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 1-13 are pending.
Response to Amendment
Applicant’s amendment of 04/07/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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) 1-13 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.
Claim 1 recites a weight ratio of the polyol and polyisocyanate “components” which is vague because it is unclear if this corresponds to the weight ratio of polyol and polyisocyanate compounds or if it also encompasses other ingredients (e.g., if a solvent or other non-polyol, non-isocyanate compounds are included in one of the two “components,” are they included in the weight ratio?). It would appear remedial to recite the weight ratio in terms of the polyol and polyisocyanate (without “component”). The solids content of the polyester polyol component does not remedy the above vagueness because it is still unclear if the solids percentage corresponds to the polyester polyol in the polyester polyol component or if there may be other non-volatile (solids) ingredients besides the polyester polyol (which still makes the weight ratio vague).
Claim 13 recites various terms already recited in claim 1 with “a” instead of “the” which makes the claim have vague antecedent basis.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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) 1-4, 7-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah (U.S. 2016/0144603) in view of Susano (U.S. 2002/0143102).
Regarding claims 1-4, 7-13, Shah teaches an article (as in claim 12) comprising a blown (as in claim 9, though this is an immaterial product by process limitation, [0051]) PE laminate comprising sealant, core and skin layers (as in claim 4, [0044]), with optional antioxidants (as in claim 8, [0030]) and no fatty acid derivatives required (as claimed), that is metallized on the skin layer (as in claim 3, with metals overlapping claim 10, and an optical density overlapping claim 7, [0047]-[0048]), and then adhered (as in claim 13) with a generic urethane adhesive ([0058]) to a PET or PP (i.e., entirely PP as in claim 11, [0045]) film.
Shah does not disclose the particular urethane adhesive, however, Susano discloses a two part solvent born ([0042]) urethane adhesive suitable for bonding metal/metalized layers and PET/PP materials ([0043]) that comprises a polyester polyol with aromatic repeating units for heat resistance (such that the amount of such aromatic units in the polyester polyol is obvious to adjust to within the claimed range as part of optimizing heat resistance, [0025]) and with an overlapping MW ([0038]) and inherently having two terminal OH groups based on the disclosed polyester polyol forming reactants (i.e., diols and dicarboxylic acids, [0024]-[0025]), as well as a polyisocyanate (e.g., TDI, as in the present application, [0016]) that is combined with the polyol at a stoichiometric ratio ([0040], which results in the claimed weight ratio, as in claim 2, because the polyol has an overlapping MW compared to the present invention and an overlapping number of OH groups per molecule, such that providing a stoichiometric equivalent of the much lower MW TDI would require a much higher weight of the polyol relative to the TDI, as in the present application), such that the urethane adhesive of Susano would be obvious to use as the urethane adhesive called for in Shah because it provides adhesion between the two substrates used in Shah and prevents spoilage ([0009]).
Susano in modified Shah further discloses that the polyol and polyisocyanate components may be blended with solvent prior to mixing to reduce their viscosity ([0042]) such that the solids content of both components would be obvious to optimize to within the ranges of the present disclosure (and within the claimed range) as part of optimizing the viscosity of those components for blending as taught by Susano in modified Shah. Furthermore, because the amount of polyisocyanate and polyol in their respective components is obvious to optimize, the claimed weight ratio is even more obvious in view of Susano in modified Shah because there is not only an overlapping wt% of the polyisocyanate and polyol compared to the present disclosure (as explained above for the stoichiometric ratio) but the amount of polyisocyanate and polyol in their respective components is further obvious to optimize as explained above (and thus the amount of the respective polyisocyanate and polyol components relative to each other to achieve the stoichiometric ratio after accounting for dilution is also obvious to optimize).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shah (U.S. 2016/0144603) in view of Susano (U.S. 2002/0143102), as applied to claim 1, in view of Pellingra (U.S. 2005/0238874).
Regarding claims 5-6, modified Shah teaches all of the above subject matter but does not disclose the sealant additives of claims 5-6, however, Pellingra teaches that such additives were known to be useful in PE sealant layers for slip/low friction and to prevent blocking, such that it would have been obvious to have included such additives, and adjusted their relative amounts to within the claimed ranges in order to optimize slip and blocking properties, respectively, as processing aids as taught by Pellingra ([0068]).
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) 1-13 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-13 of copending Application No. 18/698,564 (the copending application) in view of Shah (U.S. 2016/0144603) in view of Susano (U.S. 2002/0143102). Although the claims at issue are not identical, they are not patentably distinct from each other. The claims are substantially the same except that the secondary substrate is different in the copending application, however, Shah (citations above) shows that the presently claimed second substrate materials were known and obvious alternatives to the secondary substrate in the copending application. The solids content is also obvious based on Susano for blending as discussed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that “component” is not vague. This is not the problem addressed in the rejection. The problem is reciting an amount of two ingredients (polyisocyanate and polyol) by reciting the amount of their respective “components.” As explained above, this makes the weight ratio unclear, because the amount of the two ingredients can be completely altered depending on how much other ingredients (besides polyisocyanate and polyol) are included in their respective components. Furthermore, the distinction between the extra ingredients (besides polyisocyanate and polyol) in one component vs the other component is not measurable once the two components are mixed together. That is, a polyisocyanate component may be 100% polyisocyanate (no other ingredients) and mixed with a 1% polyol component (with 99% other ingredients, which may be solvent or non-solvent) and the same mixed composition with the weight ratio of the above two ingredients may then be considered to have a completely different weight ratio of the two components if the non-polyol ingredients in the polyol component is considered part of the polyisocyanate component (once the two components are mixed, there is no way to tell which “other” ingredients are included in the polyol vs polyisocyanate components).
Applicant then argues that the prior art does not disclose the claimed solids percentage, but this is rendered obvious as explained above.
Applicant then argues that Susano does not disclose the claimed percent of aromatic rings is obvious as indicated in the rejection because Susano is directed to elution suppression, and naphthalene dicarboxylic acid is disclosed as providing heat resistance. First, the reason set forth in Susano for selecting a particular dicarboxylic acid does not need to be the same as in the present application. Second, Susano can provide multiple motivations for including different acids. Here, as noted by Applicant, Susano teaches that naphthalene dicarboxylic acid provides heat resistance. Thus, the amount of the naphthalene based acid relative to the optional aliphatic dimer acid would have been obvious to optimize. If the naphthalene acid also provides good elusion effects, this does not negate the motivation based on heat resistance. In fact, the multiple motivations just provide more reasons for adjusting the amount of naphthalene acid. Third, the examples in Susano show that the claimed weight percentage of aromatic rings are clearly within the teachings of Susano (Polyol A has about 60wt% of aromatic polyol backbone, sufficient to render obvious the claimed range by itself, and Polyol B has about 22wt% due to the inclusion of dimer acid, such that the examples confirm that the ratio of aromatic to aliphatic dimer acid repeating units in the polyol backbone in Susano encompasses a range that overlaps the claimed range and Susano provides a motivation for adjusting the ratio of such repeating units, thereby rendering the claimed range obvious). The examples in Susano are not necessary to render obvious the claimed range of aromatic components in the polyol because the reasons presented above related to heat resistance are sufficient, but the examples confirm the Examiner’s interpretation of Susano’s teachings.
Applicant then argues against Shah on the grounds that Shah does not disclose the claimed fatty acid limitation and allows for such additives. However, Shah does not need to explicitly disclose such a limitation and is not limited to the examples that supposedly include such additives. Shah clearly teaches that such additives are optional and therefore renders obvious the claimed limitation.
Applicant then argues that the NCO:OH ratio in Susano cannot render obvious the claimed weight ratio of polyol to polyisocyanate because there is no disclosure of the MW and OH or NCO functionality of the respective polyisocyanate and polyol components. First, as indicated in the previous 112 rejection, the claims are directed to the weight ratio of the polyol “component” to the polyisocyanate “component” in the mixed composition (not the polyol and polyisocyanate ingredients as argued by Applicant), such that any amount of solvent (or other ingredients) may be attributed to one “component” or the other, thereby diluting the polyol/polyisocyanate concentration in that component and changing how the claimed weight ratio of components is applied to a given ratio of polyol:polyisocyanate ingredients. In other words, because the present claims are so vague in terms of the claimed “weight ratio” of “components” it is almost impossible to say that any composition in Susano would or would not meet the weight ratio limitation.
Second, Susano does indeed disclose MW’s of the polyol ([0038]-[0039]) and polyisocyanate ([0016], MW inherent in the disclosed compounds) ingredients and the number of OH and NCO groups in each respective ingredient is limited by the reactions that produce those ingredients (the diisocyanate compound is used as is, while the polyol is produced by condensation reaction of diacids and diols, which give a predictable number of OH group per molecule, i.e., 2 OH groups per molecule). Thus, it is maintained that the above characteristics of the polyisocyanate and polyol ingredients in Susano, in combination with the broad NCO/OH range, result in a weight ratio of polyisocyanate and polyol ingredients that overlaps the present disclosure which overlaps the presently claimed ratio.
Third, even without the overlap between the teachings of Susano and the present disclosure as detailed in the rejection and in the preceding paragraph, and even without the vague nature of the weight ratio limitation itself, the ratio of polyol to polyisocyanate would be obvious in view of MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
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.
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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).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights