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 .
Election/Restrictions
Applicant’s election without traverse of Group III and species directed to a solar cell in the reply filed on November 07, 2025 is acknowledged.
Claims 16-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 13-15 and 24-33 are deemed to be directed to the elected invention.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0044] lists examples of branched vinyl ester monomers. However, the second monomer (see below) is not a branched monomer. Clarification/correction is requested.
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Also, in paragraph [0093] the term “comonomer” is misspelled.
Claim Objections
Claims 13, 15, 16, and 24 are objected to because of the following informalities:
In claim 13, line 4, the term “wt%” should be inserted after the term “40” to be consistent the claim terminology used in claim 26. This suggestion is also applicable to claim 15 (line 4) and claim 16 (line 4).
In claim 24, the terms “optionally, at least one” in line 10 is redundant with the terms “one or more” in lines 1 and 2.
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.
Claim 26 is 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.
The limitation of “the polymer has a total comonomer content ranging from 10 wt% to 60 wt%” is indefinite in that it is unclear which monomers that form the copolymer/terpolymer are included in this claimed range. Specifically, claim 26 depends upon claim 13, which requires that the polymer include an ethylene monomer present in an amount of 40-99.9 wt%, at least one branched vinyl ester monomer(s), and, optionally, a vinyl acetate monomer. It is unclear if the weight percentage in claim 26 excludes the polyethylene monomer, which appears to be the intention based on the specification disclosure in paragraph [0093], but is contrary to the literal claim language.
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 13, 15, and 24-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No 18/374,926. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims overlap or only slightly vary in scope of the claims of US ‘926.
Claim 13 is directed to an article comprising a substrate and a film formed from a polymer composition comprising a polymer produced from ethylene and at least one branched vinyl ester, wherein the ethylene content is from 40-99.9 wt% and the polymer has a melt index from 0.1-100 g/10min. US ‘926 claims the film formed from the claimed polymer composition (claim 1) and further claims that the film is provided on a substrate (claim 11).
Claim 15 is directed to a solar cell encapsulant comprising a film formed from a polymer composition comprising a polymer produced from ethylene and at least one branched vinyl ester, wherein the ethylene content is from 40-99.9 wt% and the polymer has a melt index from 0.1-100 g/10min. The term “solar cell encapsulant” does not require a solar cell but rather only requires a film that is capable of functioning as an encapsulant film for a solar cell. US ‘926 claims that the film has high clarity (claim 20); thus, the film would be capable of functioning as an encapsulant film for a solar cell.
The dependent claims are claimed in US ‘926. For example, the additives of claim 24 is claimed in US ‘926 (claim 2) and the specific branched vinyl ester monomer having general structure (II) of claim 25 is claimed in US ‘926 (claim 3).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is 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.
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 high clarity.
This is a provisional nonstatutory double patenting rejection.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13, 15, 24, 25, 27, 28, 30, and 31 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hanlon et al. (U.S. Pub. 2021/0102014).
Regarding claim 13, 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.
Regarding claim 15, the term “solar cell encapsulant” does not require a solar cell but rather only requires a film that is capable of functioning as an encapsulant film for a solar cell. Hanlon discloses an embodiment that has enhanced optical clarity and impact/stress crack resistance; thus, the film would be capable of functioning as an encapsulant film for a solar cell.
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 27, Hanlon discloses the claimed density [0052].
Regarding claim 28, Hanlon discloses the claimed melt index [0042].
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].
Claim Rejections - 35 USC § 102/103
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 29, 32, and 33 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hanlon et al. (U.S. Pub. 2021/0102014).
Hanlon does not specifically disclose the properties of claims 29, 32, and 33. 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. With respect to the alternative rejection under 35 U.S.C. 103, MPEP 2112 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.”
Claim Rejections - 35 USC § 103
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (U.S. Pub. 2021/0102014).
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (U.S. Pub. 2021/0102014) in view of KR 101699183.
Hanlon does not claim the film being used with 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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781