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 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.
Claims 1-24 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 7-18, in the reply filed on 03/09/26 is acknowledged.
The traversal is on the ground(s) that examination of all the inventions would not be a burden which is not persuasive because this is 371 application and burden is not a relevant consideration for restrictions of 371 applications (and there would be a burden anyway given the different classification and legal interpretations of the different inventions).
The requirement is still deemed proper and is therefore made FINAL.
Furthermore, upon further consideration, there is an additional election of species requirement:
First election requirement - This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Applicant must elect a single specific embodiment from amongst the following species:
The species are the various embodiments of the opacity of the thermoplastic film (select either clear or having some pigmentation/color). Applicant must select a specific isocyanate from within the recited options.
The species listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The species above lack unity of invention because the species do not share the same or corresponding technical feature. That is, the species each represent mutually exclusive chemical compounds/structures with respect to each other.
Second election requirement - This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
Applicant must elect a single specific embodiment from amongst the following species:
The species are the various embodiments of the isocyanate of claim 15. Applicant must select a specific isocyanate from within the recited options.
The species listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The species above lack unity of invention because the species do not share the same or corresponding technical feature. That is, the species each represent mutually exclusive chemical compounds/structures with respect to each other.
During a telephone conversation with Judith Rawls on 04/29/26 a provisional election was made with traverse to prosecute clear (first species) and methylene dicyclohexyl diisocyanate (second species). Affirmation of this election must be made by applicant in replying to this Office action.
Claim(s) 2-6 (non-elected opacity), and 19-24 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/09/26.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) claims 1, 7-18 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation. Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claims 1 and 7-10 recite properties that are enabled in the present disclosure only for certain thermoplastic polyurethanes (TPU) used in the examples (which have certain isocyanates, polyols, and chain extenders, and certain overall MW, MW of soft segment, wt% of soft segment, and Tg) whereas the claims are much broader in this regard, with the broadened scope of the claims compared to the enabled embodiments of the examples constituting an undue/unreasonable amount of experimentation for one of ordinary skill in the art (to experiment within the full claim scope, beyond the scope of the examples, to arrive at the claimed properties). For the scope of the TPU as claimed to constitute a reasonable level of experimentation, it would appear that the claims would have to recite:
a Markush group for the isocyanate (e.g., 4,4′-Methylene dicyclohexyl diisocyanate, hexamethylene diisocyanate, and isophorone diisocyanate)
a Markush group for the polyol (e.g., a polycaprolactone-based polyol, polypropylene glycol, or polytetramethylene ether glycol)
a Markush group for the chain extender (e.g., a diol having from two to ten carbon atoms)
a range of overall MW,
a range for MW and wt% of the soft segment, and
a range for Tg.
Furthermore, the Elastic Recovery test of claim 1 is shown in the examples to only be achieved by blending the above TPU with an additional polymer, not by the above TPU alone (whereas all the claimed properties other than the Elastic Recovery test appear to be enabled from just the TPUs discussed above). Thus, the Elastic Recovery test of claim 1 has a narrower set of enabling examples that require the above mentioned TPU to be blended with either: a softer TPU (i.e., Estane 60D), or a PVB, or a copolyester polyether polymer. This additional aspect (i.e., the requirement of an additional polymer to achieve the Elastic Recovery test), is also recited in much broader terms (compared to the narrowed set of examples) that would constitute an undue/unreasonable amount of experimentation for one of ordinary skill in the art (to experiment within the full claim scope, beyond the scope of the examples, to arrive at the claimed properties). To make the claimed scope commensurate with the enabling disclosure:
a combination of first and second polyurethanes with different soft segment percentages would have to be recited, along with a range of amounts for the second polyurethane with respect to the above TPU,
the inclusion of a polyvinyl acetal would have to be recited, with a range for the PVOH% and MW of the polyvinyl acetal, along with a range of amounts for the polyvinyl acetal with respect to the above TPU, and/or
the inclusion of a copolyester polyether polymer would have to be recited, with the reactants that form the copolyester polyether polymer, along with a range of amounts for the copolyester polyether polymer with respect to the above TPU.
Upon applying the Wands factors to claims 1 and 7-10, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of polymers (TPU, second polymer) recited relative to the much narrower guidance provided in the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the properties as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of polymers (TPU, second polymer) without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain types and amounts of polymers (TPU, second polymer), see e.g., the examples, without any corresponding direction provided for achieving the claimed properties with the broader types and amounts of polymers as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
Claim Rejections - 35 USC § 112(b)/second paragraph
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.
Claim(s) 2-3 is/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.
Claims 2-3 recites the thermoplastic layer which has improper antecedent basis and is therefore vague.
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 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.
If 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.
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 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 1, 7-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steelman (U.S. 2016/0002418).
Regarding claims 1, 7-18, Steelman discloses a thermoplastic film comprising a polymer blend of a thermoplastic urethane elastomer TPU such as Estane ALR-CL87A (see abstract, [0012], page 5, PU 3) which inherently is formed of methylene bis cyclohexyl isocyanate, caprolactone (soft segment based on present disclosure), and butanediol (hard segment based on present disclosure), with a MW of the soft/caprolactone segment of 1070, 50.2% of the soft/caprolactone segment, an overall MW of 130,000 and a Tg of -17.7 degrees Celsius based on the present disclosure (within the present examples and claims 11, 15-18) as well as a PVB such as Butvar B-90 (page 5, PVB6) which inherently has a MW of 70,000-100,000 and a PVOH content of 18.5-20.5 based on the present disclosure (within the scope of the present examples and claim 12). The thermoplastic film may have a patterned adhesive layer on one side ([0026]-[0027]) and may be clear ([0017] as in claim 13).
Steelman discloses that the relative ratio of TPU and PVB may be adjusted based on the desired level of stretch/elasticity and unevenness/distortion ([0015]) such that it would have been obvious to have adjusted the ratio of TPU to PVB, including to values within the range disclosed in the present specification and claim 14, to optimize the stretch/elasticity and unevenness/distortion of the film.
The properties of claims 1 and 7-10 are not disclosed, but Steelman teaches a blend of the same TPU and PVB as in the present examples, at amounts that render obvious the amounts in the present examples, such that these overlapping embodiments within the teachings of Steelman inherently have the same properties as the overlapped examples in the present specification, which fall within the claimed property ranges.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-35 of copending Application No. 18/686,030 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims. The presently claimed amounts are not a patentable distinction See MPEP 2144.05 II A.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-31 of copending Application No. 18/686,013 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-24 of copending Application No. 18/686,038 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-32 of copending Application No. 18/686,005 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-31 of copending Application No. 18/686,024 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-31 of copending Application No. 18/686,010 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights