DETAILED ACTION
1. 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
REQUIREMENT FOR UNITY OF INVENTION
2. As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
3. As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
4. Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-3 and 6, drawn to a recyclable laminate structure.
Group II, claim 4, drawn to a recycled article.
Group III, claim 5, drawn to a packaging article.
Group IV, claims 7 and 8, drawn to a process for producing a recyclable laminate structure.
5. The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The technical feature of Groups I, II, III and IV appears to be the recyclable laminate structure. However, the technical feature of Group I cannot be a special technical feature under PCT Rule 13.2 because the technical feature is shown in the prior art. Amici et al. (EP 2921519 A1 cited in IDS) disclose a recyclable laminate structure.
6. Amici et al. disclose a multilayer structure (laminate structure) comprising a sealing layer on a surface of a substrate (see Abstract). The sealing layer is formed by application of aqueous dispersion (recyclable polyolefin based dispersion composition) comprising polyethylene, stabilizing agent and neutralizing agent (see Abstract and paragraphs 0019, 0037, 0039). The polyethylene is identical to polyolefin utilized in the present invention (see page 5, line 6 of present specification). That is, polyethylene is recyclable polyolefin. The stabilizing agent such as ethylene-acrylic acid (see paragraph 0037) is identical to polar component utilized in the present invention (see page 7, line 6 of present specification). The stabilizing agent is neutralized with a neutralizing agent (see paragraph 0039). That is, ethylene-acrylic acid will necessarily be present as a salt (i.e. polar component present as salt). The neutralizing agent such as ammonium hydroxide (see paragraph 0039) is identical to neutralizing agent utilized in the present invention (see page 7, line 22 of present specification). Accordingly, given that the aqueous dispersion including polyolefin-based polymer, polar component present as a salt and neutralizing agent are identical to that presently claimed, the aqueous dispersion is a recyclable polyolefin based dispersion. The aqueous dispersion is applicable via a known application system (see paragraph 0063). The substrate can be made of polyethylene (see paragraph 0045). The polyethylene is identical to polyolefin used for the substrate utilized in the present invention (see page 2, line 18 of present specification). Therefore, the polyethylene is recyclable polyolefin.
7. Accordingly, Amici et al. disclose the recyclable polyolefin based dispersion composition applied on a substrate (first substrate layer).
8. Amici et al. do not disclose “a recyclable laminate structure with improved recyclability properties”. While there is no disclosure that the laminate structure is “a recyclable laminate structure with improved recyclability properties” as presently claimed, applicants 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.
9. 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. a recyclable laminate structure with improved recyclability properties, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art laminate structure and further that the prior art structure which is a laminate structure identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
10. Since Applicant’s inventions do not contribute a special technical feature when viewed over the prior art they do not have a single general inventive concept and so lack unity of invention. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
11. Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
12. The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
13. Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
14. The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
15. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
16. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
17. During a telephone conversation with Ted Barthel on 02/09/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-3 and 6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 4, 5, 7 and 8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 1-3 and 6 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 10/14/2024 is considered and signed IDS form is attached.
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 1-3 and 6 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, line 1 recites “improved recyclability properties”. The scope of the claim is confusing given that it is not clear what is meant by “improved” properties or what the improvement is in comparison to. This rejection affects all dependent claims.
Claim 1, lines 4-5 recites “applicable via a known application system”. It is not clear what is meant by “known application system” and what kind of process is considered as “known application system”. This rejection affects all dependent claims.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Amici et al. (EP 2921519 A1 cited in IDS).
Regarding claims 1 and 2, Amici et al. disclose a multilayer structure (laminate structure) comprising a sealing layer on both surfaces of a substrate (see Abstract). That is, sealing layer/substrate/sealing layer.
The sealing layer is formed by application of aqueous dispersion (recyclable polyolefin based dispersion composition) comprising polyethylene, stabilizing agent and neutralizing agent (see Abstract and paragraphs 0019, 0037, 0039).The polyethylene is identical to polyolefin utilized in the present invention (see page 5, line 6 of present specification). That is, polyethylene is recyclable polyolefin. The stabilizing agent such as ethylene-acrylic acid (see paragraph 0037) is identical to polar component utilized in the present invention (see page 7, line 6 of present specification). The stabilizing agent is neutralized with a neutralizing agent (see paragraph 0039). That is, ethylene-acrylic acid will necessarily be present as a salt (i.e. polar component present as salt). The neutralizing agent such as ammonium hydroxide (see paragraph 0039) is identical to neutralizing agent utilized in the present invention (see page 7, line 22 of present specification). Accordingly, given that the aqueous dispersion including polyolefin-based polymer, polar component present as a salt and neutralizing agent are identical to that presently claimed, the aqueous dispersion is a recyclable polyolefin based dispersion. The aqueous dispersion is applicable via a known application system (see paragraph 0063).
The substrate can be made of polyethylene (see paragraph 0045). The polyethylene is identical to polyolefin used for the substrate utilized in the present invention (see page 2, line 18 of present specification). Therefore, the polyethylene is recyclable polyolefin.
Accordingly, Amici et al. disclose recyclable polyolefin based dispersion composition for sealing layer/ substrate (first substrate)/ recyclable polyolefin based dispersion composition for sealing layer (second substrate).
Amici et al. do not disclose “a recyclable laminate structure with improved recyclability properties”.
While there is no disclosure that the laminate structure is “a recyclable laminate structure with improved recyclability properties” as presently claimed, applicants 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. a recyclable laminate structure with improved recyclability properties, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art laminate structure and further that the prior art structure which is a laminate structure identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Further, given that recyclable laminate structure including a first substrate layer, a second substrate layer and a recyclable polyolefin-based dispersion comprising a polyolefin-based polymer, a polar component present as salt and a neutralizing agent identical to that presently claimed, the recyclable laminate structure necessarily inherently is a mechanically recyclable multilayer laminate.
In light of the overlap between the claimed recyclable laminate structure and that disclosed by Amici et al., it would have been obvious to one of ordinary skill in the art to use a recyclable laminate structure that is both disclosed by Amici et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 3, Amici et al. disclose the recyclable laminate structure as set forth above. Further, Amici et al. disclose that the aqueous dispersion is applied using gravure process (application system) (see paragraph 0063).
Alternatively, it is noted that “[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, absent evidence of criticality regarding the presently claimed process and given that Amici et al. meets the requirements of the claimed product, Amici et al. clearly meet the requirements of present claims.
Regarding claim 6, Amici et al. disclose the aqueous dispersion such as IPOD-1 is applied on a substrate, followed by drying (see paragraph 0062). That is substrate layer is dried post lamination prior to use.
Alternatively, although Amici et al. do not explicitly disclose “the first substrate layer is dried post lamination prior to use”, it is noted that “[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, absent evidence of criticality regarding the presently claimed process and given that Amici et al. meets the requirements of the claimed product, Amici et al. clearly meet the requirements of present claim.
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 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 11-22 of copending Application No. 18/275,150. Although the claims at issue are not identical, they are not patentably distinct from each other because of following reasons.
Copending application discloses a coated film having improved recyclability properties (recyclable laminate structure) comprising a coating layer (recyclable polyolefin based dispersion composition) and all-polyethylene multilayer film comprising a first layer (first substrate layer) and a second layer (second substrate layer), wherein the coating layer is made from a dispersion comprising at least one polymeric dispersant (polar component), neutralizing agent, and polyolefin base resin. The differences between the present claims and the copending claims are that copending claims (i) do not disclose that the coating layer is applicable via known application system, wherein the known application system is gravure process (ii) do not disclose the substrate layer is dried post lamination prior to use (iii) do not disclose mechanically recyclable multilayer laminate (iv) disclose a coating layer having a gloss and a haze (v) disclose a specific polyolefin in the coating layer (vi) disclose a specific polymeric dispersant (polar component) in the coating layer (vii) disclose a specific neutralizing agent in the coating layer and (viii) disclose a specific first layer and a specific second layer
Regarding (i) and (ii), it is noted that “[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, absent evidence of criticality regarding the presently claimed process and given that copending application meets the requirements of the claimed product, copending application clearly meet the requirements of present claims.
Regarding (iii), given that coated film comprises a recyclable polyolefin based dispersion, a first layer and a second layer as claimed, the coated film is mechanically recyclable multilayer laminate.
Regarding (iv), the specific coating layer of copending application is within the broad disclosure of the recyclable polyolefin based dispersion of present application.
Regarding (v), (vi) and (vii), the specific polyolefin, specific polymeric dispersant and specific neutralizing agent of copending application is within the broad disclosure of polyolefin, polar component and neutralizing agent of present application. Further, given that polymeric dispersant is present along with neutralizing agent, the polymeric dispersant is necessarily present as a salt.
Regarding (viii), the specific first layer and the specific second layer in copending application is within the broad disclosure of the first substrate and the second substrate in present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787