DETAILED ACTION
Pending Claims
Claims 1-15 are pending.
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 .
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.
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, 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, 2, 8-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Chapman, Jr. et al. (US 2007/0249786 A1).
Regarding claims 1, 2, 8-13, and 15, Chapman, Jr. et al. disclose: (1) a polymer composition (paragraphs 0067-0068 and Table II: EC-3, EC-4 & EC-B; paragraph 0069-0070: EC-D, EC-5, EC-6 & EC-E) comprising:
a C2 - C6 olefin homopolymer or a copolymer of two or more C2 - C20 a-olefins (paragraph 0067: LLDPE-1; paragraph 0069: LLDPE-1; see also Table 1); and
from 200 to 5000 ppm (on the basis of mass of the polymer composition) of an interfacial agent (paragraphs 0067-0068 and Table II: EC-3, EC-4 & EC-B; paragraph 0069-0070: EC-D, EC-5, EC-6 & EC-E; see also paragraphs 0054-0057 and Table I);
(8) wherein the polymer composition comprises an ethylene copolymer comprising units derived from ethylene and units derived from one or more C3 to C20 a-olefins (paragraphs 0067 & 0069: LLDPE-1; see also paragraph 0052); and (9) wherein the ethylene copolymer is metallocene-catalyzed linear low density polyethylene (mLLDPE), comprising units derived from ethylene and units derived from 1-butene, 1-hexene, or 1-octene (paragraphs 0067 & 0069: LLDPE-1; see also paragraph 0052); (10) wherein the ethylene copolymer has density within the range from 0.905 to 0.945 g/cm3 and melt index (ASTM D1238 at 190°C, 2.16 kg loading) within the range from 0.1 to 5.0 g/10 min (paragraphs 0067 & 0069: LLDPE-1; see also paragraph 0052); (13) wherein: (A) the ethylene copolymer has melt index within the range from 0.4 to 1.2 g/10 min and/or melt index ratio (MIR, the ratio of high load melt index (ASTDM D1238 at 190°C, 21.6 kg loading) to melt index) within the range from 10 to 25 (paragraphs 0067 & 0069: LLDPE-1; see also paragraph 0052); and (B) the polymer composition comprises the interfacial agent within a range from 700 to 1100 ppm, on the basis of mass of all homopolymer or copolymer present in the polymer composition (paragraphs 0067-0068 and Table II: EC-B);
(11) wherein the polymer composition comprises the interfacial agent within a range from 500 to 2000 ppm, on the basis of mass of the homopolymer or copolymer (paragraphs 0067-0068 and Table II: EC-4 & EC-B); (12) wherein the polymer composition comprises the interfacial agent within a range from 700 to 1500 ppm (paragraphs 0067-0068 and Table II: EC-B); and
(15) wherein the polymer composition is substantially free of fluorine (paragraphs 0067-0068 and Table II: EC-B).
The exemplary embodiments of Chapman, Jr. et al. feature polycaprolactone polymers as their interfacial agent (see paragraphs 0054-0057 and Table 1). These exemplary embodiments fail to disclose: (1) a surfactant comprising a hydrophilic head and a lipophilic tail; and (2) wherein the surfactant is a sorbitan ester or a polysorbate. However, the general teachings of Chapman, Jr. et al. contemplate the use of other interfacial agents, including sorbitan monolaurate (see paragraph 0043).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the composition of Chapman, Jr. et al. with the instantly claimed sorbitan ester surfactant because: (a) the exemplary embodiments of Chapman, Jr. et al. feature polycaprolactone polymers as their interfacial agent; (b) the general teachings of Chapman, Jr. et al. contemplate the use of other interfacial agents; and (c) the other interfacial agents of Chapman, Jr. et al. include sorbitan monolaurate.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,702,535. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-15, patented claims 1-17 satisfy the limitations of claims (1-4, 8 & 9), patented claim 5 satisfies the limitations of claims (5-7), patented claim 11 satisfies the limitations of claim (9), patented claim 12 satisfies the limitations of claim (10), patented claim 3 satisfies the limitations of claims (11 & 12), patented claims 12-13 satisfy the limitations of claims (13 & 14), and patented claim 16 satisfies the limitations of claim (15), with the following exception: the patented claims fail to explicitly disclose the instantly claimed ppm contents of the surfactant. Rather, the patented claims feature ppm ranges that overlap the instantly claimed ranges. In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Allowable Subject Matter
Aside from the double patenting rejection, claims 3-7 and 14 but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
International Search Report
The international search report cited two X-references. These references have been considered.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
September 19, 2026
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