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 I (claims 1-36) in the reply filed on November 19, 2025 is acknowledged. Claims 37-47 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 8 and 9 are objected to because of the following informalities. A comma should be inserted after the term “LCBF” for consistency purposes (see claim 7).
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 1-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/550,421 in view of Kongaganti et al. (US Pub 2021/0032450). US ‘421 discloses the claimed polyethylene composition and a biaxially oriented film formed from the polyethylene composition. US ‘421 does not claim a film structure comprising at least three layers comprising the polyethylene composition. US ‘450 discloses that it is known in the biaxially oriented polyethylene art to form film structures having at least three layers, such as a skin/core/skin arrangement [0383]. US ‘450 discloses that these film structures are useful in various applications, such as packaging films [0274]. It would have been obvious to one of ordinary skill in the art to have used the claimed biaxially oriented film of US ‘421 in a three layer film structure, such as a skin/core/skin arrangement, motivated by the desire to obtain a film structure useful as a packaging film, as disclosed in US ‘450.
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 1-15 and 17-34 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 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] and melt index [0015]. 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 polyethylene film can be stretched in both the machine and transverse directions [0221] to form stretched, i.e., biaxially oriented, films [0227].
Regarding claim 2, US ‘670 discloses the polyethylene comprises copolymerized ethylene and 1-octene [0073].
Regarding claims 3, 10, 18, and 19, US ‘670 discloses an overlapping molecular weight distribution and Z-average molecular weight distribution ([0208], [0209]).
Regarding claims 4 and 20, US ‘670 discloses a Z-average molecular weight that overlaps with the claimed ranges (Tables 2-4).
Regarding claims 5 and 6, US ‘670 discloses a CDBI of 75 wt% or less [0175].
Regarding claims 7-9, US ‘670 discloses US ‘670 discloses a LCBF of either less than about 0.01 or from 0.01-3.0 ([0061], [0098], [0145]).
Regarding claims 11 and 17, US ‘670 discloses a melt flow ratio of ≤40 [0206], which overlaps with the claimed ranges.
Regarding claims 12 and 13, 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 14, US ‘670 discloses a density that overlaps with the claimed range [0203].
Regarding claim 15, US ‘670 discloses a melt index that overlaps with the claimed range [0015].
Regarding claims 21 and 22, 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 claim 23, US ‘670 discloses that the density of the second copolymer is higher than the density of the first copolymer (claims 11 and 12).
Regarding claim 24, US ‘670 discloses a molecular weight of the first copolymer that overlaps with the claimed range (claim 8).
Regarding claims 25 and 26, US ‘670 discloses overlapping ranges for the claimed melt index ranges of the first and second copolymers ([0109], [0152]).
Regarding claims 27 and 28, US ‘670 discloses overlapping ranges for the claimed SCB ranges of the first and second copolymers ([0101], [0148]).
Regarding claims 29 and 30, US ‘670 discloses overlapping ranges for the claimed molecular weight distribution ranges of the first and second copolymers ([0100], [0146]).
Regarding claims 31 and 32, US ‘670 discloses overlapping ranges for the density ranges of the first and second copolymers ([0107], [0151]).
Regarding claims 33 and 34, these claims are identical to claim 1 except the inclusion of 25 wt% or less (claim 33) and 5 wt% or less (claim 34) of an additional polyethylene polymer. Since “or less” reads on zero percent, these claims are deemed obvious for the same reasons as set forth above in claim 1.
Claims 35 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US Pub 2020/0017670) in view of Kongaganti et al. (US Pub 2021/0032450).
Regarding claim 35, as set forth above, US ‘670 discloses the claimed biaxially oriented film structure. US ‘670 does not specifically disclose a skin/core/skin arrangement. US ‘450 discloses that it is known in the biaxially oriented polyethylene art to form film structures having at least three layers, such as a skin/core/skin arrangement [0383]. US ‘450 discloses that these film structures are useful in various applications, such as packaging films [0274]. It would have been obvious to one of ordinary skill in the art to have used the biaxially oriented film of US ‘670 in a three-layered skin/core/skin arrangement, motivated by the desire to obtain a film structure useful as a packaging film, as disclosed in US ‘450.
Regarding claim 36, US ‘450 disclosed examples where the core comprise 80 wt% of the film structure (Table 6).
Claims 1-3, 5-19, and 21-36 are 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).
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). 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. 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 melt index (claim 2) and density ranges overlap with the claimed ranges. 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.
Regarding claim 2, US ‘012 discloses the polyethylene comprises copolymerized ethylene and 1-octene (claim 16).
Regarding claims 3, 10, 18, and 19, US ‘012 discloses an overlapping molecular weight distribution and Z-average molecular weight distribution (claim 1, Tables 2-4 (Mz/Mn)).
Regarding claims 5 and 6, US ‘012 discloses a CDBI of 75 wt% or less [0046].
Regarding claims 7-9, US ‘012 discloses US ‘012 discloses a LCBF of less than about 0.01 [0101].
Regarding claims 11, 16, and 17, US ‘012 discloses a melt flow ratio of 22-50 (claim 1), which overlaps with the claimed ranges.
Regarding claims 12 and 13, 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 14, US ‘012 discloses a density that overlaps with the claimed range (claim 1).
Regarding claim 15, US ‘012 discloses a melt index that overlaps with the claimed range [0080].
Regarding claims 21 and 22, the claimed SCB1/SCB2 ratios overlap with the claimed ranges (claim 1).
Regarding claim 23, US ‘012 discloses that the density of the second copolymer is higher than the density of the first copolymer (claim 1).
Regarding claim 24, US ‘012 discloses a molecular weight of the first copolymer that overlaps with the claimed range [0042].
Regarding claims 25 and 26, US ‘012 discloses overlapping ranges for the claimed melt index ranges of the first and second copolymers (claim 1).
Regarding claims 27 and 28, US ‘012 discloses overlapping ranges for the claimed SCB ranges of the first and second copolymers ([0034], [0053]).
Regarding claims 29 and 30, US ‘012 discloses overlapping ranges for the claimed molecular weight distribution ranges of the first and second copolymers ([0043], [0062]).
Regarding claims 31 and 32, US ‘012 discloses overlapping ranges for the density ranges of the first and second copolymers (claim 1).
Regarding claims 33 and 34, these claims are identical to claim 1 except the inclusion of 25 wt% or less (claim 33) and 5 wt% or less (claim 34) of an additional polyethylene polymer. Since “or less” reads on zero percent, these claims are deemed obvious for the same reasons as set forth above in claim 1.
Regarding claim 35, as set forth above, US ‘012 as modified by US ‘450 suggests the claimed biaxially oriented film structure. US ‘012 does not specifically disclose a skin/core/skin arrangement. US ‘450 discloses that it is known in the biaxially oriented polyethylene art to form film structures having at least three layers, such as a skin/core/skin arrangement [0383]. US ‘450 discloses that these film structures are useful in various applications, such as packaging films [0274]. It would have been obvious to one of ordinary skill in the art to have used the biaxially oriented film of US ‘012 as modified by US’ 450 in a three-layered skin/core/skin arrangement, motivated by the desire to obtain a film structure useful as a packaging film, as disclosed in US ‘450.
Regarding claim 36, US ‘450 disclosed examples where the core comprise 80 wt% of the film structure (Table 6).
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