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 § 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 1-13, 15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 10,563,030 Gotrik et al.
Regarding claim 1, Gotrik teaches a film structure 100 (column 1, lines 7-9) comprising:
a polymeric substrate 140 (column 5, lines 29-32) having an inorganic coating 120 thereon (figure 1); and
a polymeric buffer layer 130 (column 5, lines 44-52) positioned between the polymeric substrate and the inorganic coating (figure 1),
wherein the inorganic coating comprises a wave structure (figure 1) characterized by a wavelength L1 in a range of from 2 nm to 400 nm (0.002 to 0.4 microns, column 3, lines 60-67).
Gotrik does not explicitly teach the amplitude. However, the figures show that the amplitude is approximately 2-3 times the thickness of the inorganic coating (figure 1), where the thickness of the inorganic coating is 5 to 100 nm (column 7, lines 18-22). Therefore, the amplitude would be 10 to 300 nm (0.01 to 0.3 microns). Please note that while the figures may not be to scale, the figures lend guidance regarding the desired structure and arrangement of the layers.
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught wavelength range of 0.002 to 0.4 microns reads on the claimed range of 0.3 to 15 microns, and the taught amplitude range of 0.01 to 0.3 microns reads on the claimed range of 0.1 to 5 microns.
Regarding claim 2, Gotrik teaches that the polymeric substrate comprises polyvinyl chloride polymer (column 5, lines 20-23).
Regarding claim 3, Gotrik teaches that the polymeric substrate comprises a polyvinyl chloride film (column 5, lines 20-23).
Regarding claim 4, Gotrik teaches that the polymeric substrate comprises a thickness of 52.5 microns (column 10, lines 22-25).
Regarding claim 5, Gotrik teaches that the inorganic coating comprises a thickness in a range of from 5 nm to 100 nm (column 7, lines 18-22).
Regarding claim 6, Gotrik teaches that the polymeric buffer layer comprises a thickness in a range of from 0.25 to 10 microns (column 6, lines 43-48). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.25 to 10 microns reads on the claimed range of 0.5 to 9 microns.
Regarding claim 7, Gotrik teaches that a ratio of the thickness of the polymeric buffer layer (0.25 to 10 microns, column 6, lines 43-48) to the thickness of the inorganic coating (0.005 to 0.1 microns) is in the range of from 2.5 to 2000. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 2.5 to 2000 reads on the claimed range of 30 to 120.
Regarding claims 8 and 9, Gotrik does not explicitly teach the Young’s modulus. However, Gotrik does teach that the modulus/thickness relationship leads the particular bucking deformations (column 7, lines 24-43). Therefore, based on this teaching and the disclosed buffer layer thickness of 0.25 to 10 microns (column 6, lines 43-48), it is the Examiner’s position that it would have been within the purview of one of ordinary skill in the art before the effective filing date of the invention to choose the appropriate Young’s modulus for the buffer layer in order to arrive at the particular wave structure desired for the inorganic coating.
Regarding claim 10, Gotrik teaches that the polymeric buffer layer comprises a polyolefin-based polymer (column 5, lines 44-55).
Regarding claim 11, Gotrik teaches that the inorganic coating comprises a metal oxide (column 6, lines 59-65).
Regarding claim 12, Gotrik teaches that the inorganic coating is a metal oxide (column 6, lines 59-65) capable of blocking ultraviolet (UV) light (where the instant specification, paragraph 0040 teaches that metal oxides block UV light such that Gotrik’s metal oxide would also block UV light).
Regarding claim 13, Gotrik teaches that the inorganic coating comprises silicon oxide (column 6, lines 59-65).
Regarding claim 15, Gotrik teaches that the wave structure comprises a plurality of waves formed in a machine direction and a transverse direction (column 4, lines 40-44).
Regarding claim 18, Gotrik teaches a lacquer 110 on a surface of the inorganic coating (figure 1).
Regarding claim 19, Gotrik teaches that the lacquer has a thickness in a range of from 0.25 to 10 microns (column 6, lines 43-48). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 0.25 to 10 microns reads on the claimed range of 0.5 to 0.9 microns.
Regarding claim 20, Gotrik teaches that the polymeric buffer layer is a first polymeric buffer layer, and the lacquer comprises a second polymeric buffer layer comprising the same properties as the first polymeric buffer layer (column 5, lines 43-44, where if first and second buffer layers are made of the same materials, they would have the same properties).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Gotrik et al with evidence from RefractiveIndex.Info.
Regarding claim 14, Gotrik teaches that the inorganic coating comprises silicon dioxide (silica, column 6, lines 59-65), but does not teach the RI. RefractiveIndex.Info teaches that the refractive index of silicon dioxide is 1.4 (page 1).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Gotrik et al with evidence from Translucent vs Transparent vs Opaque.
Regarding claims 16 and 17, Gotrik teaches the film structure but does not explicitly teach the transparency or haze. Gotrik does, however, teach that the film is translucent (column 12, lines 49-53). According to Translucent vs Transparent vs Opaque, translucency is a result of both high transmission and high haze (page 4). The reference also states that a transmission of ≥85-90% is a transparent material with a clear, visible image, a transmission of 20-80% is a translucent material with a diffused clarity, and a transmission of <5-10% is an opaque material with no image (page 3). Furthermore, PP (taught by Gotrik column 5, lines 29-32), has a transmission of 30-70% and a haze of 20-80% (Translucent vs Transparent vs Opaque page 6).
Therefore, it is reasonable to expect that Gotrik’s translucent material would have a high transmission of 20% or more with a high haze of 20% or more.
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught transmission of 20% or more reads on the claimed transmission of at least 85%, and the taught haze of 20% or more reads on the claimed haze of at least 60%.
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, 4, 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/022,308 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations are included in both applications (please see table below).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Limitation in instant application
Limitation in copending application
Difference
Reason why not patentably distinct
A film structure
A durable barrier film
Presence of durable barrier limitation
Instant invention also serves as a durable barrier
A polymeric substrate
A polymeric substrate layer
An inorganic coating on the polymeric substrate
An inorganic coating on the polymeric substrate
A polymeric buffer between the substrate and coating
A polymeric buffer between the substrate and coating, in direct contact with the coating
Direct contact
Not excluded by instant invention
Inorganic wave structure
Inorganic wave structure
Wave amplitude of 0.1 to 5 microns
Wave amplitude of 0.25 to 1.0 microns
Amplitude value
Overlapping ranges
Wavelength of 0.3 to 15 microns
Wavelength of 2 to 5 microns
Wavelength value
Overlapping ranges
Substrate thickness of 5 to 100 microns (claim 4)
Substrate thickness of 10 to 100 microns
Thickness value
Overlapping ranges
Buffer layer : coating thickness ratio (claim 7)
Buffer layer : wave amplitude ratio
Coating thickness vs amplitude height
Corresponding related values
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
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