DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 8, 10, and 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 27 June 2025.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 5-7, 9, and 15-20 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a coated article comprising a matte coating layer having a recyclability property towards drop dart, Elmendorf tear, secant modulus, and tensile strength formed from an acrylic-based material cured with an isocyanate, does not reasonably provide enablement for coated articles comprising a matte coating layer having the recited recyclability property formed from other compositions. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be "commensurately enabling [regarding the scope of the claims]" Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1, 2, 5-7, 9, and 15-20 can be used as claimed and whether claims 1, 2, 5-7, 9, and 15-20 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1, 2, 5-7, 9, and 15-20, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1, 2, 5-7, 9, and 15-20 encompass polyurethane based coatings while the only polyurethane based coating disclosed in the specification (i.e., Comparative Example B) does not exhibit the recyclability property.
(b) There is no direction or guidance presented for coatings outside of acrylic-based material cured with an isocyanate to exhibit the required recyclability property with respect to drop dart, Elmendorf tear, secant modulus, and tensile strength.
(c) There is an absence of working examples concerning coatings outside of acrylic-based material cured with an isocyanate to exhibit the required recyclability property with respect to drop dart, Elmendorf tear, secant modulus, and tensile strength.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1, 2, 5-7, 9, and 15-20.
Claim Rejections - 35 USC § 112(b)
Claims 1 and 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 9 are rendered indefinite because the manner in which drop dart, Elmendorf tear, secant modulus, and tensile strength are measured is not recited.
Claim Rejections - 35 USC § 102 / 103
Claims 1-7, 9, 11, 15, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Guo et al. (US 2019/0315994).
Guo et al. teach an aqueous matte coating composition comprising 1st and 2nd acrylic beads, a polymeric binder, and slip additives (paragraph 0005). The coating further comprises a polyisocyanate crosslinker (paragraph 0007). The first acrylic beads have a Tg of -30 to 10 oC and a diameter of 0.1 to 2 mm (paragraph 0011). The first acrylic beads are multi-stage core/shell particles with acrylic rubber cores (paragraph 0011-0013). The polymer binder is an acrylic polymer (paragraph 0041) having a particle size of 0.1 to 0.5 mm (paragraph 0040). When the coating is formed, the binder forms a continuous phase while the beads retain their particulate identity (paragraph 0051). The coating may be applied to polyolefin films, such as a polyethylene film (paragraph 0055).
Regarding the limitation that the matte coating composition has a recyclability property that experiences less than a 30% decrease in performance in drop dart, Elmendorf tear, secant modulus, and/or tensile strength, one of ordinary skill in the art would expect this to be a material property of the coating composition. According to the instant specification, the recyclable waterborne acrylic-based matte coating composition may be an acrylic-based material cured with a isocyanate crosslinker, such as a composition comprising: (1) a water dispersion of smaller acrylic particles sized 0.5 to 1.5 mm and larger acrylic particles sized 1.5 to 7 mm, (2) an acrylic emulsion having a particle size of 0.05 to 1 mm and a Tg of 5 to 50 oC, and (3) one or more additive such as slip agents (page 12, lines 6-17). The aqueous matte coating composition of Guo et al. is described as comprising multiple acrylic beads, a polymeric binder, and a slip additive (paragraph 0005). The first acrylic bead has a particle size of 0.1 to 2 mm (paragraph 0011); the second acrylic bead has a particle size of 3 to 30 mm (paragraph 0036); the polymer binder has a particle size of 0.1 to 0.5 mm (paragraph 0040) and is acrylic with an isocyanate crosslinker. Since the aqueous matte coating of Guo et al. appears similar to that of the instant invention, one of ordinary skill in the art would expect it to have similar recyclability properties.
Regarding claims 16, 18, and 20, Guo et al. do not teach the thickness of their coating in microns, instead reciting that the coating of their Examples has a coating weight of 1.0 lb/rm (paragraph 0066). In the event that a coating weight of 1.0 lb/rm does not inherently result in a thickness of 1 to 5 microns, it would have required no more than routine experimentation and ordinary skill to determine a workable thickness range for the coating of Guo et al. One of ordinary skill in the art would expect this range to overlap the range recited in claims 16, 18, and 20 since the coating of Guo et al. is designed to perform the same task as that of the instant coating, i.e., to provide a substrate with a matte finish. Moreover, while Guo et al. disclose that films of polyolefins, such as polyethylene or polypropylene, may be used as the substrate to which the coating is applied (paragraph 0055), the reference is silent as to the thickness of the polyethylene film. However, the examples of Guo et al. employ a polypropylene film having a thickness of 80 gauge (paragraph 0067), i.e., 0.8 mil or about 20 microns. Since Guo et al. teach using one polyolefin (i.e., polypropylene) film at a thickness of about 20 micron, it would have been obvious to one of ordinary skill in the art to use other polyolefin films (including polyethylene) at a similar thickness.
Regarding claims 15, 17, and 19, the limitations of these claims are met since the claims merely further limit the reprocessed first article that it is possible to make out of the coated film structure of claim 9. Claim 9, as well as claims 15, 17, and 19, are directed to coated film structures and not reprocessed first articles.
Response to Arguments
Applicant's arguments filed 27 June 2025 have been fully considered but they are not persuasive.
The applicant argues that Guo is silent with respect to reprocessed articles, let alone reprocessed articles having the claimed drop dart, Elmendorf tear, secant modulus, and tensile strength properties.
This is not persuasive because the claims are directed to a coated article/film comprising a polyolefin article/film on which has been applied a coating layer formed from a waterborne acrylic-based matte coating composition and not a reprocessed article formed by reprocessing the coated article/film. The coated film of Guo meets all the material limitations of claims 1-7, 9, 11, 15, 17, and 19 and would be expected by one of ordinary skill in the art to meet all the recyclability properties for the reasons set forth above in paragraph 7.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 afternoons, 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