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 .
Claim Objections
Claims 1, 16, 17, 20, 22, 24, 25, and 28 are objected to because of the following informalities:
In claim 1, line 13, the term “and” should be inserted after the phrase “LCBF > 0.0010;”.
In claims 16, 17, 20, and 22, line 1, a comma should be inserted after “claim 1” for consistency purposes (see other dependent claims).
In claims 24 and 25, line 2, the term “and” should be deleted.
In claim 28, line 14, the term “and” should be inserted after the phrase “LCBF > 0.0010;”.
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.
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Claims 1-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/553,478. US ‘478 discloses a biaxially oriented polyethylene film structure comprising at least three layers comprising a polyethylene composition that overlaps in scope with the present claims. Specifically, the presently claimed composition claims different combinations of properties/characteristics of the same properties and characteristics claimed in polyethylene composition claimed in US ‘478. For example, claim 1 is anticipated by the combination of claim numbers 1, 5, 7, 10, 11, 13, and 24 of US ‘478.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
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 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 1-17, 20-22, and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0017670).
Regarding claim 1, US ‘670 discloses a polyethylene composition comprising 5-80 wt% of a first ethylene copolymer and 5-80 wt% of a second ethylene copolymer (claim 1). US ‘670 discloses a molecular weight of the first copolymer that overlaps with the claimed range (claim 8). As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). US ‘670 discloses that the first ethylene copolymer has a higher weight average molecular weight than the second ethylene copolymer (claim 1). US ‘670 does not specifically disclose the SCB1/SCB2 ratio, but does disclose that SCB1 can be from 1-200 short chain branches/1000 Cs [0101] and SCB2 can be from 0-100 short chain branches/1000 Cs [0148]. Based on these SCB1 and SCB2 ranges, it would have been obvious to one of ordinary skill in the art to have selected a SCB1/SCB2 ratio of from 0.8-3.5, since discovering optimum or workable ranges through routine experimentation is not inventive. See MPEP 2144.05. For example, it would have been obvious for the skilled artisan to have selected the mid-point of each of the disclosed ranges for SCB1 and SCB2 and arrived at a SCB1/SCB2 ratio of 2, i.e. 100/50, which is essentially the mid-point of the claimed range of 0.8-3.5. US ‘670 discloses overlapping ranges for the claimed density of the polyethylene composition [0203], melt index [0015], melt flow ratio [0206], and Z-average molecular weight distribution [0209]. US ‘670 discloses a CDBI of 75 wt% or less [0175]. US ‘670 discloses a LCBF of either less than about 0.01 or from 0.01-3.0 ([0061], [0098], [0145]). US ‘670 does not disclose the temperature rising elution fractionation (CTREF) analysis of the polyethylene composition. However, since US ‘670 discloses a polyethylene composition that overlaps in scope with the claimed polyethylene composition, it is reasonable to conclude that the composition of US ‘670 would inherently exhibit the same or similar properties for this analysis. See MPEP 2112.
Regarding claim 2, as set forth in the above paragraph, US ‘670 does not disclose the temperature rising elution fractionation (CTREF) analysis of the polyethylene composition. However, since US ‘670 discloses a polyethylene composition that overlaps in scope with the claimed polyethylene composition, it is reasonable to conclude that the composition of US ‘670 would inherently exhibit the same or similar properties for this analysis. See MPEP 2112.
Regarding claims 3, 20, and 21, US ‘670 discloses an overlapping molecular weight distribution and Z-average molecular weight distribution ([0208], [0209]).
Regarding claims 4 and 22, US ‘670 discloses a Z-average molecular weight that overlaps with the claimed ranges (Tables 2-4).
Regarding claim 5, US ‘670 discloses a CDBI of 75 wt% or less [0175].
Regarding claims 6 and 7, as set forth above in the discussion of claim 1, the claimed SCB1/SCB2 ratios would have been obvious to one of ordinary skill in the art.
Regarding claims 8 and 9, US ‘670 discloses overlapping ranges for the claimed SCB ranges of the first and second copolymers ([0101], [0148]).
Regarding claims 10 and 11, US ‘670 discloses overlapping ranges for the density ranges of the first and second copolymers ([0107], [0151]).
Regarding claims 12 and 13, US ‘670 discloses overlapping ranges for the claimed melt index ranges of the first and second copolymers ([0109], [0152]).
Regarding claims 14 and 15, US ‘670 discloses overlapping ranges for the claimed molecular weight distribution ranges of the first and second copolymers ([0100], [0146]).
Regarding claim 16, US ‘670 discloses a density that overlaps with the claimed range [0203].
Regarding claim 17, US ‘670 discloses a melt index that overlaps with the claimed range [0015].
Regarding claims 24 and 25, US ‘670 discloses a LCBF of either less than about 0.01 or from 0.01-3.0 ([0061], [0098], [0145]).
Regarding claims 26 and 27, US ‘670 discloses that the first and second copolymer can be made with a single site catalyst ([0070], [0116]).
Regarding claim 28, US ‘670 discloses that the polyethylene film can be stretched in both the machine and transverse directions [0221] to form stretched, i.e., biaxially oriented, films [0227].
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0017670) in view of Kapur et al. (US Pub 2015/0284523).
US ‘670 discloses using a metallocene catalyst that can include hafnium ([0127]-[0130]) but US ‘670 does not disclose that polyethylene composition contains a trace amount, i.e., at least 0.05 ppm, of hafnium residues. US ‘523 discloses that it is known to have a trace amount, preferably less than 0.25 ppm, of hafnium residues remaining when a hafnium based metallocene catalyst is used in a polyethylene composition [0025]. It would have obvious to have used an amount of hafnium based metallocene catalyst in the polyethylene composition of US ‘670 such that a trace amount of hafnium remains, as taught by US ‘523, motivated by the desire to ensure that a sufficient amount of catalyst is present in the composition.
Claims 1-3, 5-21, and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0224012).
Regarding claim 1, US ‘012 discloses a polyethylene composition comprising 90-30 wt% of a first ethylene copolymer and 10-70 wt% of a second ethylene copolymer (claim 1). Regarding claim 24, US ‘012 discloses a molecular weight of the first copolymer that overlaps with the claimed range [0042]. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). US ‘012 discloses that the first ethylene copolymer has a higher weight average molecular weight than the second ethylene copolymer ([0042], [0061]). US ‘012 discloses the SCB1/SCB2 ratio is greater than 2.0 (claim 1), which overlaps with the claimed range of 0.8-3.5. US ‘012 discloses that the density (claim 1), melt index (claim 2), melt flow ratio (claim 1), and Z-average molecular weight distribution (claim 1, Tables 2-4 (Mz/Mn) ranges overlap with the claimed ranges. US ‘012 discloses a CDBI of 75 wt% or less [0046]. US ‘012 discloses a LCBF of less than about 0.01 [0101]. US ‘012 does not disclose the temperature rising elution fractionation (CTREF) analysis of the polyethylene composition. However, since US ‘012 discloses a polyethylene composition that overlaps in scope with the claimed polyethylene composition, it is reasonable to conclude that the composition of US ‘012 would inherently exhibit the same or similar properties for this analysis. See MPEP 2112.
Regarding claim 2, as set forth in the above paragraph, US ‘012 does not disclose the temperature rising elution fractionation (CTREF) analysis of the polyethylene composition. However, since US ‘670 discloses a polyethylene composition that overlaps in scope with the claimed polyethylene composition, it is reasonable to conclude that the composition of US ‘012 would inherently exhibit the same or similar properties for this analysis. See MPEP 2112.
Regarding claims 3, 20, and 21, US ‘670 discloses an overlapping molecular weight distribution and Z-average molecular weight distribution (claim 1, Mz/Mn (Tables 2-4)).
Regarding claim 5, US ‘012 discloses a CDBI of 75 wt% or less [0046].
Regarding claims 6 and 7, the claimed SCB1/SCB2 ratios overlap with the claimed ranges (claim 1).
Regarding claims 8 and 9, US ‘012 discloses overlapping ranges for the claimed SCB ranges of the first and second copolymers ([0034], [0053]).
Regarding claims 10 and 11, US ‘012 discloses overlapping ranges for the density ranges of the first and second copolymers (claim 1).
Regarding claims 12 and 13, US ‘012 discloses overlapping ranges for the claimed melt index ranges of the first and second copolymers (claim 1).
Regarding claims 14 and 15, US ‘012 discloses overlapping ranges for the claimed molecular weight distribution ranges of the first and second copolymers ([0043], [0062]).
Regarding claim 16, US ‘012 discloses a density that overlaps with the claimed range (claim 1).
Regarding claim 17, US ‘012 discloses a melt index that overlaps with the claimed range [0080].
Regarding claims 18 and 19, US ‘012 discloses a melt flow ratio of 22-50 (claim 1), which overlaps with the claimed ranges.
Regarding claims 24 and 25, US ‘012 discloses US ‘012 discloses a LCBF of less than about 0.01 [0101].
Regarding claims 26 and 27, US ‘012 discloses that the first and second copolymer can be made with a single site catalyst ([0031], [0050]).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0224012) in view of Kapur et al. (US Pub 2015/0284523).
US ‘012 discloses a metallocene catalyst ([0094], [0097) but does not disclose specifically disclose using a hafnium based metallocene catalyst in an amount such that a trace amount, i.e., at least 0.05 ppm, of hafnium residues remain in the polyethylene composition. US ‘523 discloses it is known in the polyethylene composition art to use hafnium based metallocene catalysts in an amount that results in a trace amount, preferably less than 0.25 ppm, of hafnium residues remaining [0025]. It would have obvious to have used an amount of hafnium based metallocene catalyst in the polyethylene composition of US ‘012 such that a trace amount of hafnium remains, as taught by US ‘523, motivated by the desire to ensure that a sufficient about of catalyst is present in the composition.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0224012) in view of Kongaganti et al. (US Pub 2021/0032450).
US ‘012 discloses that the polyethylene film can be stretched ([0127], [0168]), i.e., oriented, but does not specifically disclose that the polyethylene film is biaxially oriented. US ‘450 discloses that it is known in the polyethylene film art to form film structures to biaxially orient polyethylene film structures in order to produce a film suitable for use as a packaging films [0274]. It would have been obvious to one of ordinary skill in the art to have biaxially oriented film of US ‘012, based on the disclosure that the film can be stretched and the teaching of US ‘450 that it is known to biaxially stretch similar polyethylene film structures in order to obtain a film structure useful as a packaging film, as disclosed in US ‘450.
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