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 1-5, drawn to a thermally shrinkable multilayer film
Group II, claim 6, drawn to a method for producing the thermally shrinkable multilayer film.
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 and II appears to be the thermally shrinkable multilayer film. 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. Kammauff et al. (US 2022/0388748 A1) in view of Percec et al. (5,084,352) disclose a thermally shrinkable multilayer film.
6. Kammauff et al. disclose a multilayer polymer film comprising a core layer (intermediate layer) between two outermost layers (outer surface layer and inner surface layer) (see paragraph 0006). The outermost layers (outer surface layer and inner surface layer) comprise a blend of polyethylene such as LLDPE (linear low density polyethylene) and a cyclic olefin copolymer (see paragraph 0012). The core layer comprises (intermediate layer) comprises a blend of polyolefin resins such as a blend of HDPE and LDPE (see paragraphs 0010 and 0011). The total content of the polyethylene in the multilayer polymer film is greater than 50 wt% of the total weight of the multilayer polymer film (see paragraph 0011 and page 7, claim 2). The total content of cyclic olefin copolymer is less than 40 wt% of the total mass of the multilayer film (see paragraph 0012 ad page 7, claim 3). Further, Kammauff et al. disclose that the multilayer polymer film has shrinkage when heated (see Figure 3 and paragraphs 0020, 0025). That is the multilayer polymer film is a thermally shrinkable multilayer film.
7. Kammauff et al. do not disclose the core layer (intermediate layer) comprises a gas barrier resin.
8. Percec et al. disclose a multilayered structure comprising an inner layer comprising a high gas barrier polymer such as EVOH (gas barrier resin) as a polar polymer and a moisture resistant polymer such as polyolefin as non-polymer polymer (see col. 3, lines 54-60).
9. In light of motivation for using an inner layer comprising EVOH and polyolefin disclosed by Percec et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the core layer comprising EVOH polymer combined with polyolefin resins such as HDPE and LDPE resins in Kammauff et al. in order to provide gar barrier properties to the core layer, and thereby arrive at the claimed invention.
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 Eugene T. Perez on 02/10/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claim 6 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 1-5 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statements (IDS) submitted on 10/23/2024, 04/17/2025 and 07/25/2025 are considered and signed IDS forms are attached.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 11 recites “a cyclic olefin copolymer”, which should be “the cyclic olefin copolymer”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim 1, line 11, line 12, line 13 and line 14 recite “the multilayer film”, which should be “the thermally shrinkable multilayer film”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Claim 2, line 3 recites “a very low density polyethylene”, which should be “the very low density polyethylene”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Claim 2, line 4 recites “a linear low-density polyethylene”, which should be “the linear low-density polyethylene”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Claim 2, line 4 recites “a cyclic olefin copolymer”, which should be “the cyclic olefin copolymer”. Appropriate correction is required.
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 1-5 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 11 recites “at least one layer of the multilayer film contains a cyclic olefin copolymer”. The scope of the claim is confusing given that this limitation appears redundant given that the claim already requires at least one layer (outer surface layer and/or inner surface layer) of the multilayer film to contain a cyclic olefin copolymer. 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, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kammauff et al. (US 2022/0388748 A1) in view of Percec et al. (5,084,352).
Regarding claims 1, 2 and 4, Kammauff et al. disclose a multilayer polymer film comprising a core layer (intermediate layer) between two outermost layers (outer surface layer and inner surface layer) (see paragraph 0006).
The outermost layers (outer surface layer and inner surface layer) comprise a blend of polyethylene such as LLDPE (linear low density polyethylene) and a cyclic olefin copolymer (see paragraph 0012).
The core layer comprises (intermediate layer) comprises a blend of polyolefin resins such as a blend of HDPE and LDPE (see paragraphs 0010 and 0011).
The total content of the polyethylene in the multilayer polymer film is greater than 50 wt% of the total weight of the multilayer polymer film (see paragraph 0011 and page 7, claim 2).
The total content of cyclic olefin copolymer is less than 40 wt% of the total mass of the multilayer film (see paragraph 0012 ad page 7, claim 3).
Further, Kammauff et al. disclose that the multilayer polymer film has shrinkage when heated (see Figure 3 and paragraphs 0020, 0025). That is the multilayer polymer film is a thermally shrinkable multilayer film.
Kammauff et al. do not disclose the core layer (intermediate layer) comprises a gas barrier resin.
Percec et al. disclose a multilayered structure comprising an inner layer comprising a high gas barrier polymer such as EVOH (gas barrier resin) as a polar polymer and a moisture resistant polymer such as polyolefin as non-polar polymer (see col. 3, lines 54-60). As evidenced by the present specification, partially saponified ethylene vinyl acetate is also called ethylene vinyl alcohol (see page 12, lines 12-15).
In light of motivation for using an inner layer comprising EVOH and polyolefin disclosed by Percec et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the core layer comprising EVOH polymer combined with polyolefin resins such as HDPE and LDPE resins in Kammauff et al. in order to provide gar barrier properties to the core layer, and thereby arrive at the claimed invention.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kammauff et al. (US 2022/0388748 A1) in view of Percec et al. (5,084,352) as applied to claim 2 above, further in view of Uchida et al. (JP 2017137063 A). It is noted that the disclosures of Uchida et al. are based on a machine translation of the reference which is included in this action.
Regarding claim 3, Kammauff et al. in view of Percec et al. disclose the thermally shrinkable multilayer film as set forth above. Kammauff et al. in view of Percec et al. do not disclose cyclic olefin copolymer having a glass transition temperature as presently claimed.
Uchida et al. disclose a heat-shrinkable film comprising a polyolefin-based resin such as LLDPE combined with cyclic olefin resin (see paragraphs 0047-0050). The cyclic olefin polymer has a glass transition temperature of 120 °C or less in order to improve dispersibility in a polyethylene resin and heat shrinkability (see paragraph 0059).
In light of motivation for using cyclic olefin polymer having a glass transition temperature of 120 °C or less disclosed by Uchida et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a cyclic olefin polymer having a glass transition temperature of 120 °C or less in the outermost layers of Kammauff et al. in view of Percec et al. in order that the cyclic olefin polymer has improved dispersibility in a polyethylene resin and improves heat shrinkability, and thereby arrive at the claimed invention.
Regarding claim 5, Kammauff et al. in view of Percec et al. and Uchida et al. disclose a thermally shrinkable multilayer film as set forth above. Given that Kammauff et al. in view of Percec et al. and Uchida et al. disclose the thermally shrinkable multilayer film including outer surface layer, intermediate layer and inner surface layer identical to that presently claimed including polyolefin resin and cycloolefin resin with their proportion overlapping with that presently claimed, the thermally shrinkable multilayer film necessarily inherently has a tensile modulus of elasticity in a transverse direction identical to that presently claimed.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ito et al. (JP 2018053211 A) disclose a multilayer film comprising a layer (inner surface layer) comprising cyclic olefin resin, polyethylene resin and calcium carbonate, and a layer (outer surface layer) comprising polyethylene and calcium carbonate (see Abstract). The polyethylene resin can be linear low density polyethylene, i.e. LLDPE (see paragraph 0026). The amount of the cyclic olefin resin is 1 to 40 wt% of the entire multilayer film (see paragraph 0036). The amount of polyethylene resin is 1 to 84 wt% of the entire multilayer film (see paragraph 0037). It is noted that the disclosures of Ito et al. are based on a machine translation of the reference which is included in this action.
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