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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims.
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.
Claim(s) 16-30 (is)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, or for pre-AIA the applicant regards as the invention.
Claim 16 fails to define A-1 and A-2. The claimed ethylene-1-butene polymer has a molecular weight distribution and fractions of polymers with different molecular weight, as known to one of ordinary skill in the art. The claimed A-1 and A-2 (can be identical fraction) fractions are unclear and should be further defined. The limitation of “as described in an experimental part” in claims 17 and 24-25 is indefinite. Claims 17-30 depend upon claim 1 and fail to rectify the issue in claim 1. See MPEP § 2173.05(d).
Claims 26-30 recite the limitation of “Film”. There is insufficient antecedent basis for this limitation in the claims.
Claim 18-21, 27-29, and 23-25 contain broad ranges together with narrow ranges because of the limitation of “and/or”. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). For examination purpose and by broadest interpretation, the broader range has been considered.
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 16-30 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16-30 of copending Application No. 18/293920. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘920 (claims 16-30) meets instant claims 16-30 because it discloses a film for food and/or medical products comprising the claimed metallocene-catalyzed multimodal polyethylene copolymer using the claimed metallocene:
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The disclosed wt% and mol% of ethylene-1-butene polymer component, ethylene-1-butene polymer fraction A-1 and A-2, ethylene-1-hexene polymer, 1-butene, and 1-hexene components fall within or overlap with the claimed ranges. The disclosed properties of MFR2, densities, ratio of a molecular weight (Mw) of a low crystalline fraction to a molecular weight (Mw) of a high crystalline fraction, breadth at Half peak height Tp(LCF)/to a breadth at Half peak height Tp (HCF), impact strength, ratio of the soluble fraction, and tensile modulus have ranges falling within or overlapping with the claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. 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). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements/film from the composition/film disclosed in the ‘920 since it discloses all applicants' components, values and methods of making.
‘920 is silent on the critical shear rate of instant claim 23. One ordinary skill in the art would have expected the process (and the resulting product) disclosed by ‘920 to feature the same critical shear rate, because ‘920 obviously satisfy all of the material and chemical limitations of the instant invention-see MPEP 2112.01.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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