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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-2, 6, and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 9 of U.S. Patent No. 12,391,827 B2 (hereinafter “’827). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1-2, ‘827 discloses a biaxially stretched polyamide film comprising a functional layer (layer B) laminated on at least one surface of a base layer (layer A), wherein the base layer (layer A) consists of a polyamide 6 resin and an aromatic-aliphatic polyester resin, and the functional layer (layer B) contains a polyamide 6 resin (claim 1). The aromatic-aliphatic polyester resin corresponds to the claimed flexing resin. Because the functional layer (layer B) is not disclosed as containing any polyester resin, it is substantially free of any flexing agent as presently claimed.
While there is no disclosure from ‘827 regarding the biaxially stretched polyamide film exhibiting a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under conditions including a tensile mode, a distance between chucks of 20 mm, a frequency of 15 Hz, and a rate of raising temperature of 5°C/min using a viscoelasticity analyzer, given that ‘827 discloses an otherwise identical biaxially stretched polyamide film comprising otherwise identical two layers made from otherwise identical layers A and B made from otherwise identical polyamide 6 and flexing agents, it is clear the biaxially stretched polyamide film of ‘827 would necessarily inherently exhibit a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under the conditions presently claimed, absent evidence to the contrary.
It is noted that ‘827 additionally discloses the layer A optionally consists of a polyamide resin other than the polyamide 6 resin and requires specific amounts of the polyamide 6 resin and the aromatic-aliphatic polyester resin, while the present claims are silent with respect to these limitations. However, given the open-ended language of the present claims (i.e., “comprising”) nothing in the present claims precludes these additional components and thus the more specific biaxially stretched polyamide film of ‘827 would be encompassed by the present claims, and thus one of ordinary skill in the art would have arrived at the present invention.
With respect to claims 6 and 8, ‘827 discloses a laminated film in which a sealant layer is laminated on the biaxially stretched polyamide film (claim 5) that is used in a packaging bag (claim 9) (i.e., discloses a packaging material comprising the biaxially stretched polyamide film and a sealant film).
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.
The factual inquiries 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.
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.
Claims 1, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Iwaya et al. (JP 2020-111050 A, “Iwaya”). The disclosure of Iwaya is based off a machine translation of the reference included with this action.
With respect to claim 1, Iwaya discloses a polyamide film that is biaxially stretched ([0083]) having at least two layers including a first layer (i.e., A layer) and a second layer (i.e., B layer) ([0076]). The first layer (A layer) comprises an aliphatic polyamide ([0018]), where the aliphatic polyamide includes polycapramid (nylon-6) (i.e., polyamide 6) ([0024]). The second layer (B layer) comprises an aliphatic polyamide ([0055]); the aliphatic polyamide includes polycapramid (nylon-6) (i.e., polyamide 6) ([0024]). The first layer (A layer) contains a polyester elastomer, while the second layer (B layer) does not contain a polyester elastomer ([0010]); given the polyester elastomer is identical to that of the present invention (instant specification, page 7, [0015]), the polyester elastomer corresponds to the claimed flexing agent. Thus, the first layer (A layer) contains a flexing agent, while the second layer (B layer) is substantially free of any flexing agent.
Iwaya does not disclose the biaxially stretched polyamide film exhibits a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under conditions including a tensile mode, a distance between chucks of 20 mm, a frequency of 15 Hz, and a rate of raising temperature of 5°C/min using a viscoelasticity analyzer. However, given Iwaya discloses an otherwise identical biaxially stretched polyamide film made from otherwise identical layers made from otherwise identical polyamides and otherwise identical flexing agents as that presently claimed, it is clear the biaxially stretched polyamide film of Iwaya would necessarily inherently exhibit a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under conditions including a tensile mode, a distance between chucks of 20 mm, a frequency of 15 Hz, and a rate of raising temperature of 5°C/min using a viscoelasticity analyzer, absent evidence to the contrary.
In light of the overlap between the claimed biaxially stretched polyamide film and that taught by Iwaya, it would have been obvious to one of ordinary skill in the art to use a biaxially stretched polyamide film that is both taught by Iwaya and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 4, Iwaya discloses the polyamide film includes polyamides other than aliphatic polyamides ([0032]) including polymetaxylylene adipamide ([0034]).
With respect to claim 5, Iwaya discloses the polyamide film includes a five-layer structure including one that is a second layer (B layer)/first layer (A layer)/second layer (B layer)/first layer (A layer)/second layer (B layer) ([0076]); thus, the polyamide film includes wherein the A layer and B layer are laminated in an order of B layer/A layer/B layer.
With respect to claim 6, Iwaya discloses the polyamide film is used in packaging material for food ([0080]) and includes a sealant film laminated on one side of the polyamide film ([0094]).
With respect to claim 8, Iwaya discloses the polyamide film is used in packaging material for food ([0080]) including a packaging bag ([0094]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Iwaya et al. (JP 2020-111050 A, “Iwaya”) as applied to claim 1 above, and further in view of Okuzu et al. (US 2020/0392298 A1, “Okuzu”). The disclosure of Iwaya is based off a machine translation of the reference included with this action.
With respect to claim 2, while Iwaya discloses the use of a polyester elastomer (i.e., flexing agent) as set forth above, Iwaya does not disclose wherein the polyester elastomer (i.e., flexing agent) is an aliphatic aromatic copolymerized polyester.
Okuzu teaches the use of polyester elastomers having an aromatic unit and aliphatic unit ([0035]) in a polyamide resin ([0011]). Because the polyester elastomer includes an aromatic unit and aliphatic unit, it is an aliphatic aromatic copolymerized polyester as presently claimed.
Iwaya and Okuzu are analogous inventions in the field of polyamide films containing polyester elastomers and used in packaging bags.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester elastomer of Iwaya to be a polyester elastomer having an aromatic unit and aliphatic unit as taught by Okuzu since such polyester elastomers are known to be suitable for this use. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Iwaya et al. (JP 2020-111050 A, “Iwaya”) as applied to claim 1 above, and further in view of Nanba et al. (US 2007/0065673 A1, “Nanba”). The disclosure of Iwaya is based off a machine translation of the reference included with this action.
With respect to claims 2-3, while Iwaya discloses the use of a polyester elastomer (i.e., flexing agent) as set forth above, Iwaya does not disclose wherein the polyester elastomer (i.e., flexing agent) is an aliphatic aromatic copolymerized polyester, nor wherein the flexing agent is an aliphatic aromatic copolymerized polyester containing an adipic acid component.
Nanba teaches a stretched polyamide film ([0002]) including a layer made of a polyamide resin X and polyester-based elastomer Y ([0009]). The polyester-based elastomer Y is made from graft-polymerizing an ethylenically unsaturated carboxylic acid to a polyester-based elastomer ([0014]) including an aliphatic and aromatic component ([0016]), where an aliphatic dicarboxylic acid including adipic acid is used as a comonomer ([0020]). Thus, the polyester-based elastomer Y is an aliphatic aromatic copolymerized polyester containing an adipic acid component. The polyamide film has improved flexibility, impact resistance, and pin-hole resistance (Abstract). As seen in the experimental data, Example 1 containing a polyester-based elastomer has improved pin-hole resistance compared to Comparative Example 1, which does not contain the polyester-based elastomer (Table 1).
Iwaya and Nanba are analogous inventions in the field of stretched polyamide films including layers made from polyamide resins and polyester-based elastomers
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester-based elastomer of Iwaya to be the polyester-based elastomer that is an aliphatic aromatic copolymerized polyester containing an adipic acid component as taught by Nanba in order to provide a polyamide film having improved pin-hole resistance (Nanba, Abstract, Table 1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Iwaya et al. (JP 2020-111050 A, “Iwaya”) as applied to claim 1 above, and further in view of Kawakita et al. (JP 2002-127337 A, “Kawakita”). The disclosures of Iwaya and Kawakita are based off machine translations of the reference included with this action.
With respect to claim 7, while Iwaya discloses the use of a packaging material for food including the biaxially stretched polyamide film and sealant layer as set forth above ([0087]), Iwaya does not disclose the packaging material is a battery packaging material comprising the biaxially stretched polyamide film, a metal layer, and a sealant layer.
Kawakita teaches a multilayer stretched polyamide film for packaging ([0001]). When used in packaging bags, a metal foil is used to increase the gas barrier properties and mechanical strength ([0028]).
Iwaya and Kawakita are analogous inventions in the field of packaging materials including biaxially stretched polyamide films and sealant layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a metal layer anywhere in the packaging material of Iwata, including between the polyamide film and sealant layer as presently claimed, in order to increase the gas barrier properties and mechanical strength of the packaging material (Kawakita, [0028]).
Regarding the packaging being “a battery packaging material”, there is no disclosure from Iwaya in view of Kawakita regarding the packaging made from the polyamide film, metal foil, and sealant layer being used for a battery packaging material. However, Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., being a battery packaging material) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a packaging material identical to that set forth in the present claims, is capable of performing the recited purpose or intended use.
Claims 1, 5-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (JP 2020-163587 A, “Endo”). The disclosure of Endo is based off a machine translation of the reference included with this action.
With respect to claims 1 and 5, Endo discloses a biaxially oriented (i.e., biaxially stretched) polyamide film ([0001]). The biaxially oriented polyamide film has a polyamide 6 layer (layer B) laminated onto a substrate layer composed of polyamide 6 containing a polyamide elastomer (layer A) ([0011]). Given the polyamide elastomer is identical to the flexing agent of the present invention (instant specification, page 7, [0015]), the polyamide elastomer corresponds to the flexing agent presently claimed. Thus, the layer of polyamide 6 containing a polyamide elastomer corresponds to the claimed A layer containing a flexing agent. Because the other layer of polyamide 6 is not disclosed as containing the polyamide elastomer ([0011], [1]), it is substantially free of a flexing agent and therefore corresponds to the claimed B layer. Endo further discloses the polyamide film has the structure of B layer/A layer/B layer ([0011], [2]).
However, Endo does not disclose the biaxially stretched polyamide film exhibits a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under conditions including a tensile mode, a distance between chucks of 20 mm, a frequency of 15 Hz, and a rate of raising temperature of 5°C/min using a viscoelasticity analyzer. However, given Endo discloses an otherwise identical biaxially stretched polyamide film made from otherwise identical layers made from otherwise identical polyamides and otherwise identical flexing agents as that presently claimed, it is clear the biaxially stretched polyamide film of Endo would necessarily inherently exhibit a loss elastic modulus E” of 1.1 × 108 Pa or more at 1°C in dynamic viscoelasticity measurement under conditions including a tensile mode, a distance between chucks of 20 mm, a frequency of 15 Hz, and a rate of raising temperature of 5°C/min using a viscoelasticity analyzer, absent evidence to the contrary.
In light of the overlap between the claimed biaxially stretched polyamide film and that taught by Endo, it would have been obvious to one of ordinary skill in the art to use a biaxially stretched polyamide film that is both taught by Iwaya and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claims 6 and 8, Endo teaches the polyamide film is used in packaging bags ([0012]) and includes a sealant layer ([0016]).
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Kawakita (JP 2018-196929 A, disclosure based off machine translation of reference included with this action) discloses a laminate material used for battery casings and packaging materials for food ([0001]) having a base layer 13, barrier layer 11, and sealant layer 15 ([0009], [0020], Fig. 1). The base layer is a biaxially stretched multilayer film having at least two polyamide layers ([0009]). The barrier layer is made from metal ([0027]).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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