DETAILED ACTION
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 .
Examiner’s Note
The Examiner acknowledges the amendment of claims 1 & 12.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2 – 8, 10 – 14, & 16 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sheth (EP 0309073 B1) (1993).
With regard to claim 2, Sheth teaches two working examples of breathable, polyolefin (i.e., “thermoplastic”) films (examples 6), each of which have a ratio of the MD load at break to the CD load at break (i.e., MD/CD) of 2.5/7 = 0.36, which is within Applicant’s claimed range of about 1 to about 10.
Sheth discloses the film of example 6 has a MD/CD ratio of 0.36, while the present claims require a MD/CD ratio of “about 1 to about 10”
It is apparent, however, that the instantly claimed ratio of “about 1” and the disclosed ratio of 0.36 are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the MD/CD ratio disclosed by Sheth and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the MD/CD ratio of “about 1” recited in the present claims is but an obvious variant of the MD/CD ratio disclosed in Sheth, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Furthermore, Sheth teaches the breathable film has an Elmendorf tear strength in the machine direction of 1260, which is within Applicant’s claimed range of at least 5 g (Table II, Ex. 6 & 15). Furthermore, Sheth disclose the film of example 6 has a basis weight of 13.6 g/m2, which is within Applicant’s claimed range of “about 8 gsm to about 13 gsm (g/m2).” The term “about” includes values that are slightly above 13.0 gsm, including the value of 13.6 g/m2 taught by Sheth.
With regard to claim 3, example 15 taught by Sheth had a water vapor transmission rate of 800 g/m2/day @37.8°C, which is within Applicant’s claimed range of 500 – 10,000 g/24-hr/m2.
With regard to claim 4, example 6 had a MD load at break of 2.5 lbs/in (28 N/cm), which is within Applicant’s claimed range of at least 2.0 N/cm, and a CD load a break of 7 lb/in (79 N/cm), which is within Applicant’s claimed range of at least 0.7 N/cm.
With regard to claim 5, Sheth does not teach the opacity of the breathable film composite.
However, Applicant’s specification teaches the breathable film may be composed of a low-density polyethylene (LDPE) (paragraph [0060]) comprising 30 – 60% by weight of a filler, such as CaCO3 (see claim 8 & Applicant’s working examples). One of ordinary skill in the art would expect a breathable film of similar composition to inherently have similar opacity measurements.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 6, example 6 did not contain titanium oxide (pg. 7).
With regard to claim 7, example 6 contains LDPE (i.e., “an ethylene-based polymeric composition”) (pg. 7).
With regard to claim 8, the film of example 6 comprises about 50% by weight of CaCO3 (i.e., “filler”) (pg. 7).
With regard to claim 10, Sheth teaches the measurements of example 6 is a one film (i.e., a mono layer without the nonwoven layer).
With regard to claim 11, Sheth does not teach the machine-direction notched trapezoidal tear strength of the film.
However, Applicant’s specification teaches the breathable film may be composed of a low-density polyethylene (LDPE) (paragraph [0060]) comprising 30 – 60% by weight of a filler, such as CaCO3 (see Sheth’s claim 8 & Applicant’s working examples). One of ordinary skill in the art would expect a breathable film of similar composition to inherently have similar notched trapezoidal strength properties.
With regard to claim 18, Sheth teaches the breathable film as taught in the examples may be used as a house wrap (i.e., “article of manufacture”) (title).
With regard to claim 12, Sheth teach two working examples of a breathable, polyolefin (i.e., “thermoplastic”) films (example 8) comprising a nonwoven substrate (of example 7) and a breathable film (of example 6), wherein the breathable film of example 6 has a ratio of the MD load at break to the CD load at break (i.e., MD/CD) of 2.5/7 = 0.36, which barely outside Applicant’s claimed range of about 1 to about 10.
The film of example 6 has an Elmendorf tear strength in the machine direction of 1260, which is within Applicant’s claimed range of at least 5 g (Table II, Ex. 6).
Sheth discloses the breathable, thermoplastic film that has a basis weight of 13.6 g/m2 (example 6), while the present claims require a breathable, thermoplastic film that has a basis weight of 8 – 13 gsm (g/m2).
Although the claims recite the amount of 8 – 13 gsm, Applicant’s specification teaches breathable, thermoplastic films of their invention have a basis weight of less than or equal to 15 gsm (see specification, paragraphs [0008] – [0009], [00035], [0054], & working examples 1 – 11 (Table 1)). Applicant’s specification suggests the claimed basis weight of the film comprising an upper endpoint of 13 gsm is a preferred embodiment, but not is not a critical feature of the breathable film (see specification, paragraph [0054]).
Furthermore, Sheth disclose the film of example 6 has a basis weight of 13.6 g/m2, which is within Applicant’s claimed range of “about 8 gsm to about 13 gsm (g/m2).” The term “about” includes values that are slightly about 13.0 gsm, including the value of 13.6 g/m2.
With regard to claim 13, example 6 taught by Sheth had a water vapor transmission rate of 800 g/m2/day @37.8°C, which is within Applicant’s claimed range of 500 – 10,000 g/24-hr/m2.
With regard to claim 14, example 6 contained LDPE (i.e., “an ethylene-based polymeric composition”) (pg. 7).
With regard to claim 16, Sheth teaches the breathable film and the nonwoven fabric are joined by heat sealing via a heat sealable layer (i.e., “adhesive”) on the outer layer of the fabric (Sheth’s claim 3).
With regard to claim 19, Sheth teaches the laminated fabric and breathable film may be used as diapers, as well as medical and surgical surgery supplies (i.e., “personal hygiene”) (pg. 9).
With regard to claim 20, Sheth teaches the breathable film as taught in the examples may be used as a house wrap (i.e., “article of manufacture”) (title).
With regard to claim 21, Sheth teaches the laminated fabric and breathable film may be used for rain coats, shoe linings (i.e., “backing”) (pg. 9).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Sheth, as applied to claim 12 above, and further in view of Haas et al. (US 2006/0281379 A1).
With regard to claim 17, Sheth teaches the breathable film is laminated to the nonwoven fabric via heat sealing, not via ultrasonic bonds.
Hass et al. teach a breathable water-resistant fabric comprising a laminate composite of a plurality of fabric layers joined by adhesive, heat bonding, or by a way of ultrasonic lamination (paragraph [0020]).
Therefore, based on the teaching of Haas et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use any type of known adhesion method for joining the layers of the breathable laminate taught by Sheth, including adhesive, heat bonding, and ultrasonic (bonds) lamination because it is nothing more than simple substitution of one method of bonding for another to yield the predictable result of a bonded laminate.
Allowable Subject Matter
Claims 9 & 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 9, example 6 has with the measured properties shown are each a composite of a breathable film and example 8 is the breathable film of example 6 joined to a nonwoven fabric of example 7 (i.e., “multilayered”) (abstract, pg. 2, line 30). However, the sum of the breathable film and the nonwoven film have a basis weight far outside Applicant’s claimed range of about 8 gsm to about 13 gsm.
With regard to claim 15, Sheth teaches the breathable film of example 6 containing polyethylene, but not polypropylene. Sheth teaches in the broader teachings of the reference that the breathable film of the invention may be composed of polypropylene (pg. 3, lines 4 – 9). However, Sheth does not teach or suggest a polypropylene-based breathable film would inherently have the properties of a polyethylene-based breathable film of example 6 or the recited properties of claim 12. Therefore, Sheth does not teach a breathable film with the recited properties of claim 12 comprising polypropylene.
Response to Arguments
Applicant argues, “Independent claim 2 has been amended to specify that the claimed breathable, thermoplastic film has a ratio of the MD load at break to the CD load at break from about 1 to about 10… Similarly, independent claim 12 has been amended to specify that the claimed laminate comprises a breathable, thermoplastic film that has a ratio of the MD load at break to the CD load at break from about 1 to about 10… In contrast, Sheth does not describe such a film or a laminate comprising such a film. On page 2 of the pending Office Action, the Examiner points to Example 6 in Table II of Sheth, stating that the film of Example 6 has as MD/CD ratio of 0.36. In view of the amendment to claims 2 & 12, Example 6 of Sheth does not anticipate the amended claims” (Remarks, Pg. 4).
EXAMINER’S RESPONSE: In light of Applicant’s amendments of claims 1 & 12, the rejection over Sheth under 35 U.S.C. 102 (a)(1) has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view over Sheth under 35 U.S.C. 103.
The claims are rejected for obviousness over Sheth’s Ex. 6, which has a MD/CD ratio that is barely outside Applicant’s claimed lower endpoint of “about 1.” Where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties. In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Applicant argues, “Further, on page 2 of the pending Office Action, the Examiner points to Example 15 in Table II of Sheth, stating that the film of Example 15 has a MD/CD ratio of 1. However, Applicant respectfully asserts that Example 15 does not describe a ‘breathable, thermoplastic film’ with the claimed properties. Instead, Example 15 describes ‘CLAF-5001,’ which is a nonwoven fabric as stated at page 7, line 16 of Sheth – not the claimed breathable, thermoplastic film” (Remarks, Pgs. 4 – 5).
EXAMINER’S RESPONSE: Applicant’s argument is persuasive. The previous rejection over Sheth’s Example 15 is withdrawn.
Applicant argues, “Sheth does not teach or suggest a laminate comprising such a film. Example 6 in Table II of Sheth has a MD/CD ratio of 0.36. Further, Example 15 in Table II of Sheth does not teach or suggest a ‘breathable, thermoplastic film’ with the claimed MD/CD ratio. Again, Example 15 of Sheth provides ‘CLAF-5001’, which is a nonwoven fabric. Further, the teachings of Haas do not cure this deficiency” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Applicant argues, “Moreover, the combined teachings of Sheth/Haas simply suggest the type of conventional film manufacturing process, particularly in relation to film processing upon extrusion of the resin melt and subsequent orientation. For example, Sheth teaches that the roll on which the melt resin is cast is ‘cold’, and the web is pressed against it ‘to chill and solidify the film.’ (Sheth, page 4, lines 13 – 15). The roll may be at a temperature between 21°C and 54°C (Sheth, page 4, line 23). This is in contrast with the process captioned application, in which the temperature T1 of the chill roller is substantially higher.
“The cold film of Sheth is subsequently passed to a conventional MDO and/or TDO section for ‘orientation’, ‘using conventional equipment and processes following cooling of the precursor film’ (Sheth, column 5, lines 50 – 54). Interestingly, the document specifies that ‘cast films [as opposed to blown films] are preferably stretched in the transverse direction.’ (Sheth, page 4, lines 55 – 56; emphasis added). That is further significant departure from the process described in the specification of the captioned application, which mentions stretching cast extruded melts in the machine direction.
“Sheth also explains that ‘[t]he film can be heat set at any temperature above the stretching temperature and below the softening temperature to add stability.’ (Sheth, page 5, lines 20 – 22). From this, it is clear that stretching is performed below the crystallization temperature of the film and well within the molecular orientation regime of the film. This against represents a significant different with respect to the process described in the captioned application” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant argues a method of a manufacture. However, the claims are drawn to a film and a laminate comprising said film. Therefore, Applicant’s arguments regarding the inventor’s method of manufacturing are not pertinent to the pending claims.
Second, similar to Applicant’s disclosure, Sheth teaches stretching in both the machine and transverse directions.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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