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 .
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.
Election/Restrictions
Applicant’s election of Group I in the reply filed on 05 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 31 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05 March 2026.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Applicant is advised that should claim 22 be found allowable, claim 32 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-30 and 32-35 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.
Claims 1, 2, 5, 6, 23, 26, 27, and 35 contains the trademark/trade name IMPEDE®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b). See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the predominant material of layer B2 and, accordingly, the identification/description is indefinite. Claims 1-30 and 32-35 are rejected as indefinite because each of these claims contains the term IMPEDE® directly and/or due to dependency from a claim containing the term.
Claim 19 recites the limitation "said nucleating agent" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is noted that claim 19 depends from claim 10 while the nucleating agent is first referred to in claim 18.
The term "rigid" in claim 32 is a relative term which renders the claim indefinite. The term "rigid" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term "rigid" renders the stiffness of the container of claim 32 indefinite.
Claim Rejections - 35 USC § 102
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.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shah (US 5,482,771).
Shah is directed to a thermoplastic film for packaging having high moisture barrier characteristics (column 1, lines 11-13). The thermoplastic film is a coextruded film (column 2, lines 14-18). The film has at least three layers (Figures 1-3).
The limitations of claim 6 are satisfied since the only non-optional limitations for the coextruded polymeric film of claim 6 are: (i) an outside layer stack comprising one or more layers, (ii) a core layer stack comprising one or more layers, and (iii) an inside layer stack comprising one or more layers.
Claim Rejections - 35 USC § 102 / 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.
Claims 1-5, 7, 8, 10, 11, 17, 20-29, 32, and 35 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shah (US 5,482,771).
Shah is directed to a thermoplastic film for packaging food having high moisture barrier characteristics (column 1, lines 11-29). The thermoplastic film is a coextruded film (column 2, lines 14-18). In one embodiment, the film has the generalized structure: outer layer/moisture barrier layer/intermediate layer/core layer/intermediate layer/moisture barrier layer/outer layer, wherein the core layer comprises an oxygen barrier material (column 5, lines 31-36). The oxygen barrier material of the core layer may be ethylene vinyl alcohol (column 5, lines 37-39). The outer layers preferably comprise an ethylene propylene copolymer (column 4, lines 48-61 and column 5, lines 40-41). The intermediate layers preferably comprise a propylene polymer, such as Exxon® PD 4062 E7 (column 5, lines 42-50). Exxon® PD 4062 E7 is a propylene homopolymer (column 4, lines 37-47). The moisture barrier layers preferably comprise a propylene polymer and a hydrocarbon resin (column 5, lines 51-55), such as a propylene polymer composition containing about 30 to 50% of a hydrocarbon resin (column 4, lines 36-47).
The intermediate layer corresponds to layer A of the claims while the moisture barrier layer corresponds to layer B1 of the claims.
While the Examples of Shah do not illustrate an embodiment wherein the intermediate layers of the above embodiment are polypropylene, the reference explicitly teaches that polypropylene is a preferred material for the intermediate layers. As such, one of ordinary skill in the art would have immediately envisaged a film with the generalized structure: outer layer/moisture barrier layer/intermediate layer/core layer/intermediate layer/moisture barrier layer/outer layer, wherein the intermediate layers are formed of polypropylene. Alternatively, it would have been obvious to one of ordinary skill in the art to form the intermediate layers of polypropylene since Shah teaches that polypropylene is a preferred material for the intermediate layers.
Regarding claims 3 and 4 (as well as 24 and 25), since the outer layer is preferably a polyethylene copolymer, the two outer layer/moisture barrier layer/intermediate layer structures on either side of the ethylene vinyl alcohol core corresponds to outside and inside layers comprising polyethylene (i.e., the outer layer) and a 2-layer stack comprising a polypropylene layer (i.e., the intermediate layer) in contact with a polypropylene layer having 50 wt% or less of a hydrocarbon resin (i.e., the moisture barrier layer). Furthermore, the limitations of claim 5 (as well as claim 26) are satisfied with an outer layer/moisture barrier layer corresponding to the first and second layer and the outer or moisture barrier layer on the other side of the core reading on the third layer as there is no requirement in the claim that the second layer is in contact with both the first and third layers.
Regarding claims 8 and 29, the limitations of this claim are taken to be met by Examples 18-20, which illustrate films having a central layer of ethylene vinyl alcohol copolymer representing 10% of the overall thickness of the film (Table 6). One of ordinary skill in the art would expect such films to contain about 10 wt% ethylene vinyl alcohol copolymer.
Regarding claim 10, one of ordinary skill in the art would expect the deflection temperature under load and flexural secant modulus to be material properties. Since the coextruded film of Shah contains the same layers of the same materials as the instant invention (e.g., at least one polypropylene layer in contact with at least one layer comprising a majority polypropylene and 50% or less of a hydrocarbon resin), one of ordinary skill in the art would expect it to intrinsically satisfy the limitations of claim 10.
Regarding claims 11 and 35, the limitations of this claim are taken to be met by the teachings Examples 19 and 20 which illustrate films having a thickness of about 1 mil (Table 12) - i.e., about 25 mm.
Regarding claim 17, while Shah does not report the water vapor transmission rate in units of cm3/m2/day or oxygen transmission rate in units of cm3/100 in2/day, one of ordinary skill in the art would expect this limitation to be intrinsically satisfied since the film of Shah employs the same materials as the instant invention. Alternatively, it would have been obvious to minimize the water vapor and/or oxygen transmission rate, such as by adjusting layer thicknesses, since Shah explicitly teaches that their film is designed to have low water vapor and oxygen transmission.
Regarding claim 21, the manner in which an article is made (e.g., thermoforming) represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same 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, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since the article of Shah meets all the structural and physical limitations of the product of claim 21, the burden is on the applicant to conclusively demonstrate that the claimed process results in a patentably distinct process.
The limitations of claim 32 are taken to be met since the process of claim 31 is defined as forming the film of claim 1. Moreover, since the claim does not recite a modulus or any other quantitative measure of rigidity, the coextruded film of Shah comprised of the same materials as the instant invention would be expected to be similarly rigid.
Claims 9 and 30 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shah (US 5,482,771) as evidenced by the EVAL™ resin information sheet.
Shah teaches or suggests all the limitations of claim 9 and 30, as outlined above, except for specifying the ethylene content of their ethylene vinyl alcohol copolymer. However, the embodiments of the Examples use EVAL SC H-103, EVAL LC F-101, and EVAL LC H-103 (Table 1).
According to the EVAL™ resin information sheet, type F EVAL™ resins have an ethylene content of 32 mol% while type H EVAL™ resins have an ethylene content of 38 mol% (page 2).
Claim Rejections - 35 USC § 103
Claims 12-16 are rejected under 35 U.S.C. 103 as obvious over Shah (US 5,482,771) in view of Buzio (US 5,128,183).
Shah teaches or suggests all the limitations of claims 12-16, as set forth above, except for details regarding the hydrocarbon resin. However, Shah does teach that the hydrocarbon resin of Buzio may be used (column 3, lines 24-31).
Buzio is directed to a packaging film have low water vapor and oxygen transmission formed from a blend comprising polypropylene and a low molecular weight resin (column 2, lines 50-62). In the embodiment of Example 1, the low molecular weight resin is a hydrogenated polycyclopentadiene having a molecular weight of 650 and a softening point of 120 oC (column 9, lines 3-21).
It would have been obvious to one of ordinary skill in the art to use the hydrogenated polycyclopentadiene of Buzio as the hydrocarbon resin of Shah based on the direct suggestion in Shah to look to Buzio for suitable hydrocarbon resins.
Claims 18, 19, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Shah (US 5,482,771) in view of Hubbard et al. (US 2008/0286547).
Shah teaches or suggests all the limitations of claims 18, 19, 33, and 34, as outlined above, except for the presence of a nucleating agent in the polypropylene layer containing a hydrocarbon resin.
Hubbard et al. is directed to a polypropylene film with enhanced moisture barrier properties comprising polypropylene, a hydrocarbon resin, and a nucleating agent (paragraphs 0012-0013). The nucleating agent may be 2,4 dimethylbenzilidene sorbitol (i.e., a sorbitol based compound) or disodium (1R, 2R, 3S, 4S)-rel-dicyclo[2.2.1]heptane-2,3-dicarboxylic acid (i.e., a bicyclic carboxylic acid salt) (paragraph 0034). The addition of a nucleating agent improves the mechanical properties of the film (paragraph 0005).
It would have been obvious to one of ordinary skill in the art to add a nucleating agent to the moisture barrier layers comprising a propylene polymer and a hydrocarbon resin of Shah to improve the mechanical properties of the resulting film.
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 1-30 and 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 11,992,990.
Although the claims at issue are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-30 and 32-35 represent a genus of which the inventions described by claims 1-31 of U.S. Patent No. 11,992,990 are species since these claims require the co-extruded polymeric film to comprises outside and inside layers of polyethylene and a core of ethylene vinyl alcohol copolymer in addition to the 2-layer stack while the instant claims are written with open language allowing for the including of any other layers in addition to the 2-layer stack. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claims 1-30 and 32-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12,576,620 in view of Hubbard et al. (US 2008/0286547).
Claims 1-27 of U.S. Patent No. 12,576,620 recite all the limitations of claims 1-30 and 32-35 except for the presence of 50 wt% or less of a hydrocarbon resin in the nucleated polypropylene layer.
Hubbard is directed to a polymeric film having a layer comprising polypropylene, a nucleating agent, and a hydrocarbon resin (paragraph 0013). The addition of a hydrocarbon resin inhibits the transmission of water vapor (paragraph 0038). The hydrocarbon resin is added at a concentration of up to about 30 wt% (paragraph 0045).
It would have been obvious to one of ordinary skill in the art to add up to 30 wt% hydrocarbon resin to the nucleated polypropylene layer recited in the claims of U.S. Patent No. 12,576,620 to reduce the water vapor transmission rate of the resulting film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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