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
Applicant has amended claim 1 to include the limitations of claim 6. Therefore, present claim 1, and the claims depending therefrom, have been examined and claims 8-15 are withdrawn.
Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/25.
Applicant’s election of claims 1-2, 4-5, 7 and 16 in the reply filed on 10/14/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a first article and a second article. It is not clear whether applicant is claiming the first article or the second article. For example, the “having a recyclability property comprising a combination of” could be interpreted as describing either the first article or the second article. For purposes of examination, either interpretation is considered to read on the claim.
Claim 1 recites the term “property” which is not defined in the claim and the specification does not appear to provide a definition. Therefore, the metes and bounds of the claim are not clearly defined and the claim is indefinite.
Claim 1 recited the term “performance” which is not defined in the claim and the specification does not appear to provide a definition. Therefore, the metes and bounds of the claim are not clearly defined and the claim is indefinite.
Claim recites the phrase “reprocessed the same way as the reprocessed first article with the waterborne acrylic-based adhesive composition.” However, the reprocessing is not defined in the claim and the specification does not appear to provide a definition. Therefore, the metes and bounds of the claim are not clearly defined and the claim is indefinite.
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.
Claim(s) 1-2, 4-5, 7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimokuri et al. (US 2015/0132567) in view of Fascio (US 2012/0245257) and Souza Bento et al. (US 2023/0074665).
Shimokuri discloses a first article having a recyclability property comprising a combination of: (a) at least one polyolefin polymer; and (b) a waterborne acrylic-based adhesive composition having a recyclability property (paragraphs [0015-0017], [0024], [0031], [0104], [0131], [0192-0195]).
Shimokuri does not disclose a second article made from a reprocessed first article.
Fascio discloses a second article made from a reprocessed first article (paragraphs [0001-0005], [0011], [0033-0036]) for the purpose of providing an environmentally friendly product.
Both references are drawn to recycled or recyclable plastic products.
The limitation, “when the first article with the waterborne acrylic-based adhesive composition is reprocessed and the waterborne acrylic-based composition is present in amount from 10 wt% to 50 wt% of the reprocessed first article, the reprocessed first article with the waterborne acrylic-based adhesive composition exhibits fess not more than a 40 percent decreased change in performance with respect to Dart Drop compared to a control article without the waterborne acrylic-based adhesive composition that is reprocessed the same way as the reprocessed first article with the waterborne acrylic-based adhesive composition,” is necessarily present in Shimokuri since Shimokuri discloses a recyclable article containing a waterborne acrylic-based adhesive and a polyolefin (paragraphs [0015-0017], [0024], [0031], [0104], [0131], [0192-0195]) which is the same article and materials disclosed by applicant (see applicant’s PGPUB 2024/0001656, paragraphs [0036], [0050]).
It is noted that Dart Drop is a measure of an articles impact resistance and Souza Bento discloses that recycled articles often have poor chemical and mechanical properties (paragraph [0003]) and that it is obvious to product a recycled article with improved impact resistance (paragraph [0005]).
Therefore it would have been obvious to have provided when the first article with the waterborne acrylic-based adhesive composition is reprocessed and the waterborne acrylic-based composition is present in amount from 10 wt% to 50 wt% of the reprocessed first article, the reprocessed first article with the waterborne acrylic-based adhesive composition exhibits fess not more than a 40 percent decreased change in performance with respect to Dart Drop compared to a control article without the waterborne acrylic-based adhesive composition that is reprocessed the same way as the reprocessed first article with the waterborne acrylic-based adhesive composition in order to provide improved impact resistance.
Shimokuri discloses wherein the polyolefin polymer is polyethylene, wherein the waterborne acrylic- based adhesive includes a water-dispersible acrylate crosslinker, an isocyanate crosslinker, and mixtures thereof, wherein the first article is selected from the group consisting of monolayer or multilayer films, multilayer laminates, and packaging materials or products (paragraphs [0015-0017], [0024], [0031], [0104], [0131], [0192-0195]).
Fascio discloses wherein the second article is selected from the group consisting of pellets, monolayer film, multilayer film films, multilayer laminates, and packaging materials, of packaging products, and combinations thereof, wherein the second article is selected from the group consisting of plastic composites, molded goods, laminated structures, shrink film, stretch wrap film, agricultural film, and combinations thereof (paragraphs [0001-0005], [0011], [0033-0036]).
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 1-2, 4-5, 7 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/254,161 in view of Fascio (US 2012/0245257).
Claims 1-15 of copending Application No. 18/254,161 recite applicant’s invention substantially as claimed but does not recite the limitation, “when the first article with the waterborne acrylic-based adhesive composition is reprocessed and the waterborne acrylic-based composition is present in amount from 10 wt% to 50 wt% of the reprocessed first article, the reprocessed first article with the waterborne acrylic-based adhesive composition exhibits fess not more than a 40 percent decreased change in performance with respect to Dart Drop compared to a control article without the waterborne acrylic-based adhesive composition that is reprocessed the same way as the reprocessed first article with the waterborne acrylic-based adhesive composition.” However, said limitation is necessarily present in claims 1-15 of copending Application No. 18/254,161 since claims 1-15 of copending Application No. 18/254,161 recite a recyclable article containing a waterborne acrylic-based adhesive and a polyolefin which is the same article and materials disclosed by applicant and wherein when the article with the solvent-borne adhesive composition is reprocessed, the article with the solvent-borne adhesive composition exhibits less than a 40 percent decreased change in performance compared to a control article without the solvent-borne adhesive composition that is reprocessed the same way as the article with the solvent-borne adhesive composition.
It is noted that Dart Drop is a measure of an articles impact resistance and Souza Bento discloses that recycled articles often have poor chemical and mechanical properties (paragraph [0003]) and that it is obvious to product a recycled article with improved impact resistance (paragraph [0005]).
Therefore it would have been obvious to have provided when the first article with the waterborne acrylic-based adhesive composition is reprocessed and the waterborne acrylic-based composition is present in amount from 10 wt% to 50 wt% of the reprocessed first article, the reprocessed first article with the waterborne acrylic-based adhesive composition exhibits fess not more than a 40 percent decreased change in performance with respect to Dart Drop compared to a control article without the waterborne acrylic-based adhesive composition that is reprocessed the same way as the reprocessed first article with the waterborne acrylic-based adhesive composition in order to provide improved impact resistance.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
December 4, 2025