DETAILED ACTION
Response to Amendment
The amendment and response filed on August 18, 2026 has been entered. Claims 1-20 are pending.
Election/Restrictions
Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 22, 2026. Claim 1-19 are directed to the elected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 16-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 16, line 2, the term “a similar polymer” is indefinite as to scope. Specifically, it is unclear whether “a similar polymer” includes polyethylene, polyolefin, or some other specific scope. Claims 17-19 are rejected as indefinite due to their dependence upon a rejected claim.
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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/039,280. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘280 overlap with the present claims. Specifically, the claims of US ‘280 are directed to a composition comprising a blend 20-95 wt% of a recyclable high density polyethylene having a density and melt index that overlaps with the present claims and 5-80 wt% of a virgin polyethylene having a density and melt index that overlaps with the present claims (claim 1). The claimed blended composition of US ‘280 has a melt index and molecular distribution that overlaps with the present claims (claims 1 and 9). 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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-3, 6, 9, and 12-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dow Global Technologies (WO2022/031398).
Regarding claim 1, Dow discloses a compounded polymer comprising (a) 25-99.5 wt% of virgin polyethylene having a melt index within the presently claimed range ([0097]-[0098], Table 2) and (b) 0.5-75 wt% of a post-consumer recyclate polyethylene (PCR PE) having a melt index from 0.3-3 dg/min (Table 6, blends 3 and 6; Table 7, blend 8). The PCR PE can be a high density polyethylene (Table 2). The compounded polymer can have a melt index and density within the presently claimed range (Table 6, blends 3 and 6; Table 7, blend 8). Dow measured the melt index at 190ᵒC under 2.16 kg load [0126]. The Mw/Mn of blends 3, 6, and 8 are not disclosed in Dow, but all of the polyethylene components that make up the blend have a Mw/Mn of at least 7.4. Thus, it logically flows that the blend formed from the polyethylene components all having a Mw/Mn of at least 7.4 would implicitly have a Mw/Mn above 6 (Tables 3, 6, and 7). Moreover, since Dow discloses a blend containing the same polyethylene blends as the present claims, it is reasonable to conclude that the blended composition of Dow would exhibit the same Mw/Mn as the present claims. See MPEP 2112, which states “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112 further states “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. ‘There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.’" In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Regarding claims 2 and 3, Dow discloses compounding the polymer using a twin-screw extruder at a temperature within the claimed ranges [0161]. However, Dow is silent as to mixing using a mechanical energy greater than 0.05 kW-hr/kg at a temperature over 125ᵒC. As set forth in MPEP 2113, "[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). Accordingly, it is reasonable to conclude that the claimed compounded composition is either the same or obvious as the composition disclosed in Dow, since Dow uses the same materials and extrusion process.
Regarding claim 6, blend 10 of Dow discloses an example wherein the density of component (a), component (b), and the compounded blend are within the presently claimed ranges.
Regarding claim 9, Dow discloses various food safe articles [0118].
Regarding claim 12, Dow discloses that the composition can be formed into a film having a thickness of 0.2 mils [0152].
Regarding claims 13-15, Dow does not specifically disclose the defect count of the polymeric film. However, since Dow discloses a blended composition containing the same components and processes the composition in the same way, i.e., compounding the polymer using a twin-screw extruder at a temperature within the range of claim 3 [0161], it is reasonable to conclude that this property limitation is inherent. See MPEP 2112, which states “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Claim Rejections - 35 USC § 103
Claim 4, 5, 7, 8, 10, 11, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Dow Global Technologies (WO2022/031398).
Regarding claims 4 and 5, the Mw/Mn of blends 3, 6, and 8 are not disclosed in Dow, but all of the polyethylene components that make up the blend have a Mw/Mn of at least 7.4. For example, blend 3 contains 47.05 wt% of a PE having a Mw/Mn of 12.9 and 47.05 wt% of a PE having a Mw/Mn of 27.9 (Tables 3 and 6). Thus, it logically flows that blend 3 would implicitly have a Mw/Mn above 12.9. Thus, it is reasonable to conclude that Dow overlaps with the claimed Mw/Mn ranges. Alternatively, it would have been obvious to one of ordinary skill in the art to have optimized the Mw/Mn range through routine experimentation. See MPEP 2144.05.
Regarding claims 7-8 and 10-11, Dow does not exemplify an embodiment having the claimed ratios virgin polyethylene to PCR HDPE of claim 7 and 8 or the embodiments of claims 10 and 11. However, these ratios and embodiments fall within the claimed ranges set forth in Dow. Thus, 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).
Regarding claims 16-19, Dow discloses that the composition can be formed into a film having a thickness of 0.2 mils [0152], but does not disclose the property that the film has at least 90% fewer gels than a similar polymer compounded with a single screw extruder. However, since Dow discloses a blended composition containing the same components and processes the composition in the same way, i.e., compounding the polymer using a twin-screw extruder at a temperature within the range of claim 3 [0161], it is reasonable to conclude that this property limitation is inherent. See MPEP 2112, which states “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977).
Response to Arguments
Applicant's arguments filed August 18, 2026 have been fully considered. In view of the present amendment and arguments the rejections of claims 12-15 under 35 U.S.C. 112(b) and claim 3 under 35 U.S.C. 112(d) are withdrawn. Additionally, the prior art rejection over Dow has been modified as detailed above to rely upon different examples/blends, particularly see paragraph #12 above.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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