DETAILED ACTION
This is an Office action based on application number 18/853,881 filed 3 October 2024, which is a national stage entry of PCT/EP2023/058737 filed 4 April 2023, which claims priority to EP22166862.7 filed 6 April 2022. Claims 16-30 are pending. Claims 1-15 are canceled.
Amendments to the claims, filed 3 October 2024, have been entered into the above-identified application.
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 § 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.
Claims 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 17 recites:
PNG
media_image1.png
123
671
media_image1.png
Greyscale
The use of the term “and/or” renders the claim indefinite because it is not clear what limitations are required or optional.
For the purpose of prosecution, each instance of “and/or” is construed as “or” as the broadest reasonable interpretation.
The recitation of multiple ranges, each narrower than the other, renders the claim 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.
For the purpose of prosecution, those prior art teachings that read on the broadest range meet the limitations of the claim.
Claims 18-19 and 21-28 recite multiple instances of “and/or” and multiple ranges, each narrower than the other.
The use of the term “and/or” renders the claim indefinite because it is not clear what limitations are required or optional.
For the purpose of prosecution, each instance of “and/or” is construed as “or” as the broadest reasonable interpretation.
The recitation of multiple ranges, each narrower than the other, renders the claim 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.
For the purpose of prosecution, those prior art teachings that read on the broadest range meet the limitations of the claims.
Claim 21 further recites that the lower molecular weight fraction (C) of the ZNCP is a homopolymer of ethylene having a comonomer content in a range of 0.25 mol-% and/or 0 to 2.0 mol-%. It is unclear how a homopolymer of ethylene can have a comonomer content of greater than 0 mol-% because, as a homopolymer, the ethylene homopolymer does not comprise any monomers other than ethylene.
For the purpose of prosecution, those prior teachings meeting the claimed ethylene homopolymer meet the limitations of the claim.
Claim 28 further recites the limitation “wherein said multilayered film has a sealing initiation temperature determined in a specification”.
It is unclear as to what “determined in a specification” refers.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16-30 are rejected under 35 U.S.C. 103 as being unpatentable over Jamieson et al. (WIPO International Publication No. WO 2019/081611 A1) (Jamieson).
Regarding instant claim 16 and 23:
Jamieson discloses a multilayer film comprising at least three layers, with outer layers (A) and (C) and a core layer (B), wherein layer (A) acts as a sealing layer (page 4, line 24 to page line 2). Said layer (C) meets the claims skin layer.
Jamieson further discloses that the core layer comprises up 30 wt% of a multimodal ethylene polymer (A) (page 14, lines 26-28).
Jamieson further discloses that the multimodal polymer of ethylene (A) is produced using a single site catalyst comprising an organometallic compound (Q) that includes any metallocene of a transition metal (page 17, line 31 to page 18, line 4).
Jamieson further discloses that the multimodal ethylene polymer (A) has:
a density of 915 to 930 kg/m3 (page 6, lines 4-7);
an MFR2 of 0.5 to 10 g/10 min (according to ISO 1133 at 190°C under 2.16 kg load) (page 6, line 18-19); and
MFR21/ MFR2 of 13 to 35 (MFR21 at 190°C under 21.6 kg load) (page 6, line 20).
Jamieson further discloses that the layer (B) comprises a multimodal ethylene terpolymer of ethylene and at least two C4-10 alpha olefin comonomers (Bt) (page 10, lines 22-25) having:
a density of 910 to 940 kg/m3 (page 10, line 26); and
an MFR5 of 0.1 to 10 g/10 min (190°C, 5 kg load, ISO 1133) (page 11, lines 8-10; page 29, lines 20-26).
Jamieson further discloses that the multimodal ethylene terpolymer is formed using a Ziegler Natta catalyst (page 14, lines 17-18).
With the multimodal ethylene polymer (A) comprising up to 30 wt%, the balance of the layer (B) is construed to be composed of the ethylene terpolymer (Bt) (i.e., 70 wt% or greater).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 17:
Jamieson further discloses that the multimodal polymer of ethylene (A) comprises a component (Ai) which is an ethylene 1-butene copolymer and an ethylene polymer component (Aii) which is an ethylene 1-hexene copolymer (page 6, lines 28-31), the scope of which encompasses an embodiment wherein the (Ai) consists of two ethylene polymer fractions.
Jamieson further teaches that the specific modality, i.e., the difference between the comonomer type and comonomer content between the ethylene polymer (Ai) and (Aii) contribute to highly advantageous sealing properties, excellent sealing initiation temperature, and advantageous optical properties.
Since the instant specification is silent to unexpected results, the specific amount of 1-butene and/or 1-hexene are not considered to confer patentability to the claims. As sealing properties and advantageous optical properties are variables that can be modified, among others, by adjusting the modality of the polymer through the selection of the type and amount of comonomer, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of comonomer in the prior art to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 18:
Jamieson further discloses that component (Ai) has an MFR2 of 1 to 50 g/10 min, and ethylene polymer component (Ai) has a higher MFR2 than ethylene polymer (Aii) (page 7, lines 17-20).
Jamieson further discloses that a ratio of the MFR2 of (Ai) to the MFR2 of the final multimodal polymer of ethylene (A) is 2 to 50 (page 7, lines 21-24).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Note – although Jamieson does not disclose each limitation of the claim, said limitations are separated by “and/or” transitional phrases. As discussed above, the broadest reasonable interpretation of such transitional phrase is “or”, and, if the prior art meets at least one of the claimed limitations, the prior art reads on the claims as the other limitations are optional.
Regarding instant claim 19:
Jamieson further discloses that the multimodal polymer of ethylene (A) has a density of 915 to 930 kg/m3 (page 9, lines 30-31).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Note – although Jamieson does not disclose each limitation of the claim, said limitations are separated by “and/or” transitional phrases. As discussed above, the broadest reasonable interpretation of such transitional phrase is “or”, and, if the prior art meets at least one of the claimed limitations, the prior art reads on the claims as the other limitations are optional.
Regarding instant claim 20:
Jamieson further discloses that the multimodal polymer of ethylene (A) is produced using a single site catalyst comprising an organometallic compound (Q) comprising a metallocene of a transition metal (page 17, lines 31-32 to page 19, line 6).
While Jamieson does not explicitly disclose the metallocene complex of the claim, such a limitation is tantamount to a product-by-process limitation (i.e., the claimed multimodal polymer of ethylene is produced using a specific catalyst).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, since Jamieson discloses the multimodal ethylene polymer, Jamieson meets the limitations of the product-by-process limitations, absent evidence of criticality.
Regarding instant claim 21:
Jamieson further discloses that the layer (B) comprises a multimodal ethylene terpolymer of ethylene and at least two C4-10 alpha olefin comonomers (Bt) (page 10, lines 22-25).
Jamieson further discloses that the (Bt) comprises a lower molecular weight component (Bti) and a higher molecular weight component (Btii) (page 13, lines 1-9), i.e., the (Bti) has a lower molecular weight than the (Btii).
Jamieson further discloses that the (Bti) is an ethylene homopolymer (page 13, lines 10-11), which is construed to have a comonomer content of mol-% as homopolymer does not have comonomers.
Jamieson further discloses that the high molecular weight component (Btii) is an ethylene butene hexene terpolymer (page 13, lines 25-27).
Jamieson further discloses that the LMW (Bti) has:
an MFR2 of at least 50 g/10 min (page 14, lines 1-4); and
a density of 940 to 975 kg/m3 (page 14, lines 5-6)
Jamieson further discloses that the higher molecular weight component has a lower MFR2 and density than the lower molecular weight component (page 14, lines 10-11).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 22:
The scope of Jamieson is construed to encompass, within its scope, a low molecular weight component (Bti) composed of multiple ethylene homopolymer fractions.
Jamieson further discloses that the density of the component (Bti) has a density of 940 to 975 kg/m3 (page 14, lines 5-6) (i.e., those multiple ethylene homopolymer fractions have a density within the disclosed range).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Note – although Jamieson does not disclose each limitation of the claim, said limitations are separated by “and/or” transitional phrases. As discussed above, the broadest reasonable interpretation of such transitional phrase is “or”, and, if the prior art meets at least one of the claimed limitations, the prior art reads on the claims as the other limitations are optional.
Regarding instant claim 24:
Jamieson further discloses that layer (C) comprises a multimodal polymer of ethylene (A) (page 5, lines 11-12), wherein said layer (C) reads on the claimed skin layer.
Jamieson further discloses that the multimodal polymer of ethylene (A) is produced using a single site catalyst comprising an organometallic compound (Q) that includes any metallocene of a transition metal (page 17, line 31 to page 18, line 4).
Jamieson further discloses that at least 60% of the layer (C) is formed of the multimodal polymer of ethylene (A) and an LDPE component is present in an amount of 1 to 20 wt% (page 24, lines 23-31).
Jamieson further discloses that any LDPE has an MFR2 0.1-20 g/10 min and a density of 905-940 kg/m3 (page 10, lines 13-19).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 25:
Jamieson further discloses that layer (A) comprises a multimodal polymer of ethylene (A) (page 5, lines 11-12), wherein said layer (C) reads on the claimed skin layer.
Jamieson further discloses that the multimodal polymer of ethylene (A) is produced using a single site catalyst comprising an organometallic compound (Q) that includes any metallocene of a transition metal (page 17, line 31 to page 18, line 4).
Jamieson further discloses that at least 60% of the layer (C) is formed of the multimodal polymer of ethylene (A) (page 24, lines 23-31).
It is noted that the ranges disclosed by Jamieson overlap and or include the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 26:
Jamieson further discloses that the films have a thickness of 300 μm or less and each layer of the films forms at least 10% of the thickness of the film (page 27, lines 20-28). Such a disclosure is construed to encompass those thickness ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 27:
Jamieson further discloses that the film has a tensile modulus in the machine direction (MD) of 250 to 500 MPa (page 28, lines 5-7); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Note – although Jamieson does not disclose each limitation of the claim, said limitations are separated by “and/or” transitional phrases. As discussed above, the broadest reasonable interpretation of such transitional phrase is “or”, and, if the prior art meets at least one of the claimed limitations, the prior art reads on the claims as the other limitations are optional.
Regarding instant claim 28:
Jamieson further discloses that the film has a seal initiation temperature of less than 100°C (page 28, lines 13-17); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 29:
Jamieson discloses the multilayer film composed of polyethylene-based polymers as cited in the rejection of claim 16, above.
Jamieson does not disclose any further elements required in the film to perform its intended use; therefore, Jamieson is construed to meet the limitations of the claim.
Regarding instant claim 30:
Jamieson further discloses that the films of the invention are used in packaging of food and healthcare products (page 28, lines 25-27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 08/26/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
Prosecution Insights