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 .
Election/Restrictions
Newly submitted claims 8-10 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I – Claims 1 and 5-7.
Group II – Claims 8-10.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-10 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0129229).
Regarding claims 1 and 5, Wang discloses a packaging film article (0055) comprises film affixed to a paperboard (0118) wherein the film comprises from 50 to 85 wt% of ethylene based polymer such as ethylene octene copolymer, i.e. polyethylene, (0032-0034, 0040, 0125) and LDPE in an amount of 5 to 50 wt% (0043) wherein LDPE and polyisobutylene, i.e. polyisobutylene homopolymer, are equivalent and interchangeable to use (0042, 0124), therefore, it would have been obvious to one of ordinary skill in the art to use the polyisobutylene in an amount of 5 to 50 wt% as an alternative and to meet end users requirements. Wang discloses the thickness of the film is up to 30 mils (762 microns) and more specifically 0.25 mils to 4 mils (6-100 microns) (0047).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Although Wang does not disclose dried coated film, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Wang meets the requirements of the claimed article, Wang clearly meets the requirements of the present claims.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0129229) in view of Katzenstein et al. (US 2018/0363248).
Regarding claim 7, Wang discloses the article of claim 1 but does not disclose a dispersant and a coupling agent.
Katzenstein discloses paper coated with polyolefin film (title) wherein the film comprises dispersant and coupling agent to obtain thin coating of barrier layer (0010-0011, 0020).
It would have been obvious to one of ordinary skill in the art to use the coupling agent and dispersant of Katzenstein in the film of Wang to obtain thin coating of barrier layer.
Claim(s) 1 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dew (US 4996096) in view of Suskind (US 5540962).
Regarding claims 1 and 6, Dew discloses packaging film, i.e. article, (abstract) comprising a matte surface layer on a core layer (col. 1, lines 1-50) wherein the surface layer comprises 10 to 40% of polyisobutylene, i.e. polyisobutylene homopolymer, and 50 to 90 % of HDPE (col. 1, lines 15-20) wherein the film has a thickness of 0.1 to 0.3 mil (2.5-7.6 microns) (col. 1, lines 48-49). Dew does not disclose paper as a core layer.
Suskind discloses paperboard package coated with polymeric material (abstract) wherein paper is used as a substrate to obtain biodegradability properties (col. 1, lines 52-55).
It would have been obvious to use the paper of Suskind in the core layer of Dew to obtain biodegradability properties.
Although Dew in view of Suskind does not disclose dried coated film, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Dew in view of Suskind meets the requirements of the claimed film, Dew in view of Suskind clearly meets the requirements of the present claims.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dew (US 4996096) in view of Suskind (US 5540962) and further in view of Katzenstein et al. (US 2018/0363248).
Regarding claim 7, Dew in view of Suskind discloses the article of claim 1 but does not disclose a dispersant and a coupling agent.
Katzenstein discloses paper coated with polyolefin film (title) wherein the film comprises dispersant and coupling agent to obtain thin coating of barrier layer (0010-0011, 0020).
It would have been obvious to one of ordinary skill in the art to use the coupling agent and dispersant of Katzenstein in the film of Dew in view of Suskind to obtain thin coating of barrier layer.
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
The 35 U.S.C. §112, 2nd paragraph, rejection(s) of claims 5 and 6 have been withdrawn due to Applicant’s amendment.
Applicant argues that the mere listing of possible polymers does not suggest their interchangeability. Further applicant argues that polyisobutylene is mentioned along with LDPE in paragraph 0042 but LDPE is singled out in paragraph 0043, not to suggest its interchangeability with every other polymer on the laundry list, but rather to identify LDPE as a preferred second polymer to be used in combination with alpha olefin copolymer such as ethylene co octene copolymer. However, applicant own admitted that Wang discloses list of polymers including LDPE and polyisobutylene in paragraph 0042. Therefore, it is clear from paragraph 0042 of Wang that polymers are interchangeable. Although LDPE is single out in paragraph 0043 of Wang, there is nothing in paragraph 0043 of Wang that excludes having LDPE interchangeability and equivalence of polyisobutylene. Further, the rejection is based on 103 obviousness not 102.
Applicant argues that the examiner identifies a single instance in paragraph 0118 where the film could be used to form a laminate on paper or paperboard. However, the fact remains that Wang does disclose the film could be used to form a laminate on paper or paperboard.
Applicant points to examples in specification and argues that the examples discloses either polyethylenes or polyisobutylene copolymers exhibit unacceptable results. However, it is noted that the data is not commensurate with the scope of the present claims given that the present claims recite blend of polyisobutylene homopolymer and polyethylene while the examples only disclose either polyisobutylene copolymer or polyethylenes. Further, it is noted that the reference of Wang discloses blend of polyisobutylene homopolymer and polyethylene as presently claimed as explained above.
Regarding claim 7, applicant argues that Katzenstein’s process is very much like applicants’, whereas Wang’s blown film is quite different. However, it is noted that the claims are drawn to a product claims not process.
Applicant argues that Dew and Suskind does not disclose a coated paper article. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787