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.
Election/Restrictions
Applicant’s election, without traverse, of Group I, claims 1-12, in the reply filed on 02/24/26 is acknowledged.
Claim(s) 13 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/24/26.
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) 1-12 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”).
Claim 11 recites the content of “PE” which is vague because claim 1 recites “PE based material” such that it is unclear if “PE” in claim 11 refers to just the polyethylene content of the PE based material in the overall laminate (e.g., if the PE based material is a polyethylene maleic anhydride copolymer, the PE content would be calculated just from the polyethylene repeating units, not including the maleic anhydride repeating units) or if claim 11 is referring to the content of PE-based material in the overall laminate (e.g., if the PE based material is a polyethylene maleic anhydride copolymer, the PE content would be calculated from the total amount of polyethylene maleic anhydride copolymer because it is a PE based material).
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:
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) 1-4, 7-12 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, 7-12, 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 with a generic urethane adhesive ([0058]) to a polyethylene ([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 PE 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]). In addition to the polyol:TDI ratio being obvious as explained above, it is further obvious based on MPEP 2144.05 II A (see below).
Regarding claim 11, Shah teaches that the metallized sealant/core/skin laminate may have a thickness of 40 microns ([0055]) and may be almost entirely PE based ([0044]), and may be laminated to a 10 micron PE based substrate ([0058]). Susano teaches that a suitable amount of the adhesive (after removal of solvent) for adhering packaging films ([0002], like in Shah) may be applied at 1-3 g/m2 ([0042]). For a 1m2 sample of film, the PE thickness would weight approximately 45.5 g (i.e., 40+10 microns of PE thickness over 1m2 would be 0.00005 m3 in volume, and the low end of PE density per m3 is about 910 kg/m3, so 0.00005 m3 * 910 kg/m3 = 0.0455kg or 45.5g). Therefore, the weight ratio of PE materials in the overall laminate (i.e., PE based sealant/core/skin + PU adhesive + PE based second substrate) would be approximately 97.8 wt% (i.e., (45.5g PE materials)/(45.5g PE materials+1g PU adhesive)), which is within the claimed ranges. Susano further discloses that much greater PE film thicknesses (up to 200 microns, [0043]) were suitable for use in packaging materials (such that the above amount of adhesive and thickness of PE films would be obvious to use in Shah because they are suitable amounts/thicknesses for forming a packaging film), which would result in an even higher wt% of PE in the overall laminate. Furthermore, the wt% of PE is prima facie obvious based on MPEP 2144.05 II A (see below).
See 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.”).
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 in the sealant layer of Shah, 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. 18/698,448 (the copending application) in view of Shah (U.S. 2016/0144603). 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 narrower in the copending application, however, Shah (citations above) shows that PET (as recited in the copending application) was a known and obvious PE based secondary substrate material for the presently recited second substrate.
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.
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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