DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 January 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Specification
The specification is objected to because the term "900C" on the second line of paragraph 0041 on page 4 appears to be a typographical error that should read --90 oC--. Appropriate correction is required.
Claim Objections
Claim 1 is objected to because there are no units for the melt flow index. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1, 3-12, 14-17, and 19 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection. No support could be found in the originally filed disclosure for biaxially orientation ratios in both MD and TD orientations that are less than 4:1, as recited in claim 1, or 3.6:1 or less, as recited in claim 19. While US 3,456,044 illustrates an embodiment having an orientation ratio of 3.6:1, the ranges recited in claims 1 and 19 encompass values that are less than 3.6:1. No support in the disclosure as originally filed or US 3,456,044 could be found for orientation ratios less than 3.6:1
Claim Rejections - 35 USC § 103
Claims 1, 3-12, 14-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Forloni (US 6,602,455 B1) in view of Kovalchuk et al. (US 2009/0297820 A1).
Forloni is directed to a biaxially oriented, heat-shrinkable multi-layer film comprising an ethylene-vinyl alcohol core layer (A) and outer layers (B) and (C) comprising ethylene polymers (column 1, lines 13-27). The film has a thickness of 150 mm or less (column 5, lines 1-6). The film preferably exhibits shrinkage of at least 60% in the machine and transverse directions at 120 oC according to ASTM D2732 (column 6, lines 4-14). The ethylene-vinyl alcohol copolymer preferably has an ethylene content of about 38 to 44 mol% (column 9, lines 24-35). Preferably, the core layer essentially consists of ethylene-vinyl alcohol copolymer (column 10, lines 9-10). Preferably, the ethylene polymers of outer layers (B) and (C) are ethylene olefin copolymers having a density of about 0.900 to 0.935 g/cm3, ethylene-vinyl acetate copolymer, and blends thereof (column 10, lines 44-51). In a preferred embodiment, outer layers (B) and (C) each comprise blends of different ethylene--olefin copolymers with densities of about 0.900 to about 0.935 g/cm3, optionally further blended with ethylene-vinyl acetate copolymer (column 11, lines 26-31). In a preferred embodiment, the film has five layers with tie layers positioned between the core each outer layer (column 11, lines 55-57). In another preferred embodiment, the film has seven layers with two additional layers present between the core layer and each outer layer (column 11, lines 58-62). An appropriate amount - e.g. 0.5 wt% as in the embodiment of Example 10 - of slip and anti-block agents may be added to the outer layers (column 11, lines 7-15). The film may have 7 total layers (column 12, lines 8-11). The film may be crosslinked by irradiation prior to orientation (column 12, lines 12-25). The film may be used as packaging for food and other products (column 17, lines 25-27).
The core layer of Forloni, which comprises an ethylene-vinyl alcohol copolymer, corresponds to the oxygen barrier layer of the instant claims. One outer layer of Forloni corresponds to the outer layer of the instant claims while the other outer layer corresponds to the sealing layer of the instant claims.
While Forloni do not exemplify an Example wherein one outer layer comprises ethylene-vinyl acetate and the other outer layer comprises an ethylene -olefin copolymer having a density of less than 0.915 g/cm3, there is an explicit teaching that the both outer layers comprise a blend of ethylene-vinyl acetate copolymer with multiple ethylene--olefin copolymers having densities of about 0.900 to about 0.935 g/cm3. The range of densities taught by Forloni overlaps the range recited in instant claims 1 and 7 and the courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05 I.
Regarding the limitation that the film does not comprise polyamide, polyester, and PVDC, this limitation is taken to be satisfied since Forloni does not require the inclusion of polyamide, polyester, or polyvinylidene chloride into the film.
The limitation that the biaxially orientation is carried out by a double bubble process represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same 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 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the film of Forloni is formed from the same materials as the instant invention and is similarly biaxially oriented (e.g., see paragraph 0064 on page 6 of the instant specification teaching that both double bubble and tenter frame processes for biaxially orientation result in films having the desired shrinkability), the burden is on the applicant to conclusively demonstrate that the claimed product is patentably distinct from that of the prior art.
Regarding the limitation that the film has an overall thickness of 20 to 120 mm, this is within the range disclosed by Forloni of 150 mm or less. The courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
Regarding the limitation that the biaxially orientations ratios in both MD and TD are less than 4:1 in claim 1 and 3.6:1 or less in claim 19, while Forloni teaches that their stretch ratios in both directions may be higher than 4:1 (column 5, line 66-column 6, line 9), the reference also suggests that the stretch ratio may be as low as about 3:1 (column 13, lines 42-46). Moreover, the lower limit of the explicitly taught range of Forloni includes values (e.g., just slightly above 4:1) that are very close to the upper limit of the range recited in claim 1. In the absence of a showing of criticality or unexpected results, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding claims 3 and 4, the five and seven layer embodiments of the film of Forloni satisfy the limitations of claims 3 and 4, respectively.
Regarding claim 11, while Forloni does not report the shrinkage of the film measured in water at 90 oC (i.e. 363 K), the film is described as heat shrinkable and preferably exhibit shrinkage of at least 60% in the machine and transverse directions at 120 oC (393 K). As such, one of ordinary skill in the art would expect a heat shrinkable film exhibiting 60% shrinkage at 393 K to exhibit a shrinkage that satisfies the limitations of claim 11 taken at a temperature that is about 10% lower on an absolute scale (369 K versus 363 K).
Forloni does not teach that the ethylene vinyl acetate copolymer which may be added to the outer layers has a vinyl acetate content of 12-18 wt% of a melt flow index of 0.2 to 5 measured at 190 oC and a 2.16 kg weight.
Kovalchuk et al. is directed to a biaxially stretched multilayer film (paragraph 0002). The skin layer may comprise a printable thermoplastic polymer, such as an ethylene vinyl acetate copolymer having 12 wt% vinyl acetate and a melt index at 190 oC of 3 g/10 min or an ethylene vinyl acetate copolymer having 18 wt% vinyl acetate and a melt index at 190 oC of 3 g/10 min.
It would have been obvious to one of ordinary skill in the art to use an ethylene vinyl acetate copolymer having 12 wt% vinyl acetate and a melt index at 190 oC of 3 g/10 min or an ethylene vinyl acetate copolymer having 18 wt% vinyl acetate and a melt index at 190 oC of 3 g/10 min as the optional ethylene vinyl acetate copolymer of Forloni to yield a film that is printable.
Response to Arguments
Applicant's arguments filed 26 January 2026 have been fully considered but they are not persuasive.
Regarding the rejection under 35 U.S.C. 112(a), the applicant argues that the basis for the ratio of less than 4:1 can be found in US 3,456,044, which illustrates embodiments of 3.6:1 as well as 4.53:1. The applicant further argues that they could only produce films by the double bubble process when the orientation ratio was less than 4, providing further support for the ratio of less 4:1.
This is not persuasive for the following reasons. The examiner concedes that the teaching in US 3,456,044 of double bubble films having an orientation ratio of 3.6:1 and 4.53:1 – in combination with the recitation in the specification as originally filed that the Examples are produced using the double bubble method of US 3,456,044 - is sufficient to provide support for a range of 3.6:1 to less than 4:1. However, the ranges currently recited in the claims encompass ratios outside this range (e.g., less than 3.6:1) that are not supported by either the disclosure as originally filed or US 3,456,044. There is also no indication in the disclosure as originally filed that the applicant was able to form films (via the double bubble process) only having an orientation ratio of less than 4:1. There is also no indication in the disclosure as originally filed that filmed biaxially oriented via the double bubble process are materially different from films formed using a tenter frame process. On the contrary, paragraph 0064 on page 6 appears to disclose the functional equivalence of the two processes with respect to forming biaxially oriented films having shrinkability at 90 oC, the temperature used by the specification in defining heat shrinkability of the inventive film (see paragraph 0016 on page 3 and paragraph 0041 on page 4).
Regarding the rejection under 35 U.S.C. 103, the applicant argues that the 4:1 ratio is critical in carrying out the double bubble process and disagrees with the examiner's position referencing a 3:1 ratio by Forloni. The applicant argues that it is clear from the discussion on column 13 of Forloni that a tenter frame process is used, not a double bubble process. Additionally, the applicant argues that the reference to a 3:1 ratio directly contradicts the remaining document where it is clearly stated that the ratio must be higher than 4:1. The applicant states an intension to submit a Declaration in support of this position, however, no such declaration appears in the file.
This is not persuasive for the following reasons. First, the limitation that the biaxially orientation is carried out with a double bubble process represents a product-by-process limitation since the claims are not directed to a process of forming a biaxially oriented heat shrinkable film but rather the film itself. Since films formed by both processes appear to be patentably indistinct (e.g., paragraph 0064 on page 6 of the specification cites both processes as suitable), it is not sufficient to note differences in the process used. Rather, the applicant has the burden to demonstrate that a film formed from a double bubble process is patentably distinct from one formed by a tenter frame process. Differences in the processes, such as a double bubble process being unable to biaxially orient at a ratio of more than 4:1, is not a demonstration that films formed by the processes are patentably distinct.
Furthermore, column 13 of Forloni explicitly teaches that stretching ratios may be about 3:1 to about 10:1 in both the machine and transverse directions. While Forloni states that ratios above 4:1 are preferred, the courts have held that preferred embodiments do not constitute a teaching away from nonpreferred embodiments. A known or obvious product does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. See MPEP 2123.
Finally, assuming arguendo that Forloni was limited to the preferred ratio of greater than 4:1 - an assumption that flies in the face of the guidance presented in MPEP 2123 - the difference between the slightest perceptible ratio above 4:1 and the slightest perceptible ratio below 4:1 is so small that one skilled in the art would have expected them to have the same properties, particularly since Forloni teaches greater than 4:1 as a preferred, not required, ratio. The courts have held that a prima facie case of obviousness exists where a claimed and prior art range do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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