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 .
Election/Restrictions
Claims 35-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 9, 2025.
Applicant's election with traverse of Group I, claims 18-34 in the reply filed on November 9, 2025 is acknowledged. The traversal is on the ground(s) the Requirement for Restriction mailed October 9, 2025 allegedly does not provide sufficient evidence to establish lack novelty or lack of inventive step. Specifically, Applicant argues that many of the dependent claims have not been addressed. This is not found persuasive because the restriction was required on the grounds that the groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, the special technical feature among the inventions does not make a contribution over the prior art. With respect to a group of claimed inventions, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. In the instant case, the limitations recited in the previously mailed Requirement for Restriction are construed to represent the shared technical features of the claimed inventions and are determined to not represent a special technical feature as it does not make a contribution over the prior art in view of Brunner (as cited in the previously mailed Requirement for Restriction). The limitations in the dependent claims do not provide an inventive link between all the claims dependent on the independent claim. Accordingly, the lack of unity presented in the Requirement for Restriction mailed October 9, 2025 is deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 12, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Objections
Claims 19-34 are objected to because of the following informalities: the claims improperly depend on cancelled claim 1. For examination purposes, the claims improperly depending on cancelled claim 1 are construed to have been intended to depend on new independent claim 18. Appropriate correction is required.
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 18-34 are rejected under 35 U.S.C. 103 as being unpatentable over Brunner et al. (US20170218148, hereinafter referred to as “Brunner”).
As to Claim 18: Brunner teaches a breathable film comprising at least one thermoplastic polymer and a surface-treated filler material ([0029]) wherein said at least one thermoplastic polymer may be polyethylene, polypropylene, and mixtures thereof ([0060]), which reads on the claimed at least one polyethylene polymer and at least one polypropylene polymer. Brunner further teaches that the surface-treated filler material may be present in an amount of 15 wt% to 60 wt% ([0199]) and comprises at least one calcium carbonate having a top cut particle size (d98) of ≤ 7.5 µm ([0062]). Brunner teaches that the surface-treated filler material may have a weight median particle size (d50) in the range of 0.1 to 7 µm ([0029]), 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 Brunner suggests, that the overlapping portion is a useable range for the median particle size suitable for filling thermoplastic-based compositions. Brunner teaches that the surface-treated filler material comprises a treatment layer on the surface of the calcium carbonate comprising at least one mono-substituted succinic acid and/or succinic anhydride (i.e., a surface treatment agent) and/or salty reaction product thereof ([0029]), wherein said mono-substituted succinic acid may be substituted with a C3 to C20 aliphatic group ([0170]), and wherein the succinic acid moiety meets the recited “at least one carboxyl group.”
As to Claim 19: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material comprises at least one calcium carbonate having a top cut particle size (d98) of ≤ 7.5 µm ([0062]). Brunner teaches that the surface-treated filler material may have a weight median particle size (d50) in the range of 0.1 to 7 µm ([0029]), which overlaps with the claimed range. This range 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 Brunner suggests, that the overlapping portion is a useable range for the median particle size suitable for filling thermoplastic-based compositions.
As to Claim 20: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material comprises at least one calcium carbonate having a top cut particle size (d98) of ≤ 7.5 µm ([0062]), which overlaps with the claimed range. Brunner teaches that the surface-treated filler material may have a weight median particle size (d50) in the range of 0.1 to 7 µm ([0029]), 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 Brunner suggests, that the overlapping portion is a useable range for the median particle size and top cut value suitable for filling thermoplastic-based compositions.
As to Claim 21: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material may comprise a treatment layer in an amount of from 0.1 to 3 wt% ([0047]).
As to Claim 22: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material may comprise a treatment layer in an amount of from 0.1 to 3 wt% ([0047]), 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 Brunner suggests, that the overlapping portion is a useable range for an amount of a surface treatment on a calcium carbonate filler for thermoplastic compositions such that said filler exhibits, inter alia, good dispersing properties ([0026]).
As to Claim 23: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the surface-treated filler material comprises a treatment layer on the surface of the calcium carbonate comprising at least one mono-substituted succinic acid and/or succinic anhydride (i.e., a surface treatment agent) and/or salty reaction product thereof ([0029]), wherein said mono-substituted succinic acid may be substituted with a C3 to C20 aliphatic group ([0170]) which may be an alkyl group which is saturated ([0139]). Brunner contemplates the use of unsaturated treatment agents, but is not construed to require the presence of an unsaturated compound within the treatment layer.
As to Claim 24: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material may have a moisture pick up susceptibility of from 0.2 to 0.8 mg/g ([0196]).
As to Claim 25: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the surface-treated filler material may have a moisture pick up susceptibility of from 0.2 to 0.8 mg/g ([0196]).
As to Claim 26: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the surface-treated filler material comprises a treatment layer on the surface of the calcium carbonate comprising at least one mono-substituted succinic acid and/or succinic anhydride (i.e., a surface treatment agent) and/or salty reaction product thereof ([0029]), wherein said mono-substituted succinic acid may be substituted with a C3 to C20 aliphatic group ([0170]) which may be an alkenyl group which is unsaturated ([0149]). Brunner contemplates the use of saturated treatment agents, but is not construed to require the presence of a saturated compound within the treatment layer.
As to Claim 27: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the surface-treated filler material comprises a treatment layer on the surface of the calcium carbonate comprising at least one mono-substituted succinic acid and/or succinic anhydride (i.e., a surface treatment agent) and/or salty reaction product thereof ([0029]), wherein said mono-substituted succinic acid may be substituted with a C3 to C20 aliphatic group ([0170]) and may be an alkenyl group which is unsaturated ([0149]).
As to Claim 28: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the surface-treated filler material comprises a treatment layer on the surface of the calcium carbonate comprising at least one mono-substituted succinic acid and/or succinic anhydride (i.e., a surface treatment agent) and/or salty reaction product thereof ([0029]), wherein said mono-substituted succinic acid and/or succinic anhydride may be substituted with a C3 to C20 aliphatic group ([0170]) and may be an alkenyl group which is unsaturated ([0149]) and wherein the succinic acid moiety meets the recited “carboxylic acid” limitation as succinic acid is a dicarboxylic acid.
As to Claim 29: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the at least one thermoplastic polymer may be polypropylene ([0060]) may be present in an amount of 15 to 70 wt% ([0114]). Brunner further teaches that the surface-treated filler material may be present in an amount of 15 wt% to 60 wt% ([0199]). It is also noted that Brunner teaches wherein said at least one thermoplastic polymer may be polyethylene, polypropylene, and mixtures thereof ([0060]), which reads on the claimed at least one polyethylene polymer and at least one polypropylene polymer as required in claim 18. Brunner teaches that the polyethylene component may be present in an amount of 1 to 10 wt% based on the total amount of thermoplastic polymer ([0112]). Thus, accounting for the balance of thermoplastic polymer which may be polypropylene as taught by Brunner ([0060]) would yield an overlapping amount with the claimed range for an amount of polypropylene (e.g., Brunner embraces wherein a thermoplastic polymer blend consisting of 10% polyethylene, 90% polypropylene. For a composition comprising 15 wt% of the thermoplastic polymer, said composition would include 13.5 wt% of polypropylene, which is within the claimed range). This range 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 Brunner suggests, that the overlapping portion is a useable range for an amount of a thermoplastic polymer, such as polypropylene, within a filled thermoplastic composition having properties suitable forming films.
As to Claim 30: Brunner teaches the composition of claim 18 (supra).
Brunner teaches that the at least one thermoplastic polymer may be polypropylene ([0060]) may be present in an amount of 15 to 70 wt% ([0114]). Brunner further teaches that the surface-treated filler material may be present in an amount of 15 wt% to 60 wt% ([0199]). It is also noted that Brunner teaches wherein said at least one thermoplastic polymer may be polyethylene, polypropylene, and mixtures thereof ([0060]), which reads on the claimed at least one polyethylene polymer and at least one polypropylene polymer as required in claim 18. Brunner teaches that the polyethylene component may be present in an amount of 1 to 10 wt% based on the total amount of thermoplastic polymer ([0112]). Thus, accounting for the balance of thermoplastic polymer which may be polypropylene as taught by Brunner ([0060]) would yield an overlapping amount with the claimed range for an amount of polypropylene (e.g., Brunner embraces wherein a thermoplastic polymer blend consisting of 10% polyethylene, 90% polypropylene. For a composition comprising 15 wt% of the thermoplastic polymer, said composition would include 13.5 wt% of polypropylene, which is within the claimed range). This range 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 Brunner suggests, that the overlapping portion is a useable range for an amount of a thermoplastic polymer, such as polypropylene, within a filled thermoplastic composition having properties suitable forming films.
As to Claim 31: Brunner teaches the composition of claim 18 (supra).
Brunner is silent towards and does not require a peroxide reagent.
As to Claim 32: Brunner teaches the composition of claim 18 (supra).
Brunner further teaches that the composition may comprise additives including UV-absorbers, light stabilizers, processing stabilizers, antioxidants, heat stabilizers, nucleating agents, metal deactivators, impact modifiers, plasticizers, lubricants, rheology modifiers, processing aids, pigments, dyes, optical brighteners, antimicrobials, antistatic agents, slip agents, anti-block agents, coupling agents, dispersants, compatibilizers, oxygen scavengers, acid scavengers, markers, antifogging agents, surface modifiers, flame retardants, blowing agents, smoke suppressors, and mixtures thereof ([0213]).
As to Claim 33: Brunner teaches the composition of claim 18 (supra).
Brunner does not measure the impact strength of the composition.
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. Therefore, the claimed effects and physical properties, i.e. impact strength, 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 34: Brunner teaches the composition of claim 18 (supra).
Brunner does not measure the tensile modulus of the composition.
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. Therefore, the claimed effects and physical properties, i.e. tensile modulus compared to the same polymer composition not comprising the surface-treated calcium carbonate-containing filler material or compared to the same polymer composition comprising the same ultrafine calcium carbonate-containing filler material lacking a surface treatment, 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 18-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-27, 29, and 31 of copending Application No. 18/845,004 (hereinafter ‘004). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘004 claims a filled polymer composition that is substantially the same as the claimed filled polymer composition wherein ‘004 claims (Claim 19) a filled polymer comprising at least one polyolefin which may be polyethylene and polypropylene and further comprising a calcium carbonate-containing filler material that is a surface-treated calcium carbonate-containing filler material comprising a surface-treatment layer on at least a part of the surface-treatment layer comprises at least one surface treatment agent and/or salty reaction products thereof and wherein the at least one surface treatment agent has a total amount of carbon atoms from C4 to C34, and comprises at least one carboxyl group and/or a derivative thereof. The amount of a calcium-carbonate filler material also substantially overlaps with the claimed amount for the same (as claimed in claim 17 of ‘004). ‘004 further claims the same or overlapping structural configuration of the surface treatment layer (claim 20, 24, 25), amounts for the calcium carbonate-containing filler material and thermoplastic polymers (claims 21, 26, 27), properties of the surface-treated calcium carbonate-containing filler material (claim 22, 23), and additives (claim 31).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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