DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claims 1-7 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over as being anticipated by US 2007/0098933 A1 to Opuszko et al. (hereinafter ‘Opuszko’').
Regarding claims 1, 5 and 7, Opuszko teaches a packaging film (para [0008] "A film useful in shrink sleeve applications"; para [0013] “a package comprising the film...") comprising: a first layer [0050-0057] having a first surface and an opposing second surface (para [0033] "The base layer"; it is understood layers have first and opposing second surfaces), the first layer comprising a first layer cyclic olefin copolymer (para (0035] "The base layer may comprise alpha-olefin/cyclic olefin copolymer (‘COC’')") in an amount from 5% to 30% by weight of the first layer (para [0045] “The base layer may comprise COC...in at ieast about, and/or at most about, any of the following amounts, based on the weight of the base layer: 5, 10, 15, 20, 25, 30...weight %") and a first layer polyolefin (para [0049] "The base layer may further comprise one or more polyethylenes, such as ethylene homopolymer’) in an amount from 70% to 95% by weight of the first layer (para [0065] "The base layer may comprise at least about, and/or at most about, any one or more of the above-described polyethylenes...in any of the following amounts: ...70, 75, 80, 85, 90, and 95% by weight of the layer."), and a second layer disposed adjacent to the second surface of the first layer (para [0012] “Below are some examples of combinations in which the alphabetical symbols designate the film layers...A/B...'A' represents a skin layer, as discussed below. 'B' represents a base layer, as discussed below."; the skin layer will be considered the second layer, it is understood that it is disposed adjacent to the second surface); wherein the first layer and the second layer are coextruded to each other (para [0090] “The film may be prepared by extrusion or coextrusion"), wherein the packaging film comprises a gloss measurement of less than or equal to 50% when measured according to ASTM D-2457-08 (para [0086] “The film may have a gloss (i.e., specular gloss)...of at least about any of the following values: 40%, 50%...All references to ‘gloss’ values in this application are in accordance with ASTM D 2457"; given the same material, the properties are inherent, and wherein the first layer cyclic olefin copolymer comprises a glass transition temperature (Tg) of greater than or equal to 78 degree Celsius (C) (para [0043] "Useful COC...have a glass transition temperature of at least about...60 C").
Regarding claims 13-14 and 19-20, Opuszko teaches a laminated packaging film (para [0008] “A film useful in shrink sleeve applications"; para [0013] "a package comprising the film..."; it is understood it is laminated as discussed hereinafter) comprising: a packaging film comprising a first layer having a first surface and an opposing second surface (para [0033] "The base layer’; it is understood layers have first and opposing second surfaces), the first layer comprising a first layer cyclic olefin copolymer (para [0035] “The base layer may comprise alpha- olefin/cyclic olefin copolymer (‘COC’)") in an amount from 5% to 30% by weight of the first layer (para [0045] "The base layer may comprise COC...in at least about, and/or at most about, any of the following amounts, based on the weight of the base layer: 5, 10, 15, 20, 25, 30...weight %") and a first layer polyolefin (para [0049] “The base layer may further comprise one or more polyethylenes, such as ethylene homopolymer’) in an amount from 70% to 95% by weight of the first layer (para [0065] "The base layer may comprise at least about, and/or at most about, any one or more of the above-described polyethylenes...in any of the following amounts: ...70, 75, 80, 85, 90, and 95% by weight of the layer."), and a second layer disposed adjacent to the second surface of the first layer (para [0012] “Below are some examples of combinations in which the alphabetical symbols designate the film layers...A/B...‘A’ represents a skin layer, as discussed below. 'B' represents a base layer, as discussed below."; the skin layer will be considered the second layer, it is understood that itis disposed adjacent to the second surface), and a sealant film (para [0013] "An ‘inside layer’ of a film is an outer layer of the film that is, or is intended to be, facing inwardly from a label comprising the film (i.e., toward the labeled item)"; para [0014] "In addition to a first skin layer, the film may comprise a second skin layer as an outer layer of the film"; the second skin layer is considered a sealant layer as it is inwardly facing whatever the film is packaging); wherein the first layer and the second layer are coextruded to each other (para [0090] "The film may be prepared by extrusion or coextrusion"), wherein the sealant film is laminated to the packaging film and comprises an exposed surface of the packaging film (it is understood that all layers being coextruded will laminate the sealant film and that is comprises an exposed surface as it is the inner layer), wherein the packaging film comprises a gloss measurement of less than or equal to 50% when measured according to ASTM D-2457 08 (para [0086] "The film may have a gloss (i.e., specular gloss)...of at least about any of the following values: 40%, 50%...All references to ‘gloss’ values in this application are in accordance with ASTM D 2457”; given the same materials, the properties are inherent), and wherein the first layer cyclic olefin copolymer comprises a glass transition temperature (Tg) of greater than or equal to 78 degree Celsius (C) (para [0043] "Useful COC...have a glass transition temperature of at least about...60 C").
Regarding claims 2-4, and 15, Opuszko teaches the packaging film of claim 1, wherein the packaging film is a coextruded blown film (para [0090 -0091]] "The film may be prepared by extrusion or coextrusion utilizing, for example, a tubular trapped bubble film process"; it is understood bubble processes, orientation and cast films are processes, limitations found in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Re claim 6, the second layer is polyolefin [0033-039].
Re claim 9, see claim 14 to the third layer materials and as the material may be a tie layer, while not explicit, [72] teaches overlapping ranges of the weight % as claimed.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range effecting overall functionality taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 10-12, an outer skin layer is on the outside of the laminate package. See [13, 85], and intermediate layers [69], either functioning as a barrier or sealant.
Regarding claim 16, Opuszko teaches the packaging film of claim 14, wherein the packaging film is a coextruded blown film (para [0090 -0091]] "The film may be prepared by extrusion or coextrusion utilizing, for example, a tubular trapped bubble film process"; it is understood laminated by heat, extrusion or adhesive are processes, limitations found in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Re claim 17, see Figs. 1 and 2 and associated text.
Re claim 18, the second layer is polyolefin [0033-039].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over as being anticipated by US 2007/0098933 A1 to Opuszko et al. (hereinafter “Opuszko’') in view of US 20220363952 to Blackwell et al. (hereinafter “Blackwell”).
Opuszko is relied upon above.
Re claim 8, Opuszko suggests fillers [83] but not those claimed.
Blackwell teaches an analogous packaging film of fillers as claimed [41-42] used as antiblocking agents that reduce sticking.
It would have been obvious to one having ordinary skill in the art at the time of the effective filing date to have added the claimed filler of Blackwell as suggested by Opuszko for reasons set forth above.
Response to Arguments
Applicant's arguments filed 01/26/26 have been fully considered but they are not persuasive. Applicant argues Opuszko [43] teaches only that 60 degrees C and therefore alleges 60 is not more than 78 degrees. Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). The fact remains that a fair reading of Opuszko as whole discloses at least 60 degrees C which overlaps the range presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Applicant argues the data from the specification to claim Opuszko doesn’t teach the inherent properties claimed and relies upon the specification. However, see Mpep 2141.02: V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY "In determining whether the invention as a whole would have been obvious under 35 U.S.C. 103, we must first delineate the invention as a whole. In delineating the invention as a whole, we look not only to the subject matter which is literally recited in the claim in question... but also to those properties of the subject matter which are inherent in the subject matter and are disclosed in the specification. . . Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103." In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed wastewater treatment device had a tank volume to contractor area of 0.12 gal./sq. ft. The court found the invention as a whole was the ratio of 0.12 and its inherent property that the claimed devices maximized treatment capacity regardless of other variables in the devices. The prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.). See also In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").for the requirements of rejections based on inherency.
Obviousness cannot be predicated on what is not known at the time an invention is made, even if the inherency of a certain feature is later established. In re Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993). See MPEP § 2112.
Further, limitations from the specification are not read into the claims.
A prima facie case has been established, and therefore the burden shifts to the Applicant to submit additional objective evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135,139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699,705, 222 USPQ 191, 196 (Fed. Cir. 1984). Until the Applicant has convincingly argued or has provided evidence to the contrary, the rejections are maintained.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
International Search and Written Opinion.
US 20180009203A1 to Ball et al. teaches a similar construction as a packaging film shown in Figs. 1 and 1B and associated text having multilayer second sealant film 120 of polyethylene [20-24] and supporting film as described [20-24] of [22] HDPE / adhesive [13] / first layer 110 of BOPP [14] /indicia [15].
Conclusion
THIS ACTION IS MADE FINAL. 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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787