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 .
Response to Amendment
Amendments to the claims, filed on 6/23/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1 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 1 is rejected because it states “10 to 70 mass% of a 1-butene/a-olefin copolymer (B),” but additionally states “and the content of the propylene-based polymer (A) is equal to or more than the content of the copolymer (B), “ which would suggest to one of ordinary skill in the art at the time of invention that the content of the copolymer (B) would have to be something less than or equal to 50 mass%. Therefore, the required composition and its contents of propylene-based polymer (A) and copolymer (B) would have been unclear to one of ordinary skill in the art at the time of invention.
Claim Rejections - 35 USC § 103
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Akai et al (US 2015/0225623 A1).
Akai teaches a non-oriented film (e.g., unstretched) comprising a substrate layer (e.g., base film) (para 101-107) and a sealant layer composed of a resin composition comprising 99 to 1 mass% (e.g, parts by mass) of a propylene-based polymer (A) (e.g., X), and 1 to 99 mass% (e.g, parts by mass) of a 1-butene/α-olefin copolymer (B) (e.g., Y), provided that a total of the propylene-based polymer (A) and the copolymer (B) is 100 mass% (e.g., wherein the total of the olefin polymer (X) and the 1- butene/α-olefin copolymer (Y) in the composition is 100 parts by mass) (para 12-13).
Akai further teaches wherein the propylene-based polymer (A) (e.g., X-1) has a melting point measured by differential scanning calorimetry of 120°C or higher and 150°C or lower, and contains greater than 50 mol % of a propylene-derived constitutional unit (e.g., polypropylene); and the copolymer (B) (e.g., Y) has a melting point measured by differential scanning calorimetry of lower than 120°C (e.g., preferably not more than 120°C ) and contains 99.9 to 70 mol % of a 1-butene-derived constitutional unit (e.g.., 1-butene) and 0.1 to 30 mol % of a constitutional unit derived from an α-olefin having 2 or 3 carbon atoms (e.g., ethylene or propylene) or 5 to 12 carbon atoms, provided that a total of the 1-butene-derived constitutional unit and the a-olefin-derived constitutional unit is 100 mol% (e.g., wherein the total of the 1-butene and the one or more α-olefins selected from ethylene, propylene and C5 to C12 olefins is 100 mol %) (para 34-39, 47, 57, 124).
Akai further teaches heat seal layers formed of the inventive composition containing the propylene polymer (X-1) are usually 1 µm to 20 µm (i.e., thickness) and, base layers are generally 10 to 1000 µm (i.e., thickness) (para 108).
All of the ranges suggested by Akai substantially overlap that of the instant claim. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Akai, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
With regard to the limitation “and the content of the propylene-based polymer (A) is equal to or more than the content of the copolymer (B);” "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Furthermore, Akai teaches the composition should demonstrate excellent low-temperature heat sealing properties but are free from stickiness, a heat seal strength in a fixed range when heat sealing takes place at low temperatures, and a reduction in the change in heat seal strength with time; so, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of propylene-based polymer (A) and copolymer (B) in relation to one another to achieve these properties.
Response to Arguments
Applicant's arguments filed 6/23/26 have been fully considered but they are not persuasive.
Applicant contends that Akai does not teach or suggest any relationship between the relative amounts of the corresponding polymers and peel appearance, nor does Akai recognize peel appearance as a property that can be controlled by selecting the relative contents of these polymers, let alone that improved peel properties can be achieved when the content of the propylene-based polymer (A) is equal to or more than the content of the copolymer (B), as recited in the claims.
This is not persuasive. With regard to the limitation “and the content of the propylene-based polymer (A) is equal to or more than the content of the copolymer (B);” "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Furthermore, Akai teaches the composition should demonstrate excellent low-temperature heat sealing properties but are free from stickiness, a heat seal strength in a fixed range when heat sealing takes place at low temperatures, and a reduction in the change in heat seal strength with time; so, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of propylene-based polymer (A) and copolymer (B) in relation to one another to achieve these properties.
In response to applicant's argument that the embodiment of instant claim 1 demonstrates better peel appearance and improved peel properties, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 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 NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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