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 .
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.
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 18-20, 22, 24, 26, 28, 29, and 30 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
The above claims recite the limitation “and/or” for their listings of alternatives. While “or” is not considered to be indefinite, the “and” recitation introduces the broad/narrow interpretation of the claims which is indefinite. For example, in Claim 18 the limitations can be narrower under “or” but are broad / narrow under “and” as indefinite if it required to have C8 α-olefins and C6 α-olefins, for instance. For Claim 30, it is unclear how to arrive at films for medical and food packaging together. For the above reasons the metes and bounds on the “and” combinations in Claims 18-20, 22, 24, 26, 28, 29, and 30 are indefinite. Examiner recommends removing the “and” limitation in these claims as “or” is sufficient to arrive at a proper list of alternative limitations while also not getting into excessive dependent claims.
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 16-22, 25-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17, 22, 28, 29, 30, 31, 32 of copending Application No. 18/880313.
Although the claims at issue are not identical, they are not patentably distinct from each other because 18/880313 Claim 29, which represents the combination of 18/880313 - Claim 17 (multimodal metallocene) and 18/880313 - Claim 29 (0.1 to 3.0 wt% polyethylene wax added to the composition of Claim 17). The remaining ranges of all components claimed by instant claim 16 are significantly overlapped by claim 29 / 17 of 18/880313 and the claims use significantly the same language to recite the claimed metallocene multimodal polyethylene). The combination of these two polyethylene components (wax + multimodal) is 100 wt% of the polymer component of the claims. The 100 wt% limitation interpreted as the polymer component of the compositions recited the broadest reasonable interpretation of the as-filed specification of this limitation is the composition can have additional additives while the only polymeric components are the wax and multimodal polyethylene. (See Inventive examples of the as-filed specification)
Instant Claim 17, Claim 19, Claim 20, Claim 22, and Claim 25 (no fluoro processing aids are recited) are read over for the same reasons.
For instant Claim 18, Claim 29/17 is silent on the comonomers claimed.
However, 18/880313 Claim 22 recites hexane and butylene in each of the polymers of 18/880313 claim 17 as comonomers. Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was filed to practice the invention of 18/880313 Claim 29 / 17 using hexane and butylene comonomers for the polyethylene components because 18/880313 Claim 22 recites these comonomers for that purpose. This reads over the comonomers of instant claim 18.
For instant Claim 21, 18/880313 Claim 29 is silent on the catalyst used to make the polyethylene of 18/880313 Claim 17 from which it depends.
18/880313 Claim 28 recites a catalyst to use for making the polyethylene of 18/880313 Claim 17 from which it depends.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time invention was filed to practice the invention of 18/880313 Claim 29/17 such that the catalyst used to produce the polyethylene of 18/880313 Claim 17 is the catalyst of 18/880313 Claim 28 because the 18/880313 is recited to be used for this purpose. This reads over the catalyst of instant Claim 21 in an apparent manner.
With respect to Claims 27-28 and 30, these claims recite a film and associated properties. 18/880313 Claim 29/17 is silent on the film and the properties claimed.
However, 18/880313 Claims 30-32 recite a film of the 18/880313 Claim 17 composition.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 18/880313 Claim 17 such that the wax of 18/880313 is used in making the films of 18/880313 30-32 because 18/880313 Claim 17 recites the wax of 18/880313 as a variant of the composition of 18/880313 Claim 17 along with the films variants of 18/880313 Claims 30-32. This reads over the films and properties of instant Claims 27-28 and 30 as they are explicitly recited and the end uses of instant claim 30 is considered future intended use of films of 18/880313 and there is nothing of record to reasonably suggest the 18/880313 cannot be used for food or medical packaging.
With respect to instant Claim 26 and instant Claim 29, 18/880313 is silent on the properties recited. However, the above combination has a polyethylene wax in the recited range along with compositional amounts and properties of the underlying multimodal polyethylene which are overlapping the recited limitations. Every example in the as-filed specification that meets the limitations of instant Claim 16 also meets the properties of instant Claim 26 and instant Claim 29. Note that LLDPE-2 of the as-filed specification (CE-1) does not fall under the ranges of either the instant claims nor 18/880313’s composition for MFR21/MFR2 for instance.
Therefore, based on the above evidence, when tested appropriately, one of ordinary skill in the art is reasonably suggested the 18/880313 composition of Claim 29 as discussed above must have the properties of instant Claim 16 and instant Claim 29.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. NOTE: MPEP 804 (I)( B)(1)(b)(i) provisions regarding potentially withdrawing a provisionally non-statutory double patenting rejection based on earlier filing date is not applicable as there needs to be copending non-statutory double patenting rejections in both co-pending applications for it to be valid. Currently, there is no copending provisional non-statutory double patenting rejection in 18/880313.
Claims 23-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17, 22, 28, 29, 30, 31, 32 of copending Application No. 18/880313 in view of Richter (U.S. 20030114322).
18/880313 is applied as above but fails to recite anything about the particulars of the polyethylene wax recited by 18/880313.
Richter teaches the use of polyethylene waxes in plastic processing and suggests said polyethylene waxes enable better effect (lubrication and release, if applicable) to be achieved in the same or similar amounts in or to reduce other known disadvantages of using lubricants in plastic processing. (¶[0010]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 18/880313 Claim 29 such that polyethylene wax of the claim is the polyethylene wax taught by Richter for the advantage of using waxes in plastic processing which enable better effect (lubrication and release, if applicable) to be achieved in the same or similar amounts in or to reduce other known disadvantages of using lubricants in plastic processing. (¶[0010]) One of ordinary skill in the art would have been motivated to choose any of the exemplified waxes in the Table ¶[0024] to accomplish the above modification including Example 1 because they are exemplified. Example 1 is a metallocene ethylene homopolymer wax with a melt viscosity at 140 oC of 320 mPa[Symbol font/0xD7]s which reads over instant Claim 23 and instant Claim 24.
Allowable Subject Matter
Claims 18-20, 22, 24, 26, 28, 29, and 30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 16-30 would be allowable upon resolution of the above §112 for the above specific claims and non-statutory double patenting rejections of record.
The closest prior art is WO2021009191 which teaches multimodal polyethylene films with many common properties to the instantly claimed multimodal polyethylene films but fails to teach or suggest a wax and, additionally, the amount of similar A and B components claimed cannot be arrived at via WO2021009191 nor cane the MFR2 of Component B as recited as WO2021009191 requires the MFR for this component to be 5 to 50 g/10 min. This is well in excess of the claimed MFR for said component of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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