DETAILED ACTION
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
This application contains claims directed to more than one patentably distinct species. The species are independent or distinct because the different species have mutually exclusive characteristics. In addition, these species are not obvious variants of each other based on the current record.
The species of the extruded film are a) one of claim 1 and b) one of claim 4, c) one of claim 7, d) one of claim 10, e) one of claim 13.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Currently, no claim is generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
Each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search; the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Daniel Schlue on 7/22/2026 a provisional election was made without traverse to prosecute the species of the film of claim 1, claims 1-3. Affirmation of this election must be made by applicant in replying to this Office action. Claims 4-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 objected to because of the following informalities: R2 in the formula in page 1 should be R2. Appropriate correction is required.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alvarez (US 2020/0231792) in view of Jakupca et al (US 2014/0329943).
Alvarez teaches a blown film formed by extruding a composition comprising LDPE, 1000ppm of stabilizer IRGAFOS 168, 1000ppm of PEG 3350 (n=76) [0044, 0075, example 46D]. The composition does not contain a fluoro-compound.
Alvarez does not teach a second component like claimed.
However, Jakupca teaches a stabilizer
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wherein Y is derived from PPG 400, R1, R2, R3 and R4 are derived from a mixture of lauryl alcohol and myristyl alcohol, m is 6-7, Mn of 9111, i.e. x is about 13 (example 2, table 2). Detailed calculation is available upon request. This stabilizer has a lower migration in polyolefin than IRGAFOS 168 (table 10, 0002, 0008). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to replace IRGAFOS 168 with the stabilizer of Jakupca to reduce migration. Jakupca teaches the stabilizer can be used in an amount of 250-10000ppm [0091].
Alvarez is silent with respect to the claimed properties of the film. However, the combination of teachings from Alvarez and Jakupca have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 of copending Application No.18/381,882. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘882 claims an extruded film made by a process of manufacturing a film using a composition of polyolefin, a first component of a polyethylene glycol and a second component of a phosphorus compound.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
Prosecution Insights