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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 1, 2026 has been entered.
Examiner’s Note
The Examiner acknowledges the amendment of claims 1 – 3, 5, & 7 – 8. Claim 18 is withdrawn from consideration. Claims 4, 11, 17, 19 – 21, & 24 have been cancelled. Claims 1 – 3, 5 – 10, 12 – 16, & 22 – 23 are examined herein.
Claim Objections
Claim 3 is objected to because of the following informalities:
The term “openings” is plural. Therefore, “void” should also be in the plural form (i.e., “voids”). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 3, 5 – 10, 12 – 16, & 22 – 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “wherein said perforated layer consists of one or more layers and the one or more layers are co-extruded layers.” The term “co-extruded” describes the formation of two or more layers. A single layer cannot be co-extruded. It is assumed Applicant intended to recite “the one or more layers are extruded or co-extruded.”
Claims 2 – 3, 5 – 10, 12 – 16, & 22 – 23 are dependent on claim 1 and therefore also rejected.
With regard to claim 3, Applicant’s only discussion in the originally filed specification of the opening as a “void” is in paragraph [00230], and this discussion is regard to Fig. 3C portraying an opening as a void (i.e., through-hole). Applicant’s specification does not teach or suggest a lower limit of 80% voids. By definition, the term “opening” means “void.” Therefore, 100% of the openings must be voids.
With regard to claim 7, paragraph [0054] of the originally filed specification states “In some embodiments, at least a portion of the openings is in contact with at least one additional opening.” There is sufficient support for a negative claim limitation suggesting a portion of openings that are not in contact with at least one additional opening (i.e. each other). However, the specification does not support Applicant’s claimed lower endpoint of “at least 95% of the openings not in contact with one with each other.”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 3, 6 – 10, 12, 14 – 16, & 22 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over Topolkaraev (US 2004/0089412 A1), in view of in view of Ishimoto et al. (US 2019/0194412 A1).
Topolkaraev teaches a laminate (paragraph [0107]) comprising a multi-microlayer thermoplastic film formed by co-extrusion (paragraphs [0018] & [0022]) that is perforated, including generation of holes or perforation channels penetrating through the entire film thickness. The film has increased breathability, with a water vapor transmission rate (WVTR) of about 500 – 25,000 g mil/day/m2 (paragraph [0059]).
Topolkaraev teaches the films are designed to provide a high barrier against liquid penetration through the film (paragraphs [0014] & [0017]), but do not explicitly teach the liquid (water) permeability of less than 0.6 g when measured according to AATCC 35.
The perforations provide z-directional channels for fluid access, absorption and transport [of fluids], and may improve vapor transport rate. The perforations are of varying size (i.e., diameter), density, configuration, and shapes desired for the specific applications (paragraphs [0012], [0085], [0105] – [0106]). The perforations may penetrate through the entire thickness of the film or partially perforate the film to a specified depth (paragraph [0085]).
Topolkaraev does not teach the % of channels penetrating through the film thickness, size of the perforation channels, the surface area of the channels (i.e., density of perforation channels).
Ishimoto et al. teach a breathable, moisture permeating multilayer film comprising thermoplastic resin, fine filler particles, and voids. The moisture permeability (WVTR), gas permeability, and water (liquid) permeability of a stretched porous film can be controlled by adjusting the fine filler particle size, filler content, and degree of hydrophobization treatment of the finer filler, combined use of the fine filler having a hydrophobic surface and the fine filler having a hydrophilic surface, the number of separate voids, the number of communication voids (voids exposed to the film surface), the total number of voids, and the size of the voids (paragraphs [0085] & [0103] – [0104]). One of ordinary skill in the art would recognize the surface area of the voids is dependent on the size and number of communication voids in the film.
Therefore, based on the teachings of Topolkaraev & Ishimoto et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the size (average diameter), number of communication voids (surface area of openings), and % of perforation channels (i.e., communication voids/openings at the surface based on the total openings/pores in the film), as well as other variables listed above, through routine experimentation in order to achieve the desired transport of fluids (i.e., liquid permeability) and vapor transfer rate (WVTR). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 2, as discussed above for claim 1, based on the teachings of Topolkaraev & Ishimoto et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the size (diameter) of perforation channels (i.e., communication voids/openings at the surface based on the total openings/pores in the film), as well as other variables listed above, through routine experimentation in order to achieve the desired transport of fluids (i.e., liquid permeability) and vapor transfer rate (WVTR). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 3, as discussed above, Topolkaraev describes holes or perforation channels penetrating through the entire film thickness. Therefore, 100% of the holes/perforation channels (i.e. openings) are voids.
With regard to claim 6, Topolkaraev does not teach a surface roughness of the outer surface of the film (i.e. “perforated layer”).
Topolkaraev teaches the microlayers of the film may contain particulate filler material, which upon stretching, may provide porosity initiating sites to enhance the breathability of the film (paragraphs [0011], [0033], [0062]). Particulate filler has an average particle size of 200 microns or less (paragraph [0064]). Therefore, one of ordinary skill in the art would conclude the surface roughness of an outer surface of the film is dependent on the size of the filler particles.
Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust fine filler particle size through routine experimentation in order to achieve the size of the pores, and therefore, the surface roughness of the outer surface of the film. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 7, Topolkaraev teaches the perforations are accomplished by punching holes using pins, laser beams, vacuum, or water jets of varying diameter to generate a desired pattern of holes in the films to form channels for fluid access, absorption, transport and vapor transport rate in the z-direction (paragraph [0085]).
Therefore, based on the teachings of Topolkaraev, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the placement and diameter of the perforations via the pin hole punching method through routine experimentation in order to achieve the desired pattern, such as with or without contacting perforations. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Additionally, Topolkaraev teaches the films include polymer resin, such as about 20% - 90% thermoplastic elastomeric resin and about 80% to about 10% thermoplastic non-elastomer resin (paragraphs [0032], [0047], & [0054]), and suitable additives that may be present in the amount of up to 30 parts to 100 parts of polymer resin (paragraph [0060]).
With regard to claims 8 – 10, Topolkaraev does not teach at least a part of the perforated layer comprises a hydrophobic coating bound to the outer surface.
Ishimoto et al. teach the film may be a multilayer film, wherein all layers constituting the stretched porous film preferably contain a finer filler treated with a hydrophobic surface (paragraph [0086]). Examples of filler particles include fine powders, such as silicon oxide (“silica”), zinc oxide, and/or titanium oxide, are subjected to hydrophobization treatment in which the fine powder contains hydrophobizing agent on a surface of said powder particles to form a plurality of hydrophobic particles (paragraphs [0020] – [0021] & [0031] – [0032]). Ishimoto et al. teach the hydrophobic particle is hydrophobic silicon oxide. The hydrophobizing agent includes a silane coupling agent, such as chloropropyltrimethoxysilane (“an alkylsilylated silica”) (paragraph [0038]).
The filler particles have an average primary particle size of 0.05 µm (50 nm) or greater and 0.8 µm (800 nm) or less (paragraph [0044]), which is within Applicant’s claims range of between 1 nm and 1000 nm. The average particle size of the filler tends to allow efficient formation of voids in the stretched film for achieving the desired moisture permeability (paragraph [0044]). As such, the outermost layer of the multilayer film is a hydrophobic layer bound to the outer surface of an inner perforated layer. The hydrophobic surface imparts a predetermined water permeability and moisture permeability to the stretched porous film (paragraphs [0030] & [0036]).
Therefore, based on the teachings of Ishimoto et al., it would have been obvious to one of ordinary skill in the art at the time of the effective filing date to incorporate filler particles modified with a hydrophobic surface in the film taught by Topolkraev for imparting a predetermine water permeability and moisture permeability to the stretched porous film.
Ishimioto et al. do not teach the hydrophobic outermost layer of the multilayer film is formed by coating.
However, claim 8 defines the hydrophobic layer by how the product was made (i.e., ‘coating’). Thus, claim 8 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a hydrophobic layer on the surface of the perforated layer. The reference suggests such a product.
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777, F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983)
With regard to claim 12, the number of layers is determined by the desired overall thickness of the film. In one embodiment, the film, after stretching and multilayer corrugations, have a thickness of about 3 to about 1000 mils (i.e., about 3 µm to about 25,400 µm) (P0039), which includes Applicant’s claimed range of 10 µm to about 200 µm.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 14, Topolkaraev teaches these films are extensible up to 100% elongation (paragraphs [0055] & [0057]).
With regard to claim 15, Topolkaraev does not explicitly teach the film (i.e., “the perforated layer”) is characterized by tensile strength at break between 5 and 50 N/10mm.
However, Topolkaraev teaches microlayers forms laminate films with high integrity and strength because the microlayers do not substantially delaminate after coextrusion due to the partial integration or strong adhesion (paragraph [0038]). Suitable melt-extrudable thermoplastic polymers are stretchable in solid state to allow a stretch processing of the multi-microlayered film. The ratio of true tensile fracture stress (tensile force at failure divided by the cross-sectional area of the failed specimen), and the stress at yielding, is useful to determine the stretchability of the polymer film (paragraph [0041]). Furthermore, various additives may improve strength (paragraph [0060]).
Therefore, based on the teachings of Topolkaraev, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to select a thermoplastic polymer of desired tensile fracture stress and adjust the type and content of additives through routine experimentation in order to achieve the desired (tensile) strength at failure (break). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 16, as discussed above for claim 1, the density of the perforation channels (i.e., the number of openings per square centimeter) is an optimizable feature.
With regard to claim 22, Topolkaraev teach laminate is used inside a plurality of products (articles) (paragraphs [0002], [0017], & [0108]).
With regard to claim 23, as discussed above for claim 1, it has been held that discovering an optimum value (such as liquid permeability) of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Topolkaraev & Ishimoto et al., as applied to claim 1 above, and further in view of Wang et al. (US 2020/00361191 A1).
With regard to claim 5, as discussed above for claim 1, the amount and diameter of the perforated channels (i.e., “openings”) is an optimizable value. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Topolkaraev teach the surfactant modification of varying hydrophile-lipophile balance (HLB) number or treatment of the surface layer for adjusting the water contact angle of the surface of the microlayers (paragraph [0071]). Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the amount of surfactant treatment or varying HLB number of surfactant surface treatment through routine experimentation in order to achieve the desired water contact angle. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Topolkaraev do not teach the sliding angle of said outer surface of said perforated layer.
Wang et al. teach a multilayer film comprising a substrate and a top coat to form a treated substrate. The treatment is applied to the substrate to achieve a desired hydrophobic surface wherein the sliding angle is less than or equal to 30 degrees (paragraph [0107]). The layers may be composed of flexible polymer, such as polyolefins (paragraph [0012]).
Therefore, based on the teachings of Wang et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to apply a surface treatment (e.g. coating) through routine experimentation in order to achieve a surface of desired hydrophobicity and sliding angle. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Topolkaraev & Ishimoto et al., as applied to claim 1 above, and further in view of Hussain et al. (“Development of Polypropylene-Based Ultraviolet-Stabilized Formulations for Harsh Environments,” JMEPEG (2002) 11:317-321).
With regard to claim 13, Topolkaraev does not explicitly teach said film is stable: (a) at a temperature between -25C to 75C; and (b) for at least 12 months upon exposure to UV radiation of 180 kilo Langley per year (KLy p.a.).
However, Topolkaraev teach the film contains polyolefin resin, as discussed above for claim 4, and the presence of ultraviolet stabilizers as an additive (paragraph [0060]).
Furthermore, Hussain et al. disclose UV stabilizers are known in the art to be used to protect a plastic-based film from the harmful effects of UV radiation (Introduction, pg. 317). The study conducted weathering trials of agriculture films on selected UV-stabilized PP-based (i.e., polypropylene) formulations exposed to an outdoor environment based on the weather conditions of Saudi Arabia. The weather conditions in Saudi Arabia are levels of up to 150-180 kil Langley (k) of UV radiation, 30 – 50°C ambient temperature (pg. 318, left column). The trials suggest the type and content of HALS-stabilizers (i.e., UV stabilizer additive) with antioxidants in a propylene-based contributed toward the UV stabilization of the base polymer and increase the lifetimes of the PP films (pgs. 321).
Therefore, based on the teachings of Hussain et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the type and amount of UV stabilizer in the polyolefin-based film taught by Topolkaraev through routine experimentation in order to achieve the desired stability for at least 12 months upon exposure to UV radiation of 180 kilo Langley per year (KLy p.a.) and 30 – 50°C ambient temperature. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant argues, “In SHARP contrast, the teachings of the primary reference are solely directed to alternating layers of elastomers and polymer in the film (see Fig. 1 of Topolkaraev). Topolkaraev defines his invention as a ‘hybrid multi-microlayer films composed ofa multi-microlayer assembly of corrugated microlayers and microlayers of thermoplastic elastomers (TPE)’. As stated by Topolkaraev:
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“To this end, based on the definition cited above, Topolkareav teaches away from the present invention (by defining his ‘multi-microlayer is not co-extruded film) and cannot be considered by a skilled artisan as guiding to arrive at the co-extruded perforated layer, as instantly claimed” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant has misunderstood the teachings of the Topolkaraev reference. Contrary to Applicant’s assertion, Topolkaraev did not define the film as not co-extruded. Topolkaraev explicitly teaches in paragraphs [0018] & [0022] that the multi-microlayer film is co-extruded. Furthermore, Topolkaraev explicitly recites in claim 1 of the reference that the film is multi-microlayer film is co-extruded.
Contrary to Applicant’s assertion, the cited paragraph of Topolkaraev does not teach against forming the film via extrusion or co-extrusion. In fact, just the opposite. The paragraph of Topolkaraev cited by Applicant above discusses the multi-microlayer film as different from conventional multilayer films with regard to separate and distinct layers, and that said multi-microlayer was not obtained by conventional extrusion methods. Topolkaraev teaches in favor of using a co-extrusion method, but not conventional co-extrusion equipment, to form the film in which the adjacent microlayers of the film that are not separate and distinct.
Second, Applicant’s claim 1 is drawn to “a film comprising…one or more layers are co-extruded layers,” not an apparatus for co-extrusion of a multilayer film. In other words, Applicant’s amendment of claim 1 defines the product by how the product was made. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a film structure comprising one or more perforated layers. The reference suggests such a product.
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777, F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983)
Third, Applicant’s claim 1 does not require the presence of more than one perforated layer. Therefore, even if Topolkaraev defines a multi-microlayer to mean a few layers that are not distinct from each other, the multi-microlayer film of the reference would still meet the limitations of Applicant’s claim 1.
Fourth, Applicant’s claim 1 does not recite two adjacent perforated layers co-extruded and formed of the same composition. Therefore, the multi-microlayer film taught by Topolkaraev meets the limitations of claim 1, as discussed in the rejection above.
Applicant argues, “Moreover, Topolkaraev only suggests perforations of about 1 millimeter (or even more) and is completely silent re openings having a dimension in the micrometer range as recited by instant claim 1. Topolkaraev [par. 128] recites:
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“Based on the above the skilled artisan would be solely guided to perform perforations in order to create relatively large hole with more than 1 millimeter diameter (the diameter of the holes is expanded after stretching) since such perforation improves film uniformity.
“Ishimoto, in turn, clearly guides a skilled artisan using filler particles (which imparts the size of the voids) of sub-micron size, which is completely distinct from the primary reference and from the range recited in the present claim 1…” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s citation of paragraph [0128] focused on the method of manufacturing a working example. However, the teachings of a reference, such as the references of Topolkaraev and Ishimoto, are not limited to preferred embodiments or methods of manufacturing said preferred embodiment. MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Second, as discussed above, based on the teachings of the primary reference and the secondary reference, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the size (average diameter) of perforation channels (i.e., communication voids/openings at the surface based on the total openings/pores in the film), as well as other variables listed above, through routine experimentation in order to achieve the desired transport of fluids (i.e., liquid permeability) and vapor transfer rate (WVTR). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Applicant argues, “Noteworthy…it should also be apparent that the filler size determines the void size in the film of Ishimoto, which should be consequently in the sub-micron range” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. It would have been obvious to one of ordinary skill in the art to form perforations using the method of forming said perforations based on the desired size and pattern of perforations. As previously discussed, based on the teachings of Ishimoto et al., it would have been obvious to one of ordinary skill in the art to form the perforations of the film taught by Topolkareav based on the desired liquid permeability of the film.
Applicant argues, “Importantly, the primary reference is directed to ‘disposable absorbent product’ – quite distinct from the presently claimed water-repellent film. Topolkareav explicitly recites:
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“It should be apparent that such swelling and delamination is counterproductive and inoperable with the presently claimed film, which is directed to a water-repellent packaging film which is intended inter-alia for coverage of crop bales” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s claims do not recite a water-repellent film. Furthermore, Applicant’s claim 1 allows for up to 0.6 g of liquid permeability.
Second, Topolkareav’s disclosure a fluid-sensitive layer that “may swell” is an indefinite teaching. This does not mean the film will definitely swell, and if it does, there is no teaching of the extent of swelling. Applicant’s claims do not recite anything with regard to zero swelling of liquid in the recited film. The term “liquid permeability” as recited in claim 1 is understood by one of ordinary skill in the art to mean “liquid penetration” (liquid transmission through the film). Applicant’s claim 1 allows for up to 0.6 g of liquid permeability.
Third, Topolkaraev’s teach of a swellable “fluid-sensitive layer” (paragraph [0093]) refers to an optional swellable third microlayer (paragraphs [0033] – [0035] & [0061]). Considering Applicant’s claim does not limit the number of layers and Topolkaraev does not require the presence of the third swellable layer, the film taught by Topolkaraev meets the limitations of Applicant’s claim 1.
Third, Applicant has confused the film disclosed by Topolkaraev with the properties of a product for the film’s intended use. Furthermore, Topolkaraev does not teach or discuss the film having absorbance properties, but as discussed above, should have a high barrier against liquid penetration (permeation) through the film (paragraphs [0014] & [0017]). Applicant’s claim 1 also recites a low liquid permeation.
Applicant argues, “Further to the above, claim 2 has been amended to point out the minimum size of the entire openings in the perforated layer. Clearly, Ishimoto teaches completely distinctly from the instant claim 2. Consequently, based on the combined teachings of Topolkareav and Ishimoto, a skilled artisan would not be motivated using a perforated layer with a vast majority of opening having an average diameter between 10 and 60 µm and a minimum diameter of the entire openings of 5 µm as instantly claimed” (Remarks, Pgs. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As previously discussed, based on the teachings of Topolkareav and Ishimoto, it would have been obvious to one of ordinary skill in the art would have optimized the average and minimum size of the openings based on the desired liquid permeation of the film.
Applicant argues, “Claim 3 has been amended to point out that the vast majority of the openings are void. This is in clear contrast to the teachings of Ishimoto requiring the filler to present in the perforations.
“Ishimoto necessitates the presence of filler in the voids, which imparts water impermeability+moisture permeability to his film:
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Apparently, Ishimoto’s teachings cannot be considered as guiding or suggesting completely void openings, as recited in instant claim 3” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s specification does not clarify how an opening can be anything other than a void because both an opening and a void are defined by empty space. Therefore, an opening that has not been filled with empty material is a void.
Second, Topolkarareav teach the perforations in the z-direction are not filled and therefore are voids.
Third, Applicant has misunderstood the teachings of Ishimoto et al. Ishimoto et al. teach the walls of the pores are formed by fine filler, wherein the fine filler is treated with a hydrophobic surface. Although the previous rejection of claim 7 suggests incorporating filler particles into the outermost layer of the film taught by Topolkaraev, the rejection did not suggest incorporating the filler into the already formed perforations. The filler is incorporated into the polymer material.
Fourth, the rejection does not suggest using filler to form the perforations taught by Topolkareav. Topolkareav do not limit the method of forming said perforations. The rejection suggests it would have been obvious to one of ordinary skill in the art to form the size of perforations taught by Topolkaraev using any known method of forming said perforations for achieving the desired liquid permeability of the film.
Applicant argues, “With respect to claim 5, Topolkaraev teaches away by reciting:
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Thus, combined teachings of Topolkaraev and Ishimoto cannot be considered as guiding a skilled artisan to arrive at the subject-matter of claim 5” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, the term “may” is used by Topolkareav et al. to indicate the water contact angle is optional, dependent on the optional surface treatment with surfactant. An optional embodiment is a preferred embodiment. The teachings of a reference are not limited to the preferred embodiments.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “Claim 7 has been amended to specify that the perforated layer material consists of a thermoplastic polymer and optionally up to 10%w/w of an additive. In sharp contrast, the secondary reference recites
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“Moreover, claim 7 teaches (based on par. 053) that the vast majority of openings are distinct openings or channels and are not in contact one with each other. Ishimoto, in contrast teaches:
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“Since for the determination of the inventive step, the cited reference (Ishimoto) should be taken as a whole, a skilled artisan would be refrained from using a water-impermeable film having completely void and distinct (i.e. not -interconnected openings, as instantly claimed” (Remarks, Pgs. 9 – 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the secondary reference was cited as motivation for forming the openings taught by the primary reference of a particular size. The rejection does not cite the secondary reference for the presence of additives.
Second, Applicant’s use of the term “optionally” in claim 7 does not limit the amount of additive that may be present in the layers.
Third, Topolkaraev teaches suitable additives that may be present in the amount of up to 30 parts to 100 parts of polymer resin (paragraph [0060]), which includes Applicant’s claimed range of 10%w/w.
Fourth, the secondary reference of Ishimoto was cited for motivation one of ordinary skill in the art would have to form the perforations of the primary reference of a particular size. The modification of the primary reference with the teachings of the secondary reference is not relevant to whether or not said perforations (openings) are in contact with one another.
Applicant argues, “Regarding claim 8, Applicant asserts that Topolkaraev is completely silent re hydrophobic coating requires filler particles embedded inside the polymer. Accordingly, the combined teachings of the cited art are completely silent regarding ‘hydrophobic layer bound to the outer surface of the perforated layer’, as instantly claimed.
“Moreover, Ishimoto clearly guides a skilled artisan using both hydrophilic and hydrophobic filler particles and is silent re ‘plurality of hydrophobic particles’ as instantly claimed” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. It is unclear how Applicant came to the conclusion that an explicit teaching by the reference of a plurality of fine filler powders and “fine filler having a hydrophobic surface” does not refer to a plurality of particles. See discussion of claim 8 above.
Applicant argues, “In the Office Action, claims 13 is rejected under 35 U.S.C. 103 as being unpatentable over Topolkaraev and Ishimoto in view of Hussain.
“Applicant respectfully traverses this ground of rejection. Applicant asserts that the teachings of Hussain solely directed to commonly known UV-stabilizer cannot remedy the deficiencies of the cited references with respect to specific structural features of the instantly claimed film, as explicitly disclosed above” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Conclusion
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781