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 .
Status of Application
Claims 1-17 are pending and presented for examination.
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.
1. Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/696519 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of Application No. 18/696519 anticipates claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
2. Claim(s) 1-8 and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107312231, hereinafter ‘231 of which reference is made to the provided English translation.
I. Regarding claims 1, 2, 4-8 and 16, ‘231 teaches a polymer composition comprising: a Ziegler-Natta catalyzed LLDPE copolymer of butene and ethylene (Example 2, page 11); a processing aid consisting essentially of 1000 ppm of polyethylene glycol having a molecular weight of 10,000 (Example 2, page 12), and the composition is substantially free of fluorine (Example 2, pages 11-12). ‘231 also teaches that the Ziegler-Natta polymer can have a density of 0.92 g/cm3, a melt index of 0.1 g/10 min, and a molecular weight distribution of 5.8 (see Example 3, page 13). ‘231 teaches all the limitations of claims 1, 2, 4-8 and 16; therefore, ‘231 anticipates the claims.
II. Regarding claim 3, ‘231 teaches the polymer composition of claim 1 including the Ziegler-Natta catalyzed polymer, wherein the polymer has a density, melt index and molecular weight distribution as claimed (see above). ‘231 fails to explicitly teach the melt index ratio. However, as ‘231 is teaching an essentially identical composition wherein the polymer has all of a density, melt index and molecular weight distribution as claimed, then inherently the melt index ratio will fall within the claimed range. Therefore, ‘231 anticipates claim 3.
III. Regarding claims 13-15, the Examiner notes that claims 13-15 are directed towards a polymer composition and the manner in which it is prepared holds no patentable weight. An identical polymer composition prepared by a different method of mixing will anticipate the claims if the final composition is identical. In this case, ‘231 teaches a polymer composition comprising the Ziegler-Natta catalyzed LLDPE (see above, and note that one portion of this polymer can correspond to the polymer of the composition and a second portion of this polymer can correspond to the substantially identical carrier resin) and polyethylene glycol having a molecular weight of 10000, and the composition free of fluorine (see above). Therefore, the composition of ‘231 also anticipates claims 13-15.
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.
3. Claim(s) 9-12 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘231 in view of Toni et al. (U.S. PGPUB No. 2020/0331242).
I. Regarding claims 9, 10 and 17, ‘231 teaches the polymer composition of claim 1 (see above) and the processing aid consisting essentially of polyethylene glycol (see above). ‘231 also teaches that a polysorbate may be included (middle of page 8), but fails to teach the polysorbate meeting the limitations of structural formula (I)
However, Toni teaches the inclusion of a specific polysorbate, polysorbate 80 (which meets the limitations of the structural formula (I), in a polymer composition of a linear low density polyethylene (see Table 1, LLDPE-md4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute polysorbate 80 for the generic polysorbate of ‘231. One would have been motivated to make this substitution as one could have made this substitution with a reasonable expectation of success (particularly given that Toni teaches polysorbate 80 in combination with a LLDPE similar to ‘231’s polymer), and the predictable result of providing a polymer composition.
II. Regarding claims 11 and 12, ‘231 in view of Toni make obvious claim 9, but fail to teach the ratio of polyethylene glycol to polysorbate. However, it is well known within the level of one of ordinary skill in the art that the amount of processing agents will need to be adjusted to provide optimal properties of a polymer coating composition while minimizing costs associated with the addition of each agent. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ratio through process optimization, 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. See In re Boesch, 205 USPQ 215 (CCPA 1980).
Conclusion
Claims 1-17 are pending.
Claims 1-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
July 26, 2026Primary Examiner, Art Unit 1717
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