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 .
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 1-4, 6-8, 11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-11, 16 and 17 of copending Application No. 18/374,910. Although the claims at issue are not identical, they are not patentably distinct from each other because current claims 13 and 30 corresponds to claim 13 of ‘910 where a film comprising a polymer composition comprising a polymer produced from ethylene, one or more branched vinyl ester monomers, and optionally, vinyl acetate, with an ethylene content of 40-99.9 wt%, and having a melt index of 0.1-100 g/10min. Current claim 2 corresponds to claim 24 of ’910 where the polymer composition further comprises a primary antioxidant, a secondary antioxidant, a light stabilizer, an UV absorber, an adhesive promoter, thermal stabilizers, plasticizers, rubbers, elastomers, and fillers. Current claim 3 corresponds to claim 25 of ’910 where the branched vinyl ester monomers having a general structure as recited in claim 3. Current claim 4 corresponds to claim 26 of ’910 where the polymer has a total comonomer content ranging from 10-60 wt%. Current claim 6 corresponds to claim 27 of ’910 where the polymer has a density of 0.8-1.3 g/cm3. Current claim 7 corresponds to combination of claims 29, 30, 32 and 33 of ’910 where the film has the following properties: a melting temperature, a haze, a water vapor transmission coefficient, a glass transition temperature a gloss at 45˚, and a gloss at 60˚. Current claim 11 corresponds to claims 16 and 17 of ’910 where an article comprising the film is provided between two substrates. Current claims 16 and 17 corresponds to claim 29 of ‘910 where the film has a water vapor transmission coefficient of less than 22000 µm.g/m².day and less than 20000 µm.g/m².day. Current claim 18 corresponds to claim 30 of ‘910 where the film has a glass transition temperature measured via loss modulus of less than -31 °C. Current claim 19 corresponds to claim 13 of ‘910 where the polymer composition comprises a polymer produced from ethylene, one or more branched vinyl ester monomers, and vinyl acetate. Current claim 20 corresponds to claim 29 of ‘910 where the film has a clarity of at least 91.8%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-8 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (US 2021/0102015 A1) in view of Kornacki et al. (US 2022/0243048 A1).
Claims 1, 8, 18 and 19: Hanlon teaches a film [0078] comprising a polymer produced from ethylene and one or more branched vinyl ester [0021]. Hanlon does not teach the melt index value and the glass transition value of the of the polymer. However, Kornacki teaches a thermoplastic polymer in a film [0144], wherein the thermoplastic polymer is an ethylene vinyl acetate copolymer {instant claim 19} having a melt index of less than 20 g/10 min {instant claims 8 and 18} (Table 1) and a glass transition temperature measured via loss modulus of below 0̊ C [0043]. Hanlon and Kornacki are analogous art because they are from the same field of endeavor that is the thermoplastic polymer containing layer/film art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the ethylene vinyl acetate copolymer of Kornacki with the invention of Hanlon, and the motivation for combining would be to, as Kornacki suggested, to enable easy processing of the material into a shaped article [0040].
Claim 2: Hanlon teaches the polymer further comprises a light stabilizer, a processing aid, a plasticizer, an antistatic agent and an adhesion promoting agent [0048] in an amount of 0.01 wt% - 70-wt% [0050].
Claim 3: Hanlon teaches the one or more branched vinyl ester has the following general structure:
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, wherein R16 and R17 have a combined carbon number of 6 or 7 [0026].
Claim 4: Hanlon teaches the polymer has a total comonomer content ranging from 0.01 wt% to 90 wt% [0034].
Claim 5: Hanlon teaches the polymer has a vinyl carbonyl monomer, (i.e., vinyl ester monomer) content ranging from 0.01 wt% to 90 wt% [0034].
Claim 6: Hanlon teaches the polymer has a density ranging from 0.75 g/cm3 to 1.3 g/cm3 [0064].
Claim 7: Hanlon teaches the polymer has a melting temperature value ranging from 20˚C to 150˚ [0057].
Claims 16 and 17: With respect to the claimed water vapor transmission coefficient value, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the water vapor transmission coefficient of the film, and the motivation would be to control breathability of the film. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 20: With respect to the claimed clarity value, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the clarity of the film, and the motivation would be to control breathability of the film. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (US 2021/0102015 A1) and Kornacki et al. (US 2022/0243048 A1) as applied to claim 1 above, and further in view of Shi et al. (US 2010/0272940 A1).
Hanlon and Kornacki teach the claimed invention as set forth above.
Claims 9 and 10: Hanlon does not teach the thickness of the film and how the film is made. However, Shi teaches a film fabricated from a polyethylene containing composition [0037], wherein the film has a thickness of 5-200 µm {instant claim 9} [0065] and can be formed by an extrusion method or injection method {instant claim 10} [0065]. Hanlon and Shi are analogous art because they are from the same field of endeavor that is the polyethylene film art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching, (i.e., thickness and method) of Shi with the invention Hanlon, and the motivation for combining would be as Shi suggested to provide packaging films and containers [0065].
Claims 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hanlon et al. (US 2021/0102015 A1) and Kornacki et al. (US 2022/0243048 A1) as applied to claim 1 above, and further in view of Lane et al. (US 2007/0231571 A1).
Hanlon and Kornacki teach the claimed invention as set forth above.
Claims 11-15: Lane teaches an adhesive base layer (B) is provided between an outer filmic layer (A) and a tackifier layer (C) forming a laminate {instant claims 11, 14 and 15} (Figs. 1 and 9), wherein the layers are coextruded {instant claim 12} ([0078] and [0079]) and the laminate is used as a food and beverage packaging {instant claim 13} [0113]. The outer filmic layer (A) and tackifier layer (C) meet the claimed two substrates. Hanlon and Lane are analogous art because they are from the same field of endeavor that is the thermoplastic polymer containing layer/film art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Lane with the invention of Hanlon, and the motivation would be to provide an article useful as a packaging and/or a container.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The reference of Kornacki teaches the claimed thermoplastic polymer of ethylene vinyl acetate copolymer having a melt index of less than 20 g/10 min (Table 1) and a glass transition temperature measured via loss modulus of below 0̊ C [0043].
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.
Correspondence
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BS
February 20, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785