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 1-4 and 7-10, in the reply filed on 1/16/2026 is acknowledged.
Claims 5-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/16/2026.
Claim Rejections - 35 USC § 112
Claims 1-4 and 7-10 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is directed to “A multilayer container, comprising a two-color molded article comprising an outer layer comprising a polyolefin resin and an inner layer comprising a polyamide resin”. The claim is indefinite because it is not clear what is encompassed by “a two-color molded article”. Although on its face the phrase appears to require a molded article having two colors, the specification and references in the art indicate the phrase has, or can have, a broader meaning. The specification does not provide an explicit definition of the phrase, but states at [0011] at page 8, lines 3-8 (paragraph [0034] of PGPub): “Also, the multilayer container of the present embodiment may contain a two-color molded article (two-layer container) having one polyolefin resin layer and one polyamide resin layer respectively, but may contain other layer(s) on the inner side or the outer side of the two-color container.” (emphasis added by examiner). This passage indicates the phrase “a two-color molded article” may be synonymous with the broader phrase “a two-layer container” (i.e., without a color requirement). Also, while the specification repeatedly uses the term “two-color,” there is no further description of any colors of the molded article and the demonstrated examples do not clearly indicate whether any colorants were used. Additionally, the specification at [0022] at page 14, lines 21-27 (paragraph [0060] of PGPub) discloses “The polyolefin resin layer may contain other components in addition to the polyolefin resin. Examples of the other components include resins other than the polyolefin resin, thermal stabilizers, photostabilizers, moisture-proofing agents, water-proofing agents, lubricants, spreading agents, pigments, and dyes.” Therefore, while the specification discloses pigments or dyes “may” be used in the polyolefin resin layer, it does not describe a requirement to do so, but rather teaches they are one of many optional components. Furthermore, the examiner has provided a webpage from Taisei Plas Co., Ltd. titled “What is two-color molding?” which states the phrase refers to a process “which involves injection molding two types of materials into a single product” and further states “Two-color molding is a molding method that combines different materials (resin, material, different colors, etc.) into one piece” (p1-2). This indicates the art recognizes the phrase may broadly mean a molded article comprising two different materials, and not necessarily two different colors. In view of the above, the examiner concludes it is not clear which definition should be used when ascertaining the scope of the claim, and therefore the claim is indefinite. Dependent claims are rejected for the same reason.
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.
Claim(s) 1-4 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-8 and 11-21 of copending Application No. 18/832,775. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims encompass a multilayer container comprising a polyolefin layer and a polyamide layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1:
Claim 1 of copending ‘775 discloses a multilayer container comprising a polyolefin layer and a polyamide layer, wherein the polyamide resin is formed from 70 ml% or more of m-xylylenediamine and 30 mol% or more of a linear aliphatic dicarboxylic acid having 4-20 carbons. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of linear aliphatic dicarboxylic acid, including over amounts within the claimed range, to provide a polyamide in accordance with copending claim 1, and thereby arrive at the claimed invention.
Although the copending claim is silent with regard to a “two-color” molded article, the examiner notes the above rejections under 35 USC 112. The examiner submits that the copending claim’s disclosure of a molded article comprising a layer of polypropylene and a layer of nylon meets the claimed “two-color molded article” because the phrase, based on the broadest reasonable definition, is considered to encompass a two-layer article as disclosed by the copending claims.
Although the copending claim is silent with regard to which layer is “outer” and which is “inner”, given that the copending claim discloses only a two-layer container, one of ordinary skill in the art would have been motivated to use the polyolefin layer in either position. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide the polyolefin layer as the outer layer and the polyamide layer as the inner layer to provide a container in accordance with copending claim 1, and thereby arrive at the claimed invention.
Additional features disclosed by the copending claims, including in dependent claims, but not required by the present claims are nevertheless encompassed by the present claims, which use inclusive language.
Regarding claims 2-4:
Copending claim 5 discloses the polyolefin comprises polypropylene. Furthermore, given that the polypropylene and the polyamide are the same as used in the claimed invention, they are expected to meet the claimed requirements.
Claim Rejections - 35 USC § 102
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Curie et al. (US 6,677,013) as evidenced by MX-Nylon Technical Datasheet (2021).
Regarding claims 1 and 3-4:
Curie discloses a multilayer plastic container comprising a layer of polypropylene and a layer of nylon (1:13+; 2:8+). A suitable nylon is MXD6, i.e., a polyamide made from 100 mol% m-xylylenediamine and 100 mol% adipic acid (3:18+). Example 7 discloses a multilayer container comprising inner and outer layers of polypropylene and a middle layer of MXD6 (6:30+). Although Curie discloses the nylon layer is a “middle” layer, such a layer is broadly considered to be an “inner” layer as presently claimed because it is not the outermost layer and so is an inner layer with respect to the outer layer (also see Curie at 2:59+).
Although Curie is silent with regard to a “two-color” molded article, the examiner notes the above rejections under 35 USC 112. The examiner submits that Curie’s disclosure of a molded article comprising a layer of polypropylene and a layer of nylon meets the claimed “two-color molded article” because the phrase, based on the broadest reasonable definition, is considered to encompass a two-layer article as disclosed by Curie.
Regarding claim 2:
Curie’s Example 7 uses nylon MXD6-6121 (6:30+). The MX-Nylon datasheet teaches the melting point of this resin is 237°C. This value is within the range of 20-120°C of the inherent melting point of polypropylene. Furthermore, both materials are the same as used in the present invention and so are expected to meet the claimed requirements.
Claim Rejections - 35 USC § 103
Claim(s) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Curie et al. (US 6,677,013).
Regarding claims 7-10:
Curie teaches the thickness of the outer layer is 5-10 mils and the thickness of the middle (i.e., present inner) layer is 0.1-2.0 mils (3:24+). These thicknesses provide ratios that overlap with the presently claimed ranges. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thicknesses of the polyamide layer and the polyolefin layer, including over values resulting in ratios falling within the claimed range, to provide the desired barrier, mechanical, and other properties desired for a given end use.
Claim Rejections - 35 USC § 102/103
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Maruo et al. (JP 2004-352985) as evidenced by NOVATEC HD datasheet (2022).
Note: citations refer to the machine translation of JP ‘985 filed by Applicant on 6/24/2025.
Regarding claim 1:
Maruo discloses a multilayer molded body comprising a polyamide as a fuel barrier [abstract; 0001]. The body is a container that comprises at least one layer of polyamide and at least one thermoplastic resin layer, wherein the resin layer comprises polyolefin [0030-0031]. The container can be a two-color molding [0031]. The polyamide comprises 70 mol% or more of m-xylylenediamine a linear aliphatic dicarboxylic acid having 4-20 carbon atoms, and isophthalic acid, wherein the ratio of the acids is 30:70 to 95:5 [0008].
Additionally, Example 8 discloses a bag made from two multilayer sheets sealed together, wherein each sheet comprises layers of: high-density polyethylene / adhesive / “polyamide 6” / adhesive / high-density polyethylene [0060]. Note that “polyamide 6” here refers to the polyamide made in Example 6, not conventionally known polyamide 6 (i.e., polycaprolactam). The polyamide of Example 6 comprises the polyamide of Example 2, which is made from about 100 mol of m-xylylenediamine, 81 mol of adipic acid, and 20 mol of isophthalic acid. The layer of polyamide in Example 8 is broadly considered to be an “inner” layer of the bag because it is not the outermost layer and so is an inner layer with respect to the outer layer. Therefore, the examiner submits the container of Example 8 anticipates the claimed invention.
Alternatively, Maruo’s general guidance provides a multilayer body comprising a polyolefin layer and a polyamide layer, wherein the polyamide is made from the same monomers as claimed in amounts that overlap the claimed amounts. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of linear aliphatic dicarboxylic acid, including over amounts within the claimed range, to provide a polyamide in accordance with Maruo’s teaching, and thereby arrive at the claimed invention.
Regarding claim 2:
Maruo teaches the melting point of the polyamide resin is 160-220°C [0018]. Such values are within the range of 20-120°C of the inherent melting points of several identified polyolefins, including polyethylene and polypropylene [0030]. Additionally, the melting point of the polyamide used in Example 2 and 8 is 207°C [Table 1 in original JP ‘985; additional machine translation below]. The commercial high-density polyethylene Novatec HD-HY540 has a melting point of 135°C as evidenced by the included Novatec HD datasheet.
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Regarding claim 3-4:
Maruo discloses polypropylene [0030].
Regarding claims 7-10:
Maruo discloses the thickness of the polyamide barrier layer is 0.001 to 1 mm, and the thickness of the thermoplastic resin layer is 0.01-20 mm [0031]. These thicknesses provide ratios that overlap with the presently claimed ranges. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thicknesses of the polyamide layer and the polyolefin layer, including over values resulting in ratios falling within the claimed range, to provide the desired barrier, mechanical, and other properties desired for a given end use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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