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 .
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,539,694 (the ‘694 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the two applications cover patentably indistinct subject matter.
The claims of the present application cover a multilayer film comprising a plurality of layers including a thickest layer comprising 1 to 25 wt.% of a silica gel having an average particle size of 1 to 10 microns, and at least 50 wt.% of at least one polyolefin, wherein: (a) the thickest layer is voided by the silica gel; and (b) the multilayer film is a sequentially stretched biaxially oriented film having an opacity greater than 10 and a density of less than 1 g/cc (see pending claim 1). The polyolefin is predominantly polypropylene (see pending claim 2). The at least one polyolefin is at least one member selected from the group consisting of polypropylene, polyethylene, polypropylene/polyethylene copolymer, polypropylene/polyethylene/polybutylene terpolymer, butene-1 copolymer with ethylene and styrenic triblock (S-E/B-S) copolymer elastomers (see pending claim 3). The z-axis strength is greater than 100 g/in (see pending claim 5). The silica gel adsorbs less than 8% moisture at 80% relative humidity (see pending claim 9). A label comprising the multilayer film (see pending claim 13). A flexible package comprising the multilayer film (see pending claim 16).
The claims of the ‘694 patent cover the same/similar limitations, e.g. a multilayer film comprising a plurality of layers including a thickest layer comprising 1 to 25 wt. % of a silica gel having an average particle size of 1 to 10 microns, and at least 50 wt. % of at least one polyolefin, wherein: (a) the thickest layer is voided by the silica gel; (b) the multilayer film is a uniaxially oriented film having an opacity greater than 10, and a density of less than 1 g/cc (see claim 1); and that (c) the multilayer film has a shrinkage of at least 20% in a machine direction or a transverse direction of formation when heated to a temperature of 80° C to 100° C. The at least one polyolefin is at least one member selected from the group consisting polypropylene, polyethylene, polypropylene/polyethylene copolymer, polypropylene/polyethylene/polybutylene terpolymer, butene-1 copolymer with ethylene and styrenic triblock (S-E/B-S) copolymer elastomers (see claim 2). The z-axis strength is greater than 100 g/in (see claim 8). The silica gel adsorbs less than 8% moisture at 80% relative humidity (see claim 10). A label comprising the multilayer film (see claim 14). A flexible package comprising the multilayer film (see claim 17).
Claims 1-17 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of copending Application No. 18/630,691 (U.S. Pub No. 2025/0313000; hereinafter “copending Application ‘691”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the two applications cover patentably indistinct subject matter.
The claims of the present application cover a multilayer film comprising a plurality of layers including a thickest layer comprising 1 to 25 wt.% of a silica gel having an average particle size of 1 to 10 microns, and at least 50 wt.% of at least one polyolefin, wherein: (a) the thickest layer is voided by the silica gel; and (b) the multilayer film is a sequentially stretched biaxially oriented film having an opacity greater than 10 and a density of less than 1 g/cc (see pending claim 1). The polyolefin is predominantly polypropylene (see pending claim 2). The at least one polyolefin is at least one member selected from the group consisting of polypropylene, polyethylene, polypropylene/polyethylene copolymer, polypropylene/polyethylene/polybutylene terpolymer, butene-1 copolymer with ethylene and styrenic triblock (S-E/B-S) copolymer elastomers (see pending claim 3). The z-axis strength is greater than 100 g/in (see pending claim 5). The silica gel adsorbs less than 8% moisture at 80% relative humidity (see pending claim 9). A label comprising the multilayer film (see pending claim 13). A flexible package comprising the multilayer film (see pending claim 16).
The claims of the copending application ‘691 cover the same/similar limitations, e.g., a multilayer film comprising a plurality of layers including a thickest layer comprising 1 to 25 wt.% of a silica gel having an average particle size of 1 to 10 microns, and at least 50 wt.% of at least one polyolefin, wherein: (a) the thickest layer is voided by the silica gel; and (b) the multilayer film is a simultaneously stretched biaxially oriented film having an opacity greater than 10 and a density of less than 1 g/cc (see co-pending claim 1). The at least one polyolefin is at least one member selected from the group consisting of polypropylene, polyethylene, polypropylene/polyethylene copolymer, polypropylene/polyethylene/polybutylene terpolymer, butene-1 copolymer with ethylene and styrenic triblock (S-E/B-S) copolymer elastomers (see co-pending claim 2). The z-axis strength is greater than 100 g/in (see co-pending claim 7). The silica gel adsorbs less than 8% moisture at 80% relative humidity (see co-pending claim 10). A label comprising the multilayer film (see co-pending claim 15). A flexible package comprising the multilayer film (see co-pending claim 18).
The set of claims in the present application and the set of claims in the copending application ‘691 cover various patentably indistinct combinations of essentially the same limitations and thus are patentably indistinct subject matter. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Propst et al. (US 2022/0063251) that teaches a multilayer film includes a top layer comprising a blend of polyolefin and adsorbent silica (para [0018]). Surman et al. (US 5,514,460) that teaches a biaxially oriented film comprising a voided base layer comprising a propylene homopolymer and a particulate voiding agent, and a non-voided outer layer of propylene homopolymer, coextensive with the voided base layer, the particulate voiding agent having a mean particle size of not more than 2 µm (col. 1, lines 45-60).
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/YAN LAN/Primary Examiner, Art Unit 1782
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