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 .
Claim Status
Claims 3-4 and 10-20 are currently pending in this application. New dependent claims 15-20 were added.
Claims 12-14 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Applicant is kindly reminded to correct the claim status of those claims.
Response to Arguments
Applicant's arguments with regard to rejection of present claim(s) 3-4 and 10 under 35 U.S.C. 103 as being unpatentable over GB 2406095 to Yan have been fully considered but they are not found persuasive for at least the following reasons.
Applicant contends that (1) Yan does not recognize that Y/X ratio as a result effective variable for achieving retention and stabilization of an oil film and/or the slip-down property for oil-in-water dispersion-type contents through oil film formation (remarks, page 6, last para); and (2) the instantly claimed Y/X ratio possess superior results in terms of slip-down properties, in this regard, applicant points to the examples and comparative examples as shown in Tables 3 and 4 of the present specification (remarks, page 7, last two para).
In response to contention (1), applicant's arguments are not found persuasive. It has long been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05. As MPEP2144.05 (ID) (B) states, "a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation". Contrary to applicant's assertion, there is no requirement that prior art must teach or recognize the particular parameter (in this case, for achieving retention and stabilization of an oil film and/or the slip-down property for oil-in-water dispersion-type contents through oil film formation) as result-effective variable for achieving the same result/property as applicant intended and required by the claimed invention.
In response to contention (2), all the examples and data of Tables 3 and 4 of instant application have been further carefully studied and fully considered. Table 4 is reproduced below for easy reference.
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It is understood, as pointed by the applicant, that Examples 1-28 include fillers and meet the claimed Y/X ratio, all have average residual liquid ratios and appearance evaluations with A, B and C scores. Experimental Examples 29-33, which either do not have a filler, do not meet the claimed Y/X ratio, or both, and have average residual liquid ratios and appearance evaluations with D scores, which are the worst scores.
However, the available data is not seen as being sufficient to support applicant's assertion for the asserted unexpected properties. The results in Tables 3 and 4 have been carefully studied and it is noted the data show that the tested embodiments containing filler and having a Y/X ratio within the claimed range of 0.4–8.0 μm⁻¹ generally exhibit better slip-down performance than Comparative Examples 29–33; however, the data do not establish criticality of the specifically claimed range. Although Comparative Example 33 has a Y/X ratio of 0.39 μm⁻¹ and Comparative Example 32 has a Y/X ratio of 12.5 μm⁻¹, both exhibiting poor performance, these comparative examples also differ from the inventive examples in other relevant parameters, including filler type, particle diameter, filler amount, and resulting surface characteristics, such that the inferior performance cannot be attributed specifically to the Y/X ratio falling outside the claimed range. The data show a general relationship between filler-induced surface morphology and slip-down performance, but are not sufficient to evidence the criticality of the instantly claimed range.
In summary, in the present case, for the reasons discussed above, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. Applicant has not demonstrated sufficient objective evidence to show the criticality of the claimed range.
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
The rejections below are updated to address the present claims.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-4 and 10 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2406095 to Yan.
Regarding independent claim 3, Yan teaches a packaging material film (page 1, lines 4-20, page 5, lines 1-6, the packaging film of Yan) comprising:
- a first resin layer containing a polyolefin resin and fillers (page 5, lines 1-6, the film layer containing a polyethylene resin and anti-blocking agent fillers), meeting the claimed limitations. Yan teaches the filler particles protrude on the film surface forming protruded spots, enhancing the roughness of the film surface (page 1, lines 30-34, page 4, lines 1-12, and page 4, lines 29-32).
Yan does not specifically teach its film having a ratio Y/X of a surface area ratio Y of a surface of the first resin layer with respect to an arithmetic mean height Sa X µm of the surface of the first resin layer is 0.4 to 8.0 µm-1, as instantly claimed. It is noted that such Y/X ratio is a parameter relating to the degree of roughness and roughness geometry of the film surface.
In the present case, it is noted that Yan teaches the filler particles protrude on the film surface forming protruded spots, enhancing the roughness of the film surface (page 1, lines 30-34, page 4, lines 1-12, and page 4, lines 29-32). Yan further teaches the filler particle’s size, the filler particle’s shape, and total number of the filler particles included/ protruded over the film surface are result effective variables that affect the film surface properties and the degree of surface roughness of the film (page 4, lines 1-12 and page 9, lines 3-14). In particular, Yan teaches the larger the particle size, of which the more height of the particles protruding above the surface, the rougher the film surface; and the larger the number of the particles included/ protruded over the film surface, the rougher the film surface (page 4, lines 1-12).
It would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the filler particle’s size, the filler particle’s shape, and total number of the filler particles included/ protruded over the film surface over the film surface (i.e., result effective variables) through routine experimentation in order to achieve the desired properties of the packaging material film once produced (i.e., the desired degree of surface roughness and desired roughness geometry of the film), of which the arithmetic mean height Sa X of the surface of the first resin layer can be calculated, and the ratio of such arithmetic mean height Sa X over the surface area Y of the surface of the first resin layer can then be calculated, which would have arrived at a workable ratio of Y/X that falls within the broad rang as instantly claimed, i.e., 0.4 to 8.0 µm-1 . It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPPE 2144.05.
Regarding claim 4, Yan does not specifically teach projected area ratio of protrusions formed by the fillers on the surface of the first resin layer, as instantly claimed. It is noted that such projected area ratio of protrusions is a parameter relating to the filler particles size, and the number of the protruded particles, and the degree of protrusion.
In the present case, it is noted that Yan teaches the filler particles protrude on the film surface forming protruded spots, enhancing the roughness of the film surface (page 1, lines 30-34, page 4, lines 1-12, and page 4, lines 29-32). Yan further teaches the filler particle’s size, the filler particle’s shape, and total number of the filler particles included/ protruded over the film surface are result effective variables that affect the film surface properties and the degree of surface roughness of the film (page 4, lines 1-12 and page 9, lines 3-14). In particular, Yan teaches the larger the particle size, of which the more height of the particles protruding above the surface, the rougher the film surface; and the larger the number of the particles included/protruded over the film surface, the rougher the film surface (page 4, lines 1-12).
It would have been obvious to a person of ordinary skill in the art to adjust the filler particle’s size, the filler particle’s shape, and total number and the degree of the filler particles included/protruded over the film surface over the film surface (i.e., result effective variables) through routine experimentation in order to achieve the desired properties of the packaging material film once produced (i.e., the desired degree of surface roughness and desired roughness geometry of the film), of which the projected area ratio of protrusions formed by the fillers on the surface of the first resin layer can be calculated, which would have arrived at a workable projected area ratio of protrusions formed by the fillers on the surface of the first resin layer that falls within the broad rang as instantly claimed, i.e., 8 to 45%. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPPE 2144.05.
Regarding claim 10, Yan teaches suitable fillers include zeolite which is a porous filler (page 8, lines 16-20, and Table 1, zeolite is porous filler having internal porosity of which the specific surface areas (N2) is of 85 m2/g), meeting the claimed limitations.
Regarding claims 15 and 18, Yan teaches suitable fillers include talc, silica (page 2, lines 20-21), meeting the claimed limitations.
Regarding claims 16 and 19, Yan teaches suitable fillers include talc, silica (page 2, lines 20-21), meeting the claimed limitations. Yan teaches as in one of its embodiments that suitable fillers having average particle diameter of 5 µm (page 6, Table 1), which falls within the instantly claimed range of 3 to 30 µm of claims 16 and 19. 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). MPEP 2144.05.
Regarding claims 17 and 20, Yan teaches the filler particles protrude on the film surface forming protruded spots, enhancing the roughness of the film surface (page 1, lines 30-34, page 4, lines 1-12, and page 4, lines 29-32). Yan further teaches the filler particle’s size, the filler particle’s shape, and total number of the filler particles included/ protruded over the film surface are result effective variables that affect the film surface properties and the degree of surface roughness of the film (page 4, lines 1-12 and page 9, lines 3-14). In particular, Yan teaches the larger the particle size, of which the more height of the particles protruding above the surface, the rougher the film surface; and the larger the number of the particles included/ protruded over the film surface, the rougher the film surface (page 4, lines 1-12). That is, Yan recognizes the underlying variables, i.e., the filler particles size, shape, and number as result effective variable, for controlling the filler surface roughness.
It would have been obvious to a person of ordinary skill in the art to adjust the filler particle’s size, the filler particle’s shape, and total number and the degree of the filler particles included/protruded over the film surface over the film surface (i.e., result effective variables) through routine experimentation in order to achieve the desired properties of the packaging material film once produced (i.e., the desired degree of surface roughness and desired roughness geometry of the film), to obtain a workable or desired surface roughness, including a workable arithmetic mean height Sa of the surface of the first resin layer that falls within the broad rang as instantly claimed, i.e., 0.1 to 2.0 µm, as in claims 17 and 20. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPPE 2144.05.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yan as applied to claim 3 above, further in view of EP 0092318 to Janac et al. (“Janac”).
The limitations of claim 3 are taught by Yan as discussed above.
Regarding claim 11, Yan does not specially teach the first resin layer contains an elastomer component.
In the same field of film/packaging film, Janac teaches a blend of polyolefin (i.e., polyethylene) and elastomer component for making film that provides high tear strength and high impact resistance (page 1, lines 11-22, page 4, lines 10-26).
It would have been obvious to one of ordinary skill in the art to modify the packaging material film of Yan in view the teachings of Janac, to include in the first resin layer of the film of Yan (that containing a polyolefin resin and fillers) with the suitable elastomer component as taught by Janac, to provide a packaging material film with good tear strength and good impact resistance as taught by Janac (page 1, lines 11-22, page 4, lines 10-26), which would have predictably arrived at a satisfactory packaging material film that is the same as instantly claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
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