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 .
Response to Amendment
The amendment filed on 28 August 2026 is acknowledged.
Election/Restrictions
The election without traverse of Species A1, B2, and C1 in the reply filed on 28 August 2026 is acknowledged. However, it is noted that the Rem. 1 statement regarding Species B1 being generic to Species B2 is found persuasive (see claims 7, 9, and 10), and so the restriction between Species B1-B2 is hereby withdrawn.
Claims 14 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being respectively drawn to nonelected Species A2 and C2, there being no allowable generic or linking claim. It is noted that the non-elected species will be eligible for rejoinder if amended to include allowable subject matter and to address any 35 U.S.C. 112 or other issues. If it is believed that one or more of the withdrawn claims distinguishes over the applied prior art, then a detailed explanation to this effect made in reply to this Office action will be considered.
Response to Remarks
Remarks submitted 28 August 2026 addressing potentially applicable prior art are addressed in succession as follows:
At Rem. 2, it is stated that Ikeda is silent on critical significance of the claimed relationship Tmh – Tml, and that Ikeda additionally does not teach the claimed relationship of Tmout – T. It is noted that despite the Tmh – Tml relationship being disclosed under Ikeda’s Example 7 embodiment, this embodiment does not teach the claimed Tmout – T relationship for the reasons identified at Rem. 2. Ikeda is thus not applied for this specific teaching.
Also at Rem. 2, it is stated that Rohleder does not make up for Ikeda due to adhesion being disclosed thereby. However, it is not clear at this time how the instant claims distinguish over any adhesion that might take place in the prior art, particularly with adhesion being an identified result of the disclosed production method (spec. at p. 6 [0020]). If this argument is maintained, then further clarification in this regard is requested in reply to this Office action.
Further at Rem. 2, it is implied that the claimed Tmout – T relationship is not disclosed by Rohleder. It is noted that this relationship is in fact disclosed by this reference as set forth in greater detail under rejection(s) below. Absent persuasive arguments, it is believed that this reference should in turn be addressed via claim amendments.
Response to Proposed Amendments
In a 30 September 2026 communication, remarks were presented in response to proposed amendments for allowance. These remarks are addressed as follows:
It is generally indicated that the proposed removal of “that can be laminated” from claim 1, in addition to restricting of outer precursor layer to F1, does not align with what Applicant intends at this time. It is noted that as indicated below, the terms “that can be laminated” does not in fact imply or otherwise require lamination, and further that the current language of claim 1 step 1 contains other § 112(b) issues. As to restricting the outer precursor layer to film F1, it is noted that this is believed to align with dependent claims 8 and 11, in addition to all of the Example 1-12 embodiments as set forth under Table 2, in particular whereby a 155/160°C heating roll only ever contacts film F1 film with Tmh (see the Table 2 Tmout – T values). There is not believed to be an instance of the example embodiments in which a heating element contacts film F2 having a lower melting point Tml than film F1 with melting point Tmh. If this understanding of Applicant’s example data is incorrect, then further clarification in this regard is requested in reply to this Office action.
Upon review of the above responses, Applicant’s Representative is encouraged to contact the Examiner directly prior to a formal response being filed for further clarification on any outstanding issues, to discuss potential claim amendments that might help to advance prosecution, and/or to discuss what Applicant believes to be the crux of the claimed and/or disclosed invention as it is believed to distinguish over the prior art.
Claim Interpretation
It is noted that the claim 1 recitation of a precursor in which films F1 and F2 “can be laminated” does not necessarily require that such films are in fact laminated with each other. If this is in fact intended, then an amendment should be made to this effect.
Claim Objections
Claims 1-8, 11-13, and 15 are objected to because of the following informalities:
Terms such “with each other” should be added to the end of claim 1 step 1 after “laminated”, to the end of claim 1 step 2 after “F2”, at line 5 of claim 15 after “laminated”, and to the end of claim 5 step 2 after “films”.
The term “and” which appears after the comma ending the first claim 1 wherein clause should be moved after the comma ending the second wherein clause.
All claimed instances of “Tmout” (claims 1 and 14 in the last and 3rd to last lines thereof, claim 2) should be changed to “Tmout” .
Each instance of “a” in claim 2 should be changed to “the”.
The term “allowing” in claim 5 should be changed to “causing”.
It is believed that the term “finally” at line 3 of claim 7 should be deleted.
To the end of claim 8, terms such as “where [F2/F1/F2] denotes a three-layer coextruded original sheet of layers F2/F1/F2” should be added.
The term “resulting” in claim 11 should be deleted.
At line 10 of claim 15, “of” before “Tml” should be deleted.
After the comma ending the first wherein clause of claim 15, “and” should be added.
Absent persuasive argument contesting these issues, appropriate correction by amendment 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.
Claims 1-8, 11-13, and 15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular:
The claim 1 step 1 of preparing a precursor “in which” films F1 and F2 “that” can be laminated is confusing. The current terminology implies that some missing phrase or terms should exist after the terms “can be laminated”. Further, due to use of the terms “in which” and “can be laminated”, it is unclear whether the precursor in fact “comprises” the films F1 and F2 or whether the claim is intended to be extremely broad in merely reciting a precursor “in which” it is possible for films F1/F2 to exist (i.e. whereby such films F1/F2 are not necessarily required). If films F1/F2 are in fact intended to be part of the recited precursor, then it is suggested that the terms “in which” at line 3 of the claim be changed, for example, to “comprising”, and further that “can be laminated” be changed as appropriate.
The claim 1 step 2 recitation of thermally sealing “each of the layers” of films F1 and F2 lacks antecedent basis, in particular since no such “layers” of films F1/F2 are recited previously.
This same corresponding issue exists also for the claim 15 line 3 and step 2 recitation of thermally sealing “layers” of the films. It is unclear how these “layers” correspond to the films F1/F2, whether the films themselves are the layers, or whether each of the films comprises multiple layers.
Since antecedent basis is not clearly conveyed, it is unclear in claim 1 step 2 whether “an outermost layer” of the precursor corresponds to film F1, film F2, some layer of one or films F1/F2, or some layer which may be construed as entirely distinct therefrom.
This same corresponding issue exists also for the claim 15 step 2 of bringing a heating element into contact with “an outermost layer” of the precursor.
The second wherein clause of claim 1 is confusing. It is unclear how to construe the recitation of wherein the precursor provides the polypropylene sheet “in which” films F1 and F2 can be alternately laminated in step 2, as this clause appears to be missing a phrase or additional terminology in the same or similar manner as for issue (a) above.
It is unclear what is intended by the claim 1 reference back to “step 2” in the second wherein clause thereof, including for example whether this clause intends to convey that the preamble sheet is formed by the step 2 sealing.
The entirety of what claim 5 presently recites is confusing and should be clarified. In addition, recitation at line 3-4 thereof of “the” X direction lacks antecedent basis.
The current language of claim 7 is confusing, as it is unclear exactly what the materials of film F1 “or” film F2 are integrated with.
Since antecedent basis is not clearly conveyed, it is unclear at line 2 of claim 12 whether “having a high melting point Tmh” refers back to the previously recited “polypropylene” (line 1) or to the previously recited “first layer” (line 2).
This same corresponding issue exists also for the claim 13 line 2 recitation of “having a low melting point Tml”.
Since antecedent basis is not clearly conveyed, it is unclear if or how the claim 12-13 first/second layers correspond to the films F1/F2 recited previously.
Since antecedent basis is not clearly conveyed, it is unclear if or to what extent the claim 15 line 2 laminating corresponds to step 1 thereof, and if so to what extent the line 3 thermal sealing corresponds to step 2 thereof. If these in fact correspond to one another, then to address this issue, it is suggested that the step and laminating and thermal sealing be moved from the preamble into the body of the respective steps 1 and 2 of this claim.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
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.
US 12,172,359
Claims 1-8, 11, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,172,359. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a broader version of the patented claims. For instant claims 1, 7, 8, and 15, see patented claims 1 and 8. For instant claims 2-6, see patented claims 2-6 and 9. The instant claim 11 property is believed to result in the patented claims due to the same claimed material(s) being subjected to the same method steps.
Claims 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,172,359 as set forth above, and further in view of Ikeda et al. (JP 2017-186561, machine translation made of record herewith cited herein).
The patented claims are not sufficiently specific enough with respect to the instant claim 12-13 polymer types. However, Ikeda provides a similar thermal sealing technique in which these materials are explicitly disclosed (see the entirety of Ikeda as relevant). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Ikeda into the patented claims as providing an art-recognized suitable, interchangeable, and/or improved material for the corresponding films thereof.
US 12,053,959
Claims 1, 2, 4-8, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,053,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and patented claims correspond generally to one another, with exception of patented claim 8 reciting a temperature relationship TmF, TmN that encompasses the claim 1/15 Tmh, Tml relationship (see MPEP § 2144.05(I) regarding obviousness of encompassing ranges), with the instantly claimed Tmout, T relationship recited under patented claim 9. The claim 1/15 materials and thicknesses are further disclosed and/or obvious over corresponding recitations under patented claims 1 and 13 (see again MPEP § 2144.05(I) as relevant), with instant claims 2, 4, 6-8, 12, and 13 recited or similarly obvious over patented claims 3, 4, 9, and 10, and with the claim 5 and claim 11 properties believed to result from the patented claims treating the same or similar claimed material by the same claimed method steps.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,053,959 as set forth above, and further in view of Rohleder et al. (US 5,283,017).
The patented claims are not sufficiently specific enough with respect to the instant claim 3 heating element type. However, Rohleder provides a similar thermal sealing technique in which such a heating element is disclosed (fig. 1, etc.). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Rohleder into the patented claims as providing an art-recognized suitable, interchangeable, and/or improved heating element for the unspecified heating element thereof.
US 12,194,715
Claims 1, 2, 4-8, 11-13, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,194,715. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and patented claims correspond generally to one another, with exception of patented claim 8 reciting a temperature relationship that encompasses the claim 1/15 Tmh, Tml relationship (see MPEP § 2144.05(I) regarding obviousness of encompassing ranges), with the instantly claimed Tmout, T relationship recited under patented claim 9. The claim 1/15 materials and thicknesses are further disclosed and/or obvious over corresponding recitations under at least patented claims 1 and 8 (see again MPEP § 2144.05(I) as relevant), with instant claims 2, 4-8, 12, and 13 recited or similarly obvious over patented claims 2, 3, 5, 7, 10, and 13, and with the claim 11 property believed to result from the patented claims treating the same or similar claimed material by the same claimed method steps.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,194,715 as set forth above, and further in view of Rohleder et al. (US 5,283,017).
The patented claims are not sufficiently specific enough with respect to the instant claim 3 heating element type. However, Rohleder provides a similar thermal sealing technique in which such a heating element is disclosed (fig. 1, etc.). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Rohleder into the patented claims as providing an art-recognized suitable, interchangeable, and/or improved heating element for the unspecified heating element thereof.
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the objections and 35 U.S.C. § 112(b) rejections set forth above and to include all of the limitations of the base claim and any intervening claims, provided that the above-cited obviousness double patenting rejections are also overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, taken individually or in combination, does not teach or fairly suggest the claimed combination of steps and features, in particular whereby in addition to the remaining claim recitations, the claimed Tmh, Tml and Tmout, T relationship are provided for a precursor having the claim 8 structure.
Note, for example, that in US 5,283,017, believed to be among the closest prior art of record, a temperature relationship falling well within the claimed Tmout, T relationship range is provided with respect to unstretched film 16, and a temperature relationship otherwise rendering obvious the claimed Tmout, T relationship is provided with respect to biaxially stretched film 14, but whereby all embodiments are believed to comprise the unstretched film and whereby a teaching away is believed to exist for omitting the unstretched film for example at 8:25-43. JP 2017-186561 is believed to be relevant as well, but with a closest Example 7 embodiment comprising a negative Tmout – T relationship due to a heating element temperature thereof exceeding an outermost layer melting point, instead of the corresponding relationship claimed. A reasonable combination of prior art is thus not believed to exist of record disclosing or otherwise rendering obvious the entirety of what is presently recited by claim 8.
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.
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 1-7, 11, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rohleder et al. (US 5,283,017).
As to claims 1 and 15, Rohleder teaches a method for producing a polypropylene sheet 21 having a thickness rendering obvious the claimed range (see at least 4:23-25, in addition to MPEP § 2144.05(I) regarding obviousness of overlapping ranges), in which a precursor is prepared comprising biaxially oriented polypropylene films 14 and 45 (see an exemplary fig. 8 precursor structure, and see the 4:2-3 biaxial stretching for film 14 and the 4:34-36 reference to sealing layer 45 as also being biaxially stretched) with a thickness falling into the claimed range and a temperature relationship respectively corresponding to the claimed Tmh, Tml relationship (see the 8:19-25 and 3:39-40 thicknesses, see the respective melt temperatures referenced at 8:57 for Tm1 (i.e. Tmh) and 8:59 for Tm2 (i.e. Tml), and see polypropylene referenced for films 14 and 45 in at least the above citations and at 8:56 and 8:58, respectively). Heating element 1/2/8/1317 is brought into contact with outermost layers 14/16 of the precursor to thermally seal in the manner claimed (see the 3:64-68 characterization of roll 1 as a sealing tool, see the 5:25 description of heating devices 8/13 potentially including heated rolls, see the 9:48-65 implication of elements 8,13 (if provided as rolls) respectively contacting outermost layers 16, 14 and being provided with sealing temperatures below melting temperatures of films 14/16 (thereby implying a Tmout, T relationship encompassing that claimed – see MPEP § 2144.05(I) regarding obviousness of encompassing ranges), and see the 10:1-3 sealing temperature of heating element 1 contacting outermost layer 16 provided well within the claimed Tmout, T relationship). For heating element 1 contacting unstretched outermost layer 16, Rohleder thus provides Tmout – T values approaching 20°C or more due to the melting point of polypropylene as utilized for layer 16; for at least heating element 13/17 contacting biaxially stretched outermost layer 14, Rohleder thus provides a Tmout – T relationship of greater than 0°C (thus rendering obvious the claimed range), but with motivation to seek appropriate temperatures falling well within the claimed range through routine experimentation as set forth under MPEP § 2144.05(II) so as not to negatively impact the orientation thereof (9:60-65, 10:3-7).
The claim 2 temperature relationship is met or obvious by Rohleder as set forth under the rejection of claim 1 above. Rohleder further discloses the claim 3 heating roll 1/2/8/13/17, in addition to a thickness ratio falling into the broad claim 4 range (see at least the above citations), and is presently believed to yield the same claim 5/11 properties on account of the same claimed material being subjected to the same claimed method steps. Rohleder additionally discloses the claim 6 coextrusion (see at least 2:46, 5:41, 5:48, 9:44-46, etc.), is believed to provide the claim 7 integrating by the above-cited sealing, and discloses at least the claim 12 homopolymer (8:56).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Rohleder et al. (US 5,283,017) as applied above, and further in view of Ikeda et al. (JP 2017-186561, machine translation made of record herewith cited herein).
Rohleder teaches a polypropylene copolymer but is not believed to specify the claim 13 random copolymer. However, Ikeda provides a similar thermal sealing technique in which a similar copolymer is utilized, particularly a random copolymer believed to correspond to that claimed (see the entirety of Ikeda as relevant). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Ikeda into Rohleder as providing an art-recognized suitable, interchangeable, and/or improved material for the layer 45 thereof.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Atul P. Khare/Primary Examiner, Art Unit 1742
