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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-7, in the reply filed on 2/10/2026 is acknowledged.
Claims 8-10 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/10/2026.
Claim Rejections - 35 USC § 112
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 4 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 4 recites the limitation "the outermost layers" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 5 recites the limitation "the degree of saponification" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, especially given that a saponification degree can be determined by multiple methods and the results thereof may be different.
Claim 6 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 6 recites the limitation "the oxygen permeability" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, especially given that oxygen permeability can be determined by different methods and under different conditions and the results thereof may be different.
Claim 7 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 7 recites the limitation "the haze" in line 1. There is insufficient antecedent basis for this limitation in the claim, especially given that haze can be determined by different methods and the results thereof may be different.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu (WO2012/023779A2). Yu discloses a multilayer barrier film that exhibits good biodegradability and enhanced gas-barrier property comprising at least one first resin layer comprising polyvinyl alcohol (PVOH) and at least two second resin layers comprising a polylactic acid (PLA) resin (reading upon the claimed aliphatic polyester-based polymer of instant claim 1, particularly as in instant claim 2) or a polyethylene terephthalate resin, with both outermost layers being the second resin layers (Abstract, as in instant claim 4), such as in a layer structure of 2nd/1st/2nd as with the multilayer film of PLA/PVOH/PLA as in Example 1, or a layer structure of 2nd/1st/2nd/1st/2nd (Claim 5), thereby anticipating instant claims 1-2.
With respect to instant claim 5, given that Yu specifically utilizes a NICHIGO G-POLYMER from NIPPON GOHSEI as the PVOH resin in the examples, wherein it is well established in the art that such NICHIGO G-POLYMER have a saponification degree higher than the claimed 30% (as evidenced by Henderson, US2016/0185498A1, Paragraphs 0050-0056), with Example 1 having a layer structure of PLA/PVOH/PLA, the Examiner takes the position that Yu anticipates instant claim 5 (Examples).
With respect to instant claim 6, Yu discloses that the gas-barrier property can be enhanced by adjusting the thickness of the PVOH (Abstract, Page 3, lines 22-23), such that the film exhibits an oxygen-permeability of 10 cc/m2·day or less according to ASTM D3985 (Page 5, lines 1-6), reading upon the claimed oxygen permeability of 30 cc/m2·atm·day given that ASTM D3985 utilizing units of cc/m2·day is at 1 atm pressure difference, thereby anticipating instant claim 6.
With respect to instant claim 7, although Yu does not specifically disclose the haze as instantly claimed, the Examiner takes the position that the multilayer films disclosed by Yu comprising the same alternating layer materials and produced by essentially the same method as in the instant invention, and particularly as in the working examples utilizing PLA and a NIPPON GOHSEI NICHIGO G-POLYMER as the PVOH, would inherently exhibit haze properties as instantly claimed, especially when determined by some arbitrary method. Hence, absent any evidence to the contrary, the Examiner takes the position that Yu anticipates instant claim 7.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato (JP2015039870A, previously referred to as “Teijin Ltd”, please refer to the machine translation sent with the prior office action for the below cited sections). As noted in the prior office action, Kato discloses a multilayer composite film comprising layers A of a thermoplastic biodegradable polymer and layers B of a thermoplastic water-soluble polymer (i.e., two or more different types of resin layers) alternately laminated, wherein the A layers comprise the thermoplastic biodegradable polymer selected from the group consisting of polylactic acid (PLA), glycolic acid copolymer (PLGA), polyglycolic acid (PGA), and polycaprolactone (PCL), with PLA being particularly preferred and utilized in the examples (i.e., first resin layer comprising an aliphatic polyester-based polymer as in instant claim 1 and particularly as in instant claim 2); and the B layers comprise the thermoplastic water-soluble polymer, particularly preferably a polyvinyl alcohol (PVA) (i.e., second resin layer comprising PVA), with working examples specifically comprising a multilayer film having alternating PLA layers and PVA layers, i.e. "a multilayer biodegradable barrier film" (Entire document, particularly Paragraphs. 0006, 0010, 0014, 0017, 0019-0020, Examples, Table 1), thereby anticipating instant claims 1-2.
With respect to instant claim 3, Kato discloses that the total number of layers A and layers B is 10 or more (Paragraph 0006, Item 6) and preferably 1000 layers or less (Paragraph 0020), thereby anticipating instant claim 3.
With respect to instant claim 4, Kato discloses that the entire composite film has a thickness of 3 µm or more, preferably 5 µm to 75 µm, with each layer A of thermoplastic biodegradable polymer (e.g., PLA) having a thickness of 5 to 100 nm, and the proportion of all B layers (e.g., PVA) in the film being in the range of 25 to 75% (Paragraph 0006, Item 1; Paragraphs 0017-0019), and that the surface of the composite film may be either the A layer or the B layer, wherein preferably a thickness adjustment layer made of the same resin as the A layer or the B layer may be provided on the surface layer when layers A and B are alternately laminated with the thickness adjustment layer being no more than 50% of the total thickness of the film, preferably no more than 40% and particularly preferably no more than 30% (Paragraphs 0019-0022), and given the working examples disclosed by Kato, the majority of which have more than 200 layers with the proportion of the PVA B layers being 50% or more, the Examiner takes the position that Kato discloses the claimed invention with sufficient specificity to anticipate instant claim 4.
With respect to instant claim 5, Kato discloses working examples utilizing commercially available water-soluble PVA resins having a saponification degree within the instantly claimed range, i.e., “PVA1”, KURARAY POVAL CP1000 (saponification degree of about 70%, as evidenced by Qiao, US2021/0010162A1), or “PVA5”, KURARAY POVAL CP-1220T10 (saponification degree of 87-89%, as evidenced by Kida, US2007/0125568A1, Paragraphs 0142 and 0151); or NIPPON NICHIGO G-POLYMERS OKS-8074P or OKS-8089P or OKS-8049P (as evidenced by Gao, US2024/0317955A1, Paragraph 0061; and/or Henderson, US2016/0185498A1, Paragraphs 0050-0056); and given that the working examples are multilayer biodegradable films comprising alternating layers of PLA and the above commercially-available PVA resins, Kato anticipates instant claim 5.
With respect to instant claims 6-7, although Kato does not specifically disclose the oxygen permeability and haze properties of the multilayer film as instantly claimed, the Examiner takes the position that the multilayer films disclosed by Kato comprising the same alternating layer materials and produced by essentially the same method as in the instant invention including with thicknesses as in the instant invention, and particularly as in the working examples utilizing the PVA resins as noted above, would inherently exhibit oxygen permeability and haze properties as instantly claimed, especially when determined by some arbitrary method. Hence, absent any evidence to the contrary, the Examiner takes the position that Kato anticipates instant claims 6-7.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Planeta (WO2022/056641A1, also printed as US2023/0357565A1, please refer to the US document for the below cited sections). Planeta discloses a multilayer biodegradable composite film comprising at least one water-soluble layer and at least one marine-biodegradable layer disposed in contact with the at least one water-soluble layer, and more particularly, a plurality of said layers alternately laminated as shown in Fig. 1, with the biodegradable layers being outermost layers of the multilayer film (Abstract, Fig. 1). Planeta discloses that the biodegradable layers may be formed from biodegradable plastics or bioplastics as recited n Paragraph 0020, such as PLA, polycaprolactone (PCL), polyhydroxyalkanoate (PHA), poly(glycolic acid) (PGA), poly(butylene succinate) (PBS), poly(butylene adipate) PBA, as well as copolymers thereof such as poly(butylene succinate-co-butylene adipate) (PBSA), reading upon the claimed aliphatic polyester-based polymer as recited in instant claims 1-2 with respect to the first resin layer (Paragraph 0020); while the water-soluble layer may be poly(vinyl alcohol) (PVOH) (Paragraphs 0020 and 0023), with some specific examples utilizing higher saponification value PVOH such as having a saponification value in the range of 82 to 87 [%] (Paragraph 0051, as in instant claim 5). Planeta specifically discloses a working example (Example 1) comprising a nine-layer composite film of alternating PHA and PVOH layers (as in instant claims 1-3) with the PHA layers constituting 40% of the composite film and forming the outermost layers (as in instant claim 4), as well as an eighteen-layer film formed by laminating two nine-layer composite films as shown in Fig. 2 with the average thickness of each individual PHA layer being 13 µm “which is 4.4% from the initial thickness” (Example 2). Hence, Planeta anticipates instant claims 1-4.
With respect to instant claim 5, as noted above, Planeta clearly discloses that in some specific examples, the PVOH may be a higher saponification PVOH having a saponification value of 82 to 87, thereby anticipating instant claim 5.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (WO2012/023779A2), as applied above to claims 1-2 and 5-7, and further discussed below.
The teachings of Yu are discussed in detail above and incorporated herein by reference, and although Yu teaches that the multilayer film may comprise more than three layers (paragraph bridging pages 5-6), Yu does not specifically teach that the film comprises 7 or more layers as recited in instant claim 3. However, given that Yu teaches that the first resin layers of PVOH may have a thickness of from 100 nm to 100 µm (Page 5, lines 1-2), while the thickness of the second resin layers may range from 1 to 150 µm, with a thickness of the entire multilayer film being in the range of from 5 to 200 µm (Pages 6, lines 11-14), Yu provides a clear teaching and/or suggestion that the multilayer film may comprise 7 or more layers, and given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the optimum number of layers to provide the desired thickness and barrier properties for a particular end use, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Yu.
With respect to instant claim 4, in addition to the above, Yu teaches that the gas-barrier property can be enhanced by adjusting the thickness of the PVOH (Abstract, Page 3, lines 22-23), preferably in a thickness range of from 100 nm to 100 µm, particularly such that the film exhibits an oxygen-permeability of 10 cc/m2-day or less according to ASTM D3985 (Page 5, lines 1-6), while the thickness of the second resin layer may range from 1 to 150 µm, with a thickness of the entire multilayer film being in the range of from 5 to 200 µm (Page 6, lines 11-14), and hence, Yu provides a clear teaching and/or suggestion that the second resin layers as outermost layer may constitute 50% or less of the total film thickness, thereby rendering the claimed invention as recited in instant claim 4 obvious over the teachings of Yu.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over original claims 1-3 and 7-10, or claims 1-7 as presented in the (improper) preliminary amendment filed 4/17/2024 (with claims 4-7 of the amendment corresponding to claims 7-10 of the original claim listing) of copending Application No. 18/701939 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 is also directed to a multilayer barrier film which comprises two or more different types of resin alternately laminated, wherein the resin layers comprise a first resin layer comprising an aliphatic polyester-based polymer as in instant claim 1; and a second-a resin layer comprising butanediol vinyl alcohol copolymer (BVOH), and given that BVOH resin is known in the art to be a specialized type of polyvinyl alcohol (PVOH or “PVA” as in the instant claims) and is biodegradable (as evidenced by Henderson, US2016/0185498A1, Paragraphs 0050-0061), instant claim 1 would have been obvious over copending claim 1.
Further, the limitations of instant claims 2-7 are recited in and/or render obvious over copending claims 2-3 and 7-10 as originally filed - for instant claim 2, see copending claim 7 which recites the same limitation; for instant claim 3, see copending claim 8 which recites “5 layers or more” thereby encompassing and hence rendering obvious the instantly claimed 7 layers or more; for instant claim 4, see copending claim 9 which recites the same limitation; for instant claim 5, see copending claim 2 which recites the same limitation; for instant claim 6, see copending claim 3 which recites the same limitation; for instant claim 7, see copending claim 10 which recites the same limitation. Hence, instant claims 2-7 would have been obvious over the cited copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787