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 .
Preliminary Amendment
The preliminary amendment filed June 22, 2023 is acknowledged.
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-6 and 17-20 in the reply filed on April 16, 2026 is acknowledged.
Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 16, 2026.
Applicant's election with traverse of Group I in the reply filed on April 16, 2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden of search relying on MPEP § 803 for support. This is not found persuasive.
The instant claim has been filed under 35 U.SC. § 371 where restriction is driven in accordance with PCT unity of invention. MPEP § 803 is the restriction standard for U.S. national applications filed under § 111(a) but does not govern lack of unity of invention for an application filed under 35 U.S.C. 371 national stage.
For 371 cases, the application uses PCT unity of invention framework in MPEP Chapter 1800, particularly MPEP § 1893.03(d).
Under unity of invention rules, an application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in one and the same international application, the requirement of unity of invention referred to in Rule 13.1 (single general inventive concept) shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
As shown below, claim 1 does not meet either of Rules 13.1 or 13.2 applicable under 371 applications in light of JP 2019-217770 which anticipates at least claim 1. Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.
Since claim 1 is anticipated as discussed below, claim 1 does not define a special technical feature as defined above, and unity of invention does not exist.
Again, as noted in the previous Office Action, the core question under unity of invention, is whether the claims are linked by a single general inventive concept and corresponding technical feature. As set forth in the previous Office Action and as further evidenced under the 102 rejection of claim 1 below, there is no single general inventive concept and corresponding technical feature. Therefore, unity of invention does not exist, the requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed September 25, 2023 and May 6, 2025 have been placed in the application file and the information referred to therein has been considered as to the merits.
With respect to foreign language references and foreign language patent office communications with no translation of the document: “If no translation is submitted, the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face, e.g., drawings, chemical formulas, English language abstracts, in the same manner that non-English language information in Office search files is considered by examiner in conducting searches.” See MPEP §609.04(a)(II) (D) and 37 CFR 1.98(a)(3)(ii).
Drawings
The drawings received June 22, 2023 are acceptable for examination purposes.
Specification
The specification received June 22, 2023 has been reviewed for examination purposes.
Claim Interpretation
With respect to the elected film claims, the phrase “for bonding a housing and a valve device to each other, the heat-sealable film” is interpreted as intended use of the film.
While intended use recitations and other types of functional language cannot be entirely disregarded. However, in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963).
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). See also MPEP § 2114.
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
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.
Claims 6 and 18-20 are 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.
Claims 6 and 18-20 are unclear as they only recite additional limitations to the valve device which is not part of the heat-sealable film itself. Claim 1 is drawn to the heat-sealable film. The class of invention of claims 1-6 and 17-20 appear to be drawn to the heat-sealable film and limitations outside of that film, such as the limitations of the valve device in claims 6 and 18-20 render the exact nature of claims 6 and 18-20 indefinite as to whether applicant is attempting to claim the film alone (as would be understood by the preamble of claim 1, “A heat-sealable film, for bonding a housing and a valve device to each other, the heat-sealable film comprising …” but is rendered indefinite by the further limitations of claims 6 and 18-20 solely drawn to modifying the valve device, which is not further limiting of the heat-sealable film.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 18-20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 is drawn to the heat-sealable film itself. Claims 6 and 18-20 are drawn to limitations pertaining to the valve device which is not a part of the heat-sealable film. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-6 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasaki et al. (JP2019-217700A).
As to claim 1, Sasaki discloses a heat-sealable film comprising
a heat-resistant resin layer (para. [0111]) having a melting peak temperature in a range of 150°C or higher and 350°C or lower (para. [0059], and
the heat-scalable film having a heat shrinkage ratio of 7.0% or less in each of MD and TD when heated in an environment at 200°C for 10 minutes (para. [0021]).
The heat-weldable resin layer 1 (Fig. 1) which has the melting peak temperature in a range of 150°C or higher and 350°C or lower and a heat shrinkage ratio of 7.0% or less in each of MD and TD when heated in an environment at 200°C for 10 minutes (paras. [0021], [0057]).
For example, see Examples 1 and 2 (paras. [0123] and [0124]) and table 1 where the first two heat sealable films in table 1 have a melting peak temperature of 262°C and 250°C, respectively and shrinkage of less than 7% in both the MD and TD directions (See tables 1).
As to claim 2, an intermediate layer 3 of the heat sealable film 1 (Figs. 1-2) is a nonwoven material with Example 2 explicitly stating that a non-woven fabric is used (para. [0124]).
As to claims 3-4 and 17, the heat-sealable film includes acid-modified polyolefin (maleic anhydride-modified polypropylene – acid modification degree (para. [0124])).
As to clam 5, the modified polyolefin is acid modified as discussed above and exemplified and can be a number of suitable polyolefins including homopolypropylene and block polypropylene (paras. [0034], [0066]).
As to claims 6 and 18-20, the treatment of the valve device is not further limiting with respect to the heat-sealable film itself as the invention is to the heat-sealable film for bonding to the valve. While the valve may be modified for bonding, such modification has no bearing on the heat-sealable film itself. Claims 6 and 18-20 do not further limit the film itself and are anticipated for the same reasons with regards to claims 1-4 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Application Publication No. 2016/0208144 disclose an adhesive film having a nominal level of shrinkage in both the MD and TD directions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGG CANTELMO whose telephone number is (571)272-1283. The examiner can normally be reached Mon-Thurs 7am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at (571) 272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGG CANTELMO/Primary Examiner, Art Unit 1725
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