([0009]) which may be calcium carbonate ([0024]).
Kang further teaches an exemplary composition (Example 1, described at paras. [0084]-[0095]) comprising:
40 wt% of linear low-density polyethylene (LLDPE)
45 wt% of calcium carbonate having an average particle diameter (D50) of 3 µm to 5 µm, and
3 wt% of a polyolefin
Although teaches components within Example 1 in addition to the above (A), (B), and (D), the instant claim recites “the polymer blend comprising” which is interpreted to not exclude these components. Furthermore, the amounts taught by Kang for (A), (B), and (D) anticipate the claimed ranges when accounting for the relative weight percentages thereof “based on the total weight of the polymer blend and filler” (i.e., only components (A), (B), and (D)) as determined using the method of the exemplary calculation below:
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Furthermore, it is the position of the Office that the instant claim does not exclude the presence of additional components beyond the “single polyethylene” as the claim recites a “breathable film comprising: (a) a polymer blend, the polymer blend comprising: (i) a polyolefin…” which is construed to not further limit the claim to only polyolefins listed in the subsequent Markush grouping (see MPEP 2111.03 I.). That is, while the claimed “polyolefin” group is construed as closed to unrecited polyolefins, the claim transition “comprising” allows for additional component(s) that are functionally similar to members of the Markush grouping, such as the 10 wt% of low-density polyethylene of Kang ([0091]). Thus, the polymeric blend (components (A), (C), and (D) of Kang), the filler (component (B) of Kang), and the pigment (i.e., an optional additive) amount to 100 wt% of a film (see Example 1, [0083]-[0095]).
As to Claim 2: Kang teaches the breathable film of claim 1 (supra).
Kang further teaches that the polyolefin-based water pressure resistance improver ([0009]) which may be a copolymer of C2-18 alpha olefins ([0015]) that is a copolymer of ethylene and one comonomer selected from the group comprising methyl acrylate ([0028]) may have a content of said comonomer of 1 to 40 wt% ([0028]).
As to Claim 3: Kang teaches the breathable film of claim 1 (supra).
Kang further teaches embodiments of breathable films that exhibit a stretching ratio of 2.5:1 to 3.5:1 ([0080]), which are within the claimed range.
As to Claim 6: Kang teaches the breathable film of claim 1 (supra).
Kang further teaches embodiments of breathable films having a basis weight of 17 g/m2 (wherein gsm = g/m2) ([0017]), which is within the claimed range.
As to Claim 7: Kang teaches the breathable film of claim 1 (supra).
Kang further teaches exemplary breathable films exhibiting water vapor transmission rate (WVTR) values within the claimed range ([0131]) for films at a draw ratio (i.e., stretch ratio) of 3.0:1 ([0083]). Furthermore, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. WVTR, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 8: Kang teaches the breathable film of claim 1 (supra).
Kang does not teach or measure the characteristics of a micro-void occupation percentage, micro-void diameter, or micro-void uniformity.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., as construed from the instant specification para. [0004], which discloses that micro-voids are controlled via the amount of filler and amount of stretching). Kang anticipates both the amount of filler and stretching ratio required by the claimed invention (see above). Therefore, the claimed effects and physical properties, i.e. micro-void occupation percentage, micro-void diameter, or micro-void uniformity, would naturally arise and be achieved by a composition with all the claimed ingredients. "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. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
Claims 4, 5, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al. (KR 20170028569, English translation provided for citations, hereinafter referred to as “Kang”).
As to Claim 4: Kang teaches the breathable film of claim 1 (see above).
Kang does not explicitly teach a density of the polymer blend. However, Kang does explicitly teach a density value for each of the metallocene olefin polymer which may be linear low density polyethylene (i.e., a polyolefin (i)) ([0016]-[0017] and [0036]) and a polyolefin-based water pressure resistance improver ([0009]) which may be a copolymer of C2-18 alpha olefins ([0015]) that is a copolymer of ethylene and one comonomer selected from the group comprising methyl acrylate ([0028]), which read on the required components which make up the claimed polymer blend. Specifically, Kang contemplates that the density of the metallocene olefin polymer which may be linear low density polyethylene may be 0.915 g/cm3 to 0.94 g/cm3 ([0011]) and that the density for the polyolefin-based water pressure resistance improver may be 0.86 g/cm3 to 0.91 g/cm3 ([0013]). The ranges for the density of both individual components of the polymer blend of Kang overlap with the claimed range. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kang suggests, that the overlapping portion is a useable range for the density of individual polymeric components within a breathable film. As such, Kang would motivate a person having ordinary skill in the art to likewise select density values within the same overlapping portion of the range for the entire polymer blend with a reasonable expectation of success.
As to Claim 5: Kang teaches the breathable film of claim 1 (see above).
Kang further teaches that the polyolefin-based water pressure resistance improver ([0009]) which may be a copolymer of C2-18 alpha olefins ([0015]) that is a copolymer of ethylene and one comonomer selected from the group comprising methyl acrylate ([0028]) may have a content of said comonomer of 1 to 40 wt% ([0028]), which overlaps with the claimed range. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Kang suggests, that the overlapping portion is a useable range for an amount of a comonomer which may be methyl acrylate within an ethylene/methyl acrylate copolymer such that the resultant polyolefin improves water pressure resistance within a breathable film. Kang further teaches that the polyolefin-based water pressure resistance improver exhibits a melting index of 0.5 to 5 g/10 min ([0009] and [0014]), which is within the claimed range.
As to Claim 10: Kang teaches the breathable film of claim 1 (see above).
Kang teaches an exemplary composition (Example 1, described at paras. [0084]-[0095]) wherein the polymer blend consists of:
40 wt% of linear low-density polyethylene (LLDPE)
10 wt% of low-density polyethylene
3 wt% of a polyolefin
Thus, the exemplary composition of Kang differs from the scope of the instant claim in that the example of Kang includes a component (C), which is construed to be excluded by the recited “consisting of” transitional phrase. However, Kang contemplates the low-density polyethylene component in an optional embodiment wherein said low-density polyethylene is present to improve melt strength, melt index, and processability of the composition ([0078]). Based on the disclosure of Kang, a person having ordinary skill in the art would not expect that omission of the low-density polyethylene would render the composition unsatisfactory for its intended purpose, but rather would weigh the benefits of an additional blending component (i.e., low-density polyethylene) with the costs or challenges associated with the same. Omission of an element and its function is obvious if the function of the element is not desired (see MPEP 2144.04 II. A.). Therefore, it is the position of the Office that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a composition such as Example 1 of Kang while omitting the 10 wt% of low-density polyethylene based on the findings that (1) Kang teaches the low-density polyethylene component in an optional embodiment of the invention and (2) a person having ordinary skill in the art not expect that omission of the low-density polyethylene would render the composition unsatisfactory for its intended purpose, but rather would weigh the benefits of an additional blending component (e.g., improved processability) with the costs or challenges associated with the same.
As to Claim 11: Kang teaches the breathable film of claim 10 (supra).
Kang further teaches exemplary compositions wherein an antioxidant is present ([0084]).
As to Claim 12: Kang teaches the breathable film of claim 1 (supra).
Kang teaches an exemplary composition (Example 1, described at paras. [0084]-[0095]) wherein the polymer blend consists of:
40 wt% of linear low-density polyethylene (LLDPE)
45 wt% calcium carbonate
10 wt% of low-density polyethylene
3 wt% of a polyolefin
2 wt% pigment
However, it is the position of the Office that amended claim 1, from which claim 12 depends, does not exclude the presence of additional components beyond the “single polyethylene” as the claim recites a “breathable film comprising: (a) a polymer blend, the polymer blend comprising: (i) a polyolefin…” which is construed to not further limit the claim to only polyolefins listed in the subsequent Markush grouping (see MPEP 2111.03 I.). That is, while the claimed “polyolefin” group is construed as closed to unrecited polyolefins, the claim transition “comprising” allows for additional component(s) that are functionally similar to members of the Markush grouping. Therefore, the claims are found to not exclude the presence of the low-density polyethylene.
Thus, the exemplary composition of Kang differs from the scope of the instant claim in that the example of Kang includes a pigment component (E).
However, Kang contemplates inclusion of a pigment in an optional embodiment ([0079]). Based on the disclosure of Kang, a person having ordinary skill in the art would not expect that omission of the pigment would render the composition unsatisfactory for its intended purpose, but rather would reasonably recognize a pigment as a design preference to achieve a colored/tinted/opaque article. Omission of an element and its function is obvious if the function of the element is not desired (see MPEP 2144.04 II. A.). Therefore, it is the position of the Office that it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a composition such as Example 1 of Kang while omitting the 2 wt% of pigment based on the findings that (1) Kang teaches the pigment component in an optional embodiment of the invention and (2) a person having ordinary skill in the art not expect that omission of the pigment would render the composition unsatisfactory for its intended purpose, but rather would reasonably recognize a pigment as a design preference to achieve a colored/tinted/opaque article. The remaining components (i.e., a polymeric blend (a) and a filler (b)) of Kang would be present in an amount of 100 wt% of the film.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Brady et al. (US20010041487, hereinafter referred to as “Brady”). Brady teaches a breathable film composite based on a polyolefin having a density from 0.910 to 0.935 g/cm3 ([0041]) blended with an elastomer which may be, inter alia, an ethylene-vinyl acetate copolymer ([0045]) and an inorganic filler which may be inter alia, calcium carbonate ([0056]). Brady teaches that polypropylene may be used as alternative to one or more polyethylenes to form breathable films ([0044]). Brady further teaches various exemplary compositions based on a single low density polyethylene (LLDPE) component blended with an ethylene vinyl acetate copolymer and calcium carbonate (e.g., Material F, Table 4).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767