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 .
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 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.
Independent claim 1 defines a core having less than 40 weight percent of an ethylene-propylene copolymer (based on total weight of the core); however, dependent claim 6 similarly requires that the core layer comprises from 60 to 100 weight percent of the ethylene-propylene copolymer. These limitations appear to be in direct contrast to one another and as such, the claims fail to provide a clear and concise understanding of the claimed invention. Inventive films 1-3 include a core layer formed entirely of an ethylene-propylene copolymer and such appears to correspond with claim 6 but be in direct contrast to that required by claim 1. Similarly, Inventive films 4 and 5 include a core layer formed with a combination of ethylene-propylene and an additional ethylene-based polymer and such appears to correspond with claim 1 but be in direct contrast to claim 6.
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.
Claim(s) 1-5 and 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tice (WO 2013/056466).
Tice is directed to a multilayer film comprising at least two skin layers and a core layer, wherein said core layer includes 10-100 weight percent of an ethylene-based polymer composition (Page 2, Lines 10-15 and Lines 27+). More particularly, said composition includes at least 70 percent by weight of the units derived from ethylene (corresponds with claimed requirement of 60-95 weight percent) and less than 30 percent by weight of units derived from one or more alpha olefin comonomers, such as propylene (corresponds with claimed requirement of 5-40 weight percent) (Page 3, Lines 4-17). Tice further states that a melt index I2 ranges between 0.1-1 g/10 minutes (Page 7, Lines 27+) and a density is between 0.924 g/cm3 to 0.940 g/cm3 (Page 7, Lines 20-26).
In terms of the density, while a value of 0.924 g/cm3 is slightly different than 0.920 g/cm3, a prima facie case of obviousness can exist where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05). More particularly, the proportions are so close that prima facie one skilled in the art would have expected them to have the same properties. As such, a density in accordance to the claimed invention would have been obvious in view of Tice.
Lastly, regarding claim 1 (and claim 8), the general disclosure of Tice suggests a core layer formed with a mixture of polymer materials or compositions (Page 3, Lines 4-17 and Lines 31-32, Page 11, Lines 9+, Page 12, Lines 31+, and Table 16). It is particularly noted that Inventive Film 1 includes a core layer formed entirely of ethylene-based polymers (greater than 90 weight % as required by the claims), with an ethylene based copolymer (ethylene-octene) corresponding with 40% by weight. When using an ethylene-propylene copolymer as suggested by Tice, one of ordinary skill in the art would have similarly found it obvious to use a mixture of ethylene-based polymers (and as detailed above, Tice teaches the inclusion at least 10% by weight of said ethylene-propylene copolymer).
With respect to claim 2, Tice teaches molecular weights in accordance to the claimed invention (Page 8, Lines 1-7).
As to claims 3 and 4, the ethylene-propylene copolymer taught by Tice appears to be extremely similar to that of the claimed invention in terms of density, melt flow index I2, and the molecular weight, and as such, it reasons that the claimed ratio between I10 and I2 and the presence of a single peak is encompassed by Tice. It is emphasized that Tice generally teaches the inclusion of an ethylene-propylene copolymer without limiting either feature or characteristic and Applicant has not provided a conclusive showing of unexpected results for the claimed invention.
Regarding claim 5, the claims are directed to a multilayer film and limitations pertaining the method of producing an ethylene-propylene copolymer fail to further define the structure of the claimed article (multilayer film).
With respect to claim 7, Tice states that at least one of the skin layer and the core layer is formed with the disclosed composition and the claims are satisfied when all three of the layers (pair of skin layers and core layer) include the inventive composition of Tice.
As to claim 9, Tice states that “in certain embodiments”, a ratio of a thickness of one of the skin layers to a thickness of the core layer ranges between 1:20 and 2:1 (Page 11, Lines 3+). This corresponds with a minimum thickness ratio between the core layer and the overall film is 50%. However, the language “in certain embodiments” suggests that the disclosed ratios correspond with preferred embodiments and it is well taken that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. One of ordinary skill in the art would have found it obvious to form the core layer of Tice in accordance to the claimed invention absent a conclusive showing of unexpected results (ratio of 30% would correspond with a non-preferred embodiment, it being further noted that Tice is broadly directed to a film comprising at least 3 layers and films with larger number of layers would result in smaller ratios as claimed).
Regarding claim 10, Tice describes a film comprising a core layer, a pair of skin layers, and a pair of sub-skin layers (Page 10, Lines 26+). In such an instance, a first sub-skin layer corresponds with the claimed second core layer and a second sub-skin layer corresponds with the claimed third core layer. Tice also states that the inventive ethylene-based composition (which can be polyethylene or an ethylene-based copolymer) having a density of at least 0.924 g/cm3 and a melt index I2 as large as 1 g/10 min can be used in the sub-skin layers (claimed second and third core layers).
With respect to claim 11, as detailed above, an ethylene-propylene copolymer can be included at loadings as small as 10 percent by weight.
Regarding claim 12, a fair reading of Tice suggests a film formed entirely of ethylene-based polymers (see Table 16).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 August 26, 2026
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