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 .
Response to Amendment
The Amendment filed July 8, 2026 has been entered. Claims 1 and 5-20 remain pending in the application. The amendment to claim 19 has overcome the rejection under 35 U.S.C 112(b) previously set forth in the Non-Final Office Action mailed April 28, 2026.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/164093 (Kravitz) as evidenced by US 2021/0213721 (Wang et al.).
Regarding claim 1, Kravitz discloses a laminate comprising a first film (first substrate); a continuous coating comprising a clay mineral on the first film (adhesive layer); and a second film (second substrate); wherein the first film is laminated to the second film and the coating is contained at the interface between the first film and the second film (see claim 1). While Kravitz does not state the surface roughness of the first substrate, this claimed feature would have been obvious to one having ordinary skill in the art before the effective filing date since Kravitz teaches that the substrate may be a polyethylene film such as low density polyethylene, linear low density polyethylene, or high density polyethylene that is directionally oriented, including biaxially (see paragraph 0034). As explained at page 5, lines 9-25 of the present disclosure, and shown by the data in Table 1, the biaxial orientation process reduces the surface roughness substantially. Thus, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature or method step that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 5, Kravitz also discloses that the second film directionally (biaxially) oriented (see paragraph 0034).
Regarding claims 6-8, Kravitz also discloses that the coating has a coat weight from 0.5 to 7 grams per square meter (see paragraph 0018), which overlaps the claimed ranges.
Regarding claim 9, Kravitz also discloses that the clay may be vermiculite or montmorillonite (see paragraph 0006).
Regarding claim 10, while Kravitz does not state thickness of the final laminate, it is disclosed that the thickness of each substrate is typically 0.3 to 3 mils (see paragraph 0035), and the thickness of the adhesive may range from 1-3 micrometer (see paragraph 0047), thus a laminate having two substrates of 0.3 to 3 mils plus adhesive layer of 1-3 micrometers (0.039-0.118 mils) would yield a laminate ranging from 0.639 to 6.118 mils, which overlaps the claimed range of 0.5 to 3.0 mils. In the case where the claimed ranges "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).
Regarding claims 11 and 12, while Kravitz does not state the surface roughness of the first substrate, this claimed feature would have been obvious to one having ordinary skill in the art before the effective filing date since Kravitz teaches that the substrate may be a polyethylene film such as low density polyethylene, linear low density polyethylene, or high density polyethylene that is directionally oriented, including biaxially (see paragraph 0034). As explained at page 5, lines 9-25 of the present disclosure, the biaxial orientation process reduces the surface roughness substantially. Thus, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature or method step that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claim 13, Kravitz also discloses that the first film may be a high-density polyethylene (see paragraph 0034). While Kravitz does not state the actual density of the HDPE film used, Wang teaches that HDPE films conventionally have densities within the range of 0.94 to 0.97 g/cm3 (see paragraph 0026), as recited in the claim.
Regarding claim 14, Kravitz also discloses that the first film and the second film may comprises a co-extruded film structure (see paragraph 0036).
Regarding claim 15, Kravitz also discloses that the first layer may be a high-density polyethylene and the second layer may be a linear low density polyethylene (see paragraphs 0034 and 0037). While Kravitz does not state the actual density of the HDPE and LLDPE film used, Wang teaches that HDPE films conventionally have densities within the range of 0.94 to 0.97 g/cm3 (see paragraph 0026), and LLDPE films conventionally have densities within the range of 0.910 to 0.940 g/cm3 (see paragraph 0030), as recited in the claim.
Regarding claim 16, while Kravitz does not state the surface roughness of the first substrate, this claimed feature would have been obvious to one having ordinary skill in the art before the effective filing date since Kravitz teaches that the substrate may be a polyethylene film such as low density polyethylene, linear low density polyethylene, or high density polyethylene that is directionally oriented, including biaxially (see paragraph 0034). As explained at page 5, lines 9-25 of the present disclosure, the biaxial orientation process reduces the surface roughness substantially. Thus, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature or method step that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01).
Regarding claims 17-20, Kravitz also discloses that the first film and the second film comprise low density polyethylene, linear low density polyethylene, or high density polyethylene that is directionally oriented, including biaxially (see paragraph 0034), and may be a blend of one or more types or have two more layers (see paragraph 0037).
Response to Arguments
Applicant's arguments filed July 8, 2026 have been fully considered but they are not persuasive. In regard to the claimed surface roughness, applicant argues that “obviousness cannot be predicated on that which is unknown”. It is the Examiner’s position that merely discovering a previously unrecognized benefit or latent property does not make the property non-obvious. Applicant’s disclosure at page 5, lines 9-25 states that “the orientation process, known by the skilled worker, can reduce the surface roughness substantially”. Additionally, applicant’s Table 1 data shows that biaxially-oriented films meet the claimed surface roughness. Thus, the reference teaches all the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature or method step that results in the claimed effect or physical property outside of the presence of the claimed components. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see MPEP 2112.01). The claimed surface roughness of a film would naturally arise upon a known orientation process, whether or not the effect on surface roughness was previously unrecognized. Further evidence of the effect of the orientation process on surface roughness of films is shown in paragraph 0006 of JP 2000-334831 (machine translation included), where the average surface roughness of biaxially-oriented films is shown to be 0.003-025 micrometers (3-25 nm).
Applicant also argues that the films of the Wang reference are biaxially-oriented in both the machine direction and the cross direction, not merely the machine direction. It is the Examiner’s position that a biaxially oriented film satisfies the claim limitation of the film being machine direction oriented, since the claim does not require that it is only machine direction oriented. A biaxially-oriented film necessarily meets the claim limitation of being machine direction oriented.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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