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 .
DETAILED ACTION
This is a final Office Action in response to a non-final Office Action reply filed 2/24/26 in which claims 19 and 26 were amended, and claims 23-24 and 30 were canceled.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 19-22 and 25-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 19, lines 1-8 recite “A multilayer film comprising: a first layer comprising a polypropylene heterophasic copolymer and/or a polypropylene homopolymer; a second layer consisting of a layer comprising a polyamide copolymer and a nucleating agent; and a third layer comprising an adhesion promoter, the third layer being disposed between the first layer and the second layer, wherein the multilayer film has an asymmetric layer sequence" and lines 9-10 recite “the multilayer film consists of the first layer, the second layer, and the third layer” and it is unclear whether the multilayer film comprises or consists of the first layer, the second layer, and the third layer. Claims 20-22 and 25-29 are similarly unclear as claim 19 because they depend from claim 19, therefore all claims are unclear.
Claim 25, recites “the second layer consists of multiple layers" and it is unclear how the second layer can consist of multiple layers when claim 19, from which it depends, states that the second layer consists of a layer. Claim 26 is similarly unclear as claim 25 because it depends from claim 25.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 19, 22 and 25-29 are rejected under 35 U.S.C. 103 as being unpatentable over Schumann et al (US 2020/0223192, already of record).
For claim 19, Schumann et al teach a multilayer film comprising: a first layer comprising a polypropylene heterophasic copolymer and/or a polypropylene homopolymer ([0082] – Table 2 layer (a)); a second layer consisting of layer comprising a polyamide copolymer and a nucleating agent ([0082] – Table 2, layer (b), [0056]); and a third layer comprising an adhesion promoter ([0082] – Table 2 layer (d)), the third layer being disposed between the first layer and the second layer ([0016]), wherein the multilayer film has an asymmetric layer sequence ([0082] – Table 2).
Though Schumann et al do not teach the multilayer film consists of the first layer, the second layer, and the third layer, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the multilayer film consist of the first layer, the second layer, and the third layer, since it has been held that omission of an element and its function in combination where the remaining elements perform the same function as before involves only routine skill in the art. In the instant case, the omitted fourth and fifth layers would not be required in that their removal solely eliminates their function related to providing additional plies to the film. Further, one would have been motivated to omit the elements for thinner film applications. Please see In re Kuhle, 526 F.2d 553, 188, USPQ 7 (CCPA 1975) for further details.
For claim 22, though Schumann et al do not teach the nucleating agent is present in the second layer in a concentration of 0.1 to 5% by weight, Schumann et al do teach the nucleating agent is present in the second layer in a concentration of 0.1 to 20% by weight ([0056]-[0057]) and since the claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists. Please see MPEP 2144.05 (I) and In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) for further details.
For claim 25, Schumann et al teach the second layer consists of multiple layers and comprises individual layers of a polyamide homopolymer ([0028]).
For claim 26, though Schumann et al do not teach an amount of polyamide homopolymer relative to a total amount of polyamide in all layers of the second layer is up to 65% by weight, Schumann et al do teach all plies of the multi-ply second layer are based on at least one homo- and/or copolyamide ([0028]) and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an amount of polyamide homopolymer relative to a total amount of polyamide in all layers of the second layer be up to 65% by weight, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to perform routine experimentation for the purpose of optimizing the amount of polyamide homopolymer in order to produce a film that possesses barrier and tear strength properties as desired. Please see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 for further details.
For claims 27-28, though Schumann et al do not teach a thickness of the second layer relative to a total thickness of the first layer, the second layer and the third layer is 20% to 75%; and a total thickness of the multilayer film is 40 µm to 140 µm, Schumann et al do teach the second layer has a layer thickness of at least 40% of the total thickness of the multilayer film, preferably up to 85% of the total thickness ([0045]) and the multilayer film has a total layer thickness of at least 80 um ([0058]) and since the claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists. Please see MPEP 2144.05 (I) and In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) for further details.
For claim 29, Schumann et al teach a tear strength of the multilayer film is more than 110 N according to ASTM 1970 ([0082] – Table 9).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Schumann et al (US 2020/0223192, already of record) in view of Mitadera (US 2013/0230693).
Schumann et al teach the invention as discussed above. In addition, Schumann et al teach the layers can include additives like color pigments ([0056]).
Schumann et al do not teach the nucleating agent comprises: an inorganic filler selected from the group consisting of metal oxides, metal salts, silicates, boron nitrides and a mixture thereof, a filling and reinforcing agent selected from the group consisting of talc, synthetic silicas, kaolin and a mixture thereof, and a colorant, a pigment or a mixture thereof.
However, in a related field of endeavor pertaining to polyamide resin films, Mitadera teaches nucleating agents such as boron nitride and talc ([0066]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Mitadera with those of Schumann et al by having the nucleating agent comprise an inorganic filler of boron nitride, a filling and reinforcing agent of talc, and a colorant, a pigment since Schumann et al are silent to such detail about the nucleating agent and one would desire to use proven materials.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Schumann et al (US 2020/0223192, already of record) in view of Schulte et al (US 2002/0193478).
Schumann et al teach the invention as discussed above.
Schumann et al do not teach the nucleating agent has an average particle size (D50), measured by gravity liquid sedimentation according to ISO 13317-3:2001 ("Determination of particle size distribution by gravitational liquid sedimentation methods - Part 3: X-ray gravitational technique"), with an accumulation degree of 50% of 0.5 to 5 µm.
However, in a related field of endeavor pertaining to molding compositions of polyamide/copolyamide used to produce films, Schulte et al teach the nucleating agents should have a particle size D90 of less than 25um, preferably less than 10 um ([0029]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Schulte et al with those of Schumann et al by having the nucleating agent have an average particle size (D50), measured by gravity liquid sedimentation according to ISO 13317-3:2001 ("Determination of particle size distribution by gravitational liquid sedimentation methods - Part 3: X-ray gravitational technique"), with an accumulation degree of 50% of 0.5 to 5 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to perform routine experimentation for the purpose of optimizing the nucleating agent effectiveness. Please see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 for further details.
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive.
Applicant asserts that the two propylene based outer layers of Schumann lead to the formation of a multilayer film with improved stability against mechanical actions and to an excellent durability and to provide such a multilayer film is the object of Schumann. See Schumann, paragraphs [0010]-[0011]. Accordingly, the skilled artisan would not be motivated to simply omit two of the five layers described for the multilayer film of Schumann, but rather, Schuhmann teaches away to simply omit layers as this will lead to a lesser stability.
Examiner, however, points out that one would have been motivated to omit two layers, such as layers (e) and (c), from one side of the film for thinner film applications that don’t require as much durability.
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 JAMES SANDERS whose telephone number is (571)270-7007. The examiner can normally be reached on M-F 11-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached on 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES SANDERS/Primary Examiner, Art Unit 1743
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