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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 17-36 are rejected under 35 U.S.C. 103 as being unpatentable over Koplin (US 20220089846 A1) in view of Rentsch (US 20180230312 A1) and Knerr (EP 3572456 A1, attached).
Regarding claim 17, 19-20, 23-26, 29-31, and 35, Koplin teaches a breathable film of polymer and filler (p. 2, [0038]). The film may be used in a diaper (claim 15). The film has a basis weight of less than 18 g/m2 (p. 5, [0073]). The film may contain calcium carbonate and LLDPE (p. 4, [0055], [0059]). The calcium carbonate may have a particle size ranging from 0.8 to 2 um (p. 4, [0055]).
However, Koplin is silent as to the fineness, moisture content, and surface-treatment of the filler.
In the same field of endeavor, Rentsch teaches ground calcium carbonate filler having moisture content of 10 wt% or less (p. 6, [0120]). The filler is ground and milled until it has a weight median particle size d50 of 0.4 to 40 um (claim 9). The filler may have a specific surface area in the range from 1-7 m2/g (p. 9, [0166]). The filler may be surface-treated (p. 7, [0145]). Surface treatment may include mono-substituted succinic anhydrides (p. 7, [0147]). All above ranges overlap or encompass the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps or encompasses the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Koplin and the filler of Rentsch to arrive at the claimed invention, and to provide a composition having low-toxicity filler, as taught by Rentsch (p. 2, [0021]).
However, Koplin and Rentsch are silent as to the amount of surface treatment agent that may be used. Koplin and Rentsch are also silent as to the structure of the mono-substituted succinic anhydride that may be used. In the same field of endeavor, Knerr teaches that it is known in the art to use a linear C2 to C30 substituted succinic anhydride in amounts ranging from 0.1 to 2.3 wt% as surface treatment on calcium carbonate filler (p. 2, [0006]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Koplin and Rentsch with the surface treatment of Knerr to arrive at the claimed invention, and because of the art-recognized suitability for its intended use. See MPEP 2144.07.
Regarding claim 18, Koplin as modified remains as applied to claim 17 above. Rentsch further teaches that the ground calcium carbonate may be of natural origin (p. 4, [0067]).
Regarding claims 21-22, Koplin as modified remains as applied to claim 17 above. Koplin further teaches filler content ranging from 20-90 wt% (claim 5). This prior art range overlaps the claimed range. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Regarding claims 27-28, Koplin as modified remains as applied to claim 17 above. Koplin does not specify the moisture pick-up of the treated filler. Nevertheless, Koplin as modified teaches a filler having the same ingredients in the same amounts as the claimed filler. Koplin's filler will therefore necessarily possess the same moisture pick-up characteristics as the claimed filler. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Regarding claims 32-34, Koplin as modified remains as applied to claim 17 above. The prior art does not specify the claimed physical properties. Nevertheless, Koplin as modified teaches a breathable film having the same ingredients as the claimed film, and sharing other properties including basis weight. Koplin as modified will therefore necessarily possess the claimed physical properties. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Regarding claim 36, Koplin as modified remains as applied to claim 17 above. Koplin further teaches that the film may be formed by producing the composition of polymer and filler, forming a film, and stretching the film (claim 11).
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Koplin in view of Rentsch and Knerr, and further in view of Brunner (EP 2975078 A1, attached).
Regarding claim 37, Koplin as modified remains as applied to claim 36 above. However, these references are silent as to pelletizing the material under water. In the same field of endeavor, Brunner teaches continuous pelletizing under water of the polymer and surface-treated filler (p. 6, [0042]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Koplin as modified with the pelletization of Brunner to arrive at the claimed invention, and because of the method's art-recognized suitability for the intended use. See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762