DETAILED ACTION
Response to Amendment
The amendment and response filed on May 04, 2026 has been entered. Claims 14, 16, and 21-37 are pending. Claims 16 and 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 November 07, 2025. Claims 14 and 24-37 are deemed to be directed to the elected invention.
Claim Objections
Claim 36 is objected to because of the following informality. In line 2, there is an extraneous space between “13” and “000”. That is, the term “13 000” should be amended to “13000”.
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 14, 24-35, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/374,926 in view of KR 101699183.
As set forth in the December 02, 2025 Office action, the claims of US ‘926 are directed to a film that overlaps or only slightly varies in scope of the presently claimed film. US ‘926 does not claim the film being used with a solar cell. KR ‘183 discloses a similar film, i.e., ethylene vinyl acetate copolymer, that is used as an encapsulant film for a solar cell [0010]. It would have been obvious to one of ordinary skill in the art to have used the film of US ‘926 with a solar cell substrate, as taught in KR ‘183, motivated by the desire to obtain a solar cell having an encapsulant film that exhibits enhanced optical clarity and impact/stress resistance.
This is a provisional nonstatutory double patenting rejection.
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 14, 24-35, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (U.S. Pub. 2021/0102014) in view of KR 101699183.
Regarding claim 14, Hanlon discloses an article comprising a substrate [0071] and a film [0070] comprising a polymer produced from ethylene, one or more branched vinyl ester monomers, and, optionally, vinyl acetate (claim 1), wherein the ethylene content can be in the range of from 30-99.9 wt% [0020]. The polymer has a melt flow rate (MFR) can be 0.5-50 g/10 min [0042]. It is noted that the claimed melt index (I2) is synonymous with the MFR disclosed in US ‘014. That is, the melt index of the present claims and the MFR is measured according to the same ASTM test, i.e., ASTM D 1238 at 190ᵒC and load of 2.16 kg.
Hanlon does not disclose that the substrate is a solar cell. Example 1 of Hanlon discloses an embodiment that has enhanced optical clarity and impact/stress crack resistance. KR ‘183 discloses a similar film, i.e., ethylene vinyl acetate copolymer, that is used as an encapsulant film for a solar cell [0010]. It would have been obvious to one of ordinary skill in the art to have used the film of Hanlon with a solar cell substrate, as taught in KR ‘183, motivated by the desire to obtain a solar cell having an encapsulant film that exhibits enhanced optical clarity and impact/stress resistance.
Regarding claim 24, Hanlon discloses the claimed additives in the claimed amounts ([0026]-[0037]).
Regarding claim 25, Hanlon discloses the claimed branched vinyl ester monomer having the general structure (II) [0017].
Regarding claim 26, Hanlon does not specifically disclose the claimed comonomer content being the in the range of 10-60 wt%. However, Hanlon discloses that the branched vinyl ester can be present in an amount of 0.01-89.9 wt% (claim 6) and the vinyl acetate monomer can be present in an amount of 0.01-89.99 wt% (claim 7). Hanlon further discloses that the selection of specific amounts of these monomers predictably alters the properties of the film (Example 1). Specifically, Hanlon states that an increase in vinyl acetate predictably results in a decrease in crystallinity, Tg, melting temperature, and chemical resistance, while increasing the optical clarity and impact and stress crack resistance. Thus, it would have been obvious to one of ordinary skill in the art to have optimized the comonomer content to be within the presently claimed range, motivated by the desire to obtain a film having desired properties associated with this range. See MPEP 2144.05.II.
Regarding claim 27, Hanlon discloses the claimed density [0052].
Regarding claim 28, Hanlon discloses the claimed melt index [0042].
Regarding claim 29, 32-35, and 37, Hanlon does not specifically disclose the properties of these claims. However, as set forth above, the film of Hanlon is prepared using the same monomers in the same amounts using a process that can be the same, i.e., extrusion. Further, the film of Hanlon is disclosed as having has enhanced optical clarity and impact/stress crack resistance (Example 1), which are analogous properties to the presently claimed properties of optical transmittance, haze, stress at break, and gloss. Thus, it is reasonable to conclude that the film of Hanlon would inherently exhibit these claimed properties or would have been obvious to one of ordinary skill in the art. See MPEP 2112, which states “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.” Further, also from MPEP 2112, “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Regarding claim 30, Hanlon discloses that the film has a Shore A hardness of less than 90 [0049].
Regarding claim 31, Hanlon discloses that the film is crosslinked ([0026].
Allowable Subject Matter
Claim 36 would be allowable if rewritten to overcome the claim objection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Table 7 shows that use of an EVA film, i.e., EVATANE 3345PV, would exhibit a water vapor transmission coefficient of 20,7000, which is outside of the claimed range.
Response to Arguments
Applicant's arguments filed May 04, 2026 have been fully considered but they are not persuasive.
The previous objections to the specification and claims have been overcome by the present amendment. Additionally, the rejection under 35 U.S.C. 112(b) has been overcome by the present argument.
The previous prior art rejections have been modified above to an obviousness rejection and incorporating KR ‘183 into the rejection of the claims. The arguments that Hanlon does not teach a solar cell and KR ‘183 does not teach the claimed film is acknowledged in the above rejection. Further, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The argument that there is no motivation to combine Hanlon with KR ‘183 is not persuasive. As set forth in the rejection above, Hanlon discloses an embodiment that has enhanced optical clarity and impact/stress crack resistance. KR ‘183 discloses a similar film, i.e., ethylene vinyl acetate copolymer, that is used as an encapsulant film for a solar cell [0010]. It would have been obvious to one of ordinary skill in the art to have used the film of Hanlon with a solar cell substrate, as taught in KR ‘183, motivated by the desire to obtain a solar cell having an encapsulant film that exhibits enhanced optical clarity and impact/stress resistance.
The argument that there would be no reasonable expectation of success at combining Hanlon and KR ‘183 because solar cell encapsulation imposes performance requirements that are composition-sensitive and not predictable from monomer identity alone is unpersuasive. The obviousness rejection does not bodily incorporate a specific composition or monomer identity from Hanlon into KR ‘183, but rather is based on incorporating the film of Hanlon that exhibits various desirable properties, such as impact/stress crack resistance, to a solar cell substrate, as taught in KR ‘183.
The arguments with respect to evidence of non-obviousness, i.e., unexpected results, is not persuasive because the claims are not commensurate in scope with the showing of the Tables in the specification. Specifically, the examples that embody the present invention in the various Tables are directed to terpolymers that include vinyl acetate, i.e., DV001A and DV001B, whereas the present claims recite that a vinyl acetate is an optional monomer (see claim 1, line 4).
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 Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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