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’s election without traverse of Group II in the reply filed on 11 December 2025 is acknowledged.
Claims 1-5 and 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11 December 2025.
Claim Objections
Claim 7 objected to because of the following informalities: In line 3, it appears “packaging materials or products” should be “packaging materials or packaging products” for clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cooper et al. (US 2,975,483).
Regarding claims 6-7, Cooper discloses polyamide or polyester pellets (C1/L 15-20).
It is noted that the phrase “made from” does not necessarily require that all of the materials present in the first article must be present in the second article. Further given that the first article does not exclude other materials such as polyester or polyamide, it is the examiner’s position that the second article could be formed from a first article comprising polyester or polyamide and polyolefin and the solvent-borne adhesive. Then, the polyolefin and the solvent-borne adhesive could be removed and pellets of polyester or polyamide could be formed and these pellets would meet the limitations of claims 6-7.
Although Cooper does not disclose “made from any one of the first articles of claim 5” as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to 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). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Cooper meets the requirements of the claimed second article/pellets, Cooper clearly meets the requirements of present claims 6-7.
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 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mullen et al. (US 2001/0036534 A1) in view of Zupancic et al. (WO 2016/077355 A1).
Regarding claims 6-7, Mullen discloses a multilayer film comprising a layer of polyolefin and a solvent based adhesive (polyolefin polymer, solvent-borne adhesive; multilayer film)(abstract, [0011]).
Mullen does not disclose the specific solvent based adhesive.
Zupancic discloses Adcote 102E as a commercially available solvent-based adhesive (P10/L25-P11/L5).
Mullen and Zupancic are analogous art because they both teach about solvent-based adhesives. It would have been obvious to one of ordinary skill in the art at the time the invention was made to use Adcote 102E as taught by Zupancic as the solvent-based adhesive in the article of Mullen because it is a well-known commercially available solvent-based adhesive and doing so would amount to nothing more than using a known material in a known environment to accomplish an entirely expected result.
Given that the solvent-based adhesive of modified Mullen is identical to that of the instant working examples (Adcote 102E, see instant specification at Table 1 and P19/L5-10), it is the examiner’s position that it will intrinsically exhibit less than a 40 percent decreased change in performance compared to a control article without the solvent-borne adhesive composition that is preprocessed the same way as the article with the solvent-borne adhesive composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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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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/JAMES C YAGER/ Primary Examiner, Art Unit 1782