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 .
Information Disclosure Statement
The information disclosure statement filed 9/6/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Specifically, the IDS cites Foreign Patent Document EP 0376681 A1 with a publication date of 12/28/1988, but a copy of the document has not been provided. The examiner notes a two-page document EP 0376681 A3 published on 7/4/1990 was filed on the same day of the IDS, but the reference was not cited. It is unclear what document Applicant intends to submit for consideration by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-18, in the reply filed on 7/1/2026 is acknowledged. The traversal is on the ground(s) that Maligie (US 2017/0066218) discloses at [0047] a film comprising two outer layers based on polymethylpentene. Applicant argues these layers would correspond to the claimed “surface layers,” but do not meet the claimed requirements. Additionally, Applicant argues the reference’s tie layer is not a surface layer because it is between an outer layer and an elongation layer. This is not found persuasive because the term “surface layer” is not specifically defined by the claim or the specification to exclude the presence of additional unrecited layers (e.g., the additional outer layer), which are encompassed by the present claims that use inclusive language (“comprising”). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The term “surface” only establishes that a surface exists, not that it defines, e.g., the outermost surface of the overall multilayer separating film as asserted by Applicant. Therefore, Maligie’s first tie layer meets the claimed requirements of the “first surface layer” as explained in the previous Office Action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/1/2026.
Claim Objections
Claim 6 is objected to because of the following informalities: in line 2, “(6)” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 3-4 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 3 recites the broad recitation “a DSC melting temperature according to ISO 11357-3 of at least 150° C” , and the claim also recites “preferably at least 155° C, more preferably at least 160° C, still more preferably at least 165° C.”
Claim 4 recites the broad recitation “a polyethylene or an ethylene copolymer”, and the claim also recites “preferably an LLDPE” which is the narrower statement of the range/limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
Claim(s) 1 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maligie (US 2017/0066218).
Regarding claim 1:
Maligie discloses a multilayer release film comprising a first outer layer comprising a first base polymer, a second outer layer comprising a second base polymer, and a number of additional layers, including tie layers [abstract; 0005-0007; 0027-0028; 0034]. The first outer layer comprises thermoplastic polymers, including polyolefins, and/or thermoplastic elastomers [0014]. The second outer layer comprises propylene-based elastomer [0023]. The release film has a thickness of about 0.0001-0.008 inches (2.54-203 µm) or about 0.002-0.0015 inches (50-38 µm) [0018; 0026; 0033; 0040].
Maligie discloses Example 4 of a release film comprising a first outer layer of polymethylpentene and a colorant, a first tie layer comprising 60 wt% of a thermoplastic elastomer and 40 wt% of a polypropylene, an elongation layer, a second tie layer comprising 60 wt% of a thermoplastic elastomer and 40 wt% of a polypropylene, and a second outer layer comprising 70 wt% of polymethylpentene and 30 wt% of a thermoplastic elastomer [0047]. Here, the first tie layer corresponds to the presently claimed first surface layer, the second tie layer corresponds to the presently claimed adhesion promoting layer, and either of the second tie layer or the second outer layer corresponds to the presently claimed second surface layer. Given that the term “surface layer” is not specifically defined by the specification or further limited within the claim to exclude the presence of additional unrecited layers (e.g., an additional outer layer) and that the claims use inclusive language (“comprising”), the examiner submits the presently claimed “first surface layer” encompasses the first tie layer of Maligie.
Regarding claim 7:
Maligie’s polymers are thermoplastic [0014]. Furthermore, given that Maligie discloses materials otherwise as claimed, the film would necessarily be broadly thermoformable as presently claimed.
Regarding claim 8:
Given that Maligie discloses materials otherwise as claimed, the film would necessarily be broadly cold-formable as presently claimed.
Claim Rejections - 35 USC § 103
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maligie (US 2017/0066218).
Regarding claim 4:
Maligie discloses a multilayer release film as previously explained. Maligie discloses polyethylene or ethylene copolymer rather than polypropylene can be used in the tie layer (first surface layer) [0038-0039].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to replace the polypropylene in the first tie layer of Example 4 with polyethylene given that the reference teaches they are substitutable polymers used for the same purpose.
Claim(s) 1-4 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sim (KR 960010450 B1).
Note: citations refer to the machine translation of KR ‘450 provided with this Office Action.
Regarding claims 1-2 and 4:
Sim discloses a multilayered film comprising a polyester elastomer layer, an adhesive layer, and a polyolefin layer (abstract, p1-2). The polyolefin comprises polypropylene or copolymers comprising propylene (p1-3). Polyolefin is added to the polyester elastomer layer to increase adhesion (p2-3). One of ordinary skill in the art would recognize the additive polyolefin would be less than the elastomer, which defines the layer identity. Example 3 uses a surface layer made from 12 kg of polyester elastomer and 3 kg of polyethylene (p4). The film has a thickness of 1-200 µm (p3).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select from the components disclosed by Sim, including the combination of a surface layer comprising polyester elastomer in greater proportion than an additive polyolefin and a polypropylene or copolymer of propylene, to provide a film in accordance with Sim’s teaching, and thereby arrive at the claimed film. Furthermore, 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 thickness of the film, including over values falling within the claimed range, to provide a film in accordance with Sim’s teaching and having the desired dimensions and mechanical properties desired for a given end use. 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).
While there is no disclosure that the multilayer film is a “separating” film as presently claimed, Applicant's attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., broadly “separating”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is a multilayer film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 3:
Sim is silent with regard to the melting temperature of the thermoplastic elastomer. The reference, however, teaches that films are prepared by first melting the polymer in an extruder, wherein the extruder’s temperature starts at 180°C and ends at 240°C for the polyester elastomer (p3). Therefore, one of ordinary skill in the art would be motivated to provide thermoplastic elastomers that melt at such temperatures. 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 melting temperature of the elastomer, including over values falling within the claimed range, to provide a polymer that can be melted in an extruder in accordance with Sim’s teaching.
Regarding claim 7:
Sim’s polymers are thermoplastic (p2). Furthermore, given that Sim discloses materials otherwise as claimed, the film would necessarily be broadly thermoformable as presently claimed.
Regarding claim 8:
Given that Sim discloses materials otherwise as claimed, the film would necessarily be broadly cold-formable as presently claimed.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sim (KR 960010450 B1) in view of Malfait et al. (EP 1283242).
Regarding claims 5-6:
Sim discloses a multilayered film comprising polypropylene and propylene copolymers as previously explained.
Sim is silent with regard to heterophasic polypropylene.
Such polymers were known in the art to have utility. For example, Malfait discloses films comprising heterophasic polymers to provide improved properties in a variety of fields [0001-0011]. In particular, the reference discloses a blend of a polypropylene random heterophasic block copolymer and a heterophasic polypropylene block copolymer to provide strength, elasticity, heat resistance, and other properties [0012-0017; 0021-0026].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use heterophasic polypropylene, including a mixture of two different heterophasic polypropylenes, as taught by Malfait to provide their known properties to the film taught by Sim.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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