DETAILED ACTION
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
Applicant’s amendment filed on 05/29/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-4, 7, 10, 13, 16, 19 and 20 are examined on the merits in this office action.
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 1-4, 7, 10, 13, 16, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Forloni et al. (WO 2020/025148 A1).
Regarding claims 1-4 and 7, Forloni et al. disclose a thermoplastic multilayer packaging film (multilayer structure) comprising a thermoplastic base layer B which comprises an inner gas barrier layer (i.e. claimed layer A) and a thermoplastic heat-sealable layer A made of linear ethylene-a-olefin copolymer in amount of more than 60 wt% (i.e. claimed layer B) (see page 48, claim 1 and claim 3, page 49, claim 10 and page 17, lines 13-15). The inner gas barrier layer comprises EVOH (see page 24, lines 1-2). The thermoplastic heat-sealable layer can be made of linear low density polyethylene (LLDPE) with a density in the range from about 0.910 to about 0.930 g/cm3 (see page 17, lines 20-22). A specific example of LLDPE includes Exceed 1012MA by ExxonMobil (page 37, Table 1). Exceed 1012MA is identical to polyethylene resin utilized in the present invention (see page 29, lines 16-20 of present specification). As evidenced by the present specification, Exceed 1012MA has a density of 0.912 g/cm3 and a weight average molecular weight of 258000 when calibrated with polystyrene, the weight average molecular weight being measured by gel permeation chromatography (GPC) using 1, 2, 4-trichlorobenzene at 140 °C, and Exceed 1012MA is LLDPE comprising copolymerization component having 6 carbons (see page 29, lines 16-20 of present specification).
Forloni et al. do not disclose the thermoplastic multilayer packaging film (multilayer structure) having an impact strength A and an impact strength B as presently claimed. However, given that the thermoplastic multilayer packaging film (multilayer structure) including the ethylene-vinyl alcohol polymer layer and the polyethylene resin layer is identical to that presently claimed, with amount of polyethylene resin, density of polyethylene resin and weight average molecular weight of polyethylene resin overlapping with that presently claimed, within the overlapping ranges, the thermoplastic multilayer packaging film (multilayer structure) necessarily inherently has an impact strength A and an impact strength B as presently claimed.
In light of the overlap between the claimed multilayer structure and that disclosed by Forloni et al., it would have been obvious to one of ordinary skill in the art to use a multilayer structure that is both disclosed by Forloni et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 10, 13 and 16, Forloni et al. disclose the thermoplastic multilayer packaging film (multilayer structure) as set forth above. Further, Forloni et al. disclose a specific embodiment of the thermoplastic multilayer packaging film comprising layers C/A/D/F/D/E, wherein layer C is a super-hydrophobic coating layer, layer A is heat sealable layer, layer D is a tie layer, layer F is an inner gas barrier layer and layer E is an outer abuse layer (see page 25, lines 10-17). As noted above, the heat sealable layer A comprises polyethylene resin and the inner gas barrier layer F comprises ethylene-vinyl alcohol copolymer.
The layer D improves adhesion between the layers (see page 22, lines 16-17). The layer D read on an adhesive resin layer. The layer C and layer E read on additional layers on outermost layers of the multilayer structure. Based on this structure, the layer A (polyethylene resin layer B) is provided between the layer C (additional layer D) and the layer F (ethylene vinyl alcohol copolymer layer A). Further, there is no disclosure of the thermoplastic multilayer packaging film (multilayer structure) comprising layer containing a polyamide resin as a main component.
Regarding claims 19 and 20, Forloni et al. disclose a flexible container prepared from the thermoplastic multilayer packaging film (multilayer structure) (see page 50, claims 19 and 20). The flexible container (a food packaging container) can be in form of a non-heat shrinkable pouch containing a food product (see page 50, claim 21 and page 51, claim 25 and claim 26).
Response to Arguments
Applicant's declaration and arguments filed 05/29/2026 have been fully considered but they are not persuasive because of following reasons.
Applicants submit declaration and argue that it is not reasonable to conclude that the multilayer film of Forloni inherently has the claimed impact strength. As noted in MPEP 2112(IV), the "Examiner must provide rational or evidence to show inherency". Furthermore, MPEP 2112(IV) explains that "[t]he fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic." Emphasis in original. Additionally, MPEP 2112(IV) states that "[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teaching of the applied prior art."
However, given that the thermoplastic multilayer packaging film (multilayer structure) including the ethylene-vinyl alcohol polymer layer (layer A) and the polyethylene resin layer (layer B) is identical to that presently claimed, with amount of polyethylene resin, density of polyethylene resin and weight average molecular weight of polyethylene resin overlapping with that presently claimed, within the overlapping ranges, the thermoplastic multilayer packaging film (multilayer structure) necessarily inherently has an impact strength A and an impact strength B as presently claimed.
Applicants submit declaration and argue that at least because the base layer (B) of Forloni must include microparticles, the multilayer structure of Forloni does not inherently satisfy the claimed impact strength A. More specifically, the Examiner asserts that because Forloni uses the polyethylene resin (Exceed 1012 MA), which is also used in Examples of the present specification, the film of Forloni "necessarily inherently has an impact strength A and an impact strength B as presently claimed." However, the mere fact that the same resin is used in one layer of Forloni does not reasonably support the assertion that the film of Forloni necessarily has an impact strength A as presently claimed. Rather, the claimed impact strength A is a property of the claimed multilayer structure as a whole and is affected by the type, thickness, and location of all constituting layers.The multilayer film of Example 1 of Forloni has a complicated layer structure consisting of the eight layers: super-hydrophobic coating layer/glass microparticles-containing layer (25 wt%)/EVA layer/adhesive layer/EVOH layer/adhesive layer/EVA layer/HDPE layer. This is completely different from the claimed multilayer structure in terms of layer structures. Even if the same resin is used in one layer, since the impact strength of the whole multilayer film is affected by the whole layer structure, it cannot be concluded that the multilayer film of Forloni necessarily has the impact strength A of the claimed multilayer structure. Further, in all Examples of Forloni, the base layer (B) comprises 25% by weight of the glass microparticles. Additionally, Forloni does not disclose any Example including the layers (A) and (B) that does not comprise the glass microparticles in the base layer (B). In fact, in all embodiments of Forloni, the base layer (B) must include the microparticles. See for example page 5, lines 8-10.
While Forloni discloses base layer (B) (claimed layer A) comprises microparticles, the amount of microparticles can be present in amount as low as 1 wt% (see page 48, claim 1). Given that the amount of microparticles can be significantly small, i.e. 1 wt%, it is examiner’s position that the impact strength of the multilayer film would not be affected, absent evidence to the contrary. While applicants point to examples reciting 25 wt% of microparticles, it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
While applicants argue that claimed impact strength A is a property of the claimed multilayer structure as a whole and is affected by the type, thickness, and location of all constituting layers, applicants have provided no evidence (i.e. data) to support their position. Based on the present specification (Table 1), only polyethylene of layer B is shown to affect impact resistance. Given that the multilayer structure comprising EVOH layer and the polyethylene layer is identical to that presently claimed, wherein the polyethylene layer comprises LLDPE resin identical to that utilized in the present invention, the multilayer structure of Forloni necessarily inherently has impact strength as presently claimed, absent evidence to the contrary.
Further, while Example 1 has multiple layers, Forloni also discloses a multilayer structure with three layers such as EVOH layer, polyethylene layer and coating layer in the specification. Also, applicants have provided no evidence (i.e. data) to show if coating layer affects impact resistance.
Applicants submit declaration and argue that thus, even if the layer (C) is not considered (see discussion on this point below), Forloni minimally requires a heat-sealable layer (A) and a base layer (B) including microparticles. However, as explained in the attached Declaration under 37 CFR 1.132 by co-inventor Kohei OURA, in the technical field of polymer composite materials, it is well-established technical common knowledge to a person skilled in the art that adding microparticles (solid fillers) at a resin deteriorates the impact strength. In the Examples of Forloni, the impact strength of the multilayer film of Forloni which comprises 25% by weight of the glass microparticles in the base layer (B) is necessarily different from the impact strength of the claimed multilayer structure that does not require any microparticles. This is also true for other embodiments of Forloni. In other words, because the base layer (B) must include the microparticles, and because the inclusion of microparticles deteriorates impact strength, it cannot be reasonably concluded that the multilayer film of Forloni inherently has the claimed impact strength A.
While Forloni discloses base layer (B) (claimed layer A) comprises microparticles, the amount of microparticles can be present in amount as low as 1 wt% (see page 48, claim 1). Given that the amount of microparticles can be significantly small, i.e. 1 wt%, it is examiner’s position that the impact strength of the multilayer film would not be affected, absent evidence to the contrary. While applicants point to examples reciting 25 wt% of microparticles, it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Further, while applicants argue that adding microparticles (solid fillers) at a resin deteriorates the impact strength, given the small amount of microparticles, i.e. 1 wt%, it is examiner’s position that impact strength will not be deteriorated, absent evidence to the contrary. Also, applicants have provided no evidence (i.e. data) to show the multilayer structure of Forloni comprising layer (A) and layer (B) comprising 1 wt% of microparticles will not provide impact strength as presently claimed.
Applicants submit declaration and argue that the Examiner noted a possible interpretation of Forloni where the layers (A) and (B) alone-without layer (C)-are considered a "multilayer film" according to the present claims. Based on this reasoning, the Examiner indicated that even if layer C affects the impact strength of the totality of the layers A, B, and C, the Examiner could consider the impact strength of only layers A and B as a "multilayer film," while ignoring layer C. Applicant respectfully submits that this potential argument is improper, since it 'reads out' a required element of Forloni. The interpretation of a part of a multilayer structure to itself be a multilayer structure to be inappropriate. Rather, the claims require that the entirety of the multilayer structure has the recited impact strength. Any interpretation to the contrary is inconsistent with the broadest reasonable interpretation of the claims. Additionally, as explained in the attached Declaration, it is not possible to measure the impact strength A in the manner proposed by the Examiner. The claimed impact strength A is determined in accordance with JIS K7124-1 by using a test piece made of the whole multilayer structure. See paragraph [0060] of the specification as filed. It is technically impossible to remove the layer (C) from the multilayer film of Forloni and to determine the impact strength A of the remaining portion of the multilayer film of Forloni in accordance with JIS K7124-1. Applicant respectfully submits that it is unreasonable to assert inherency by hypothetically excluding a specific layer.
The examiner maintains the position that even if coating layer (C) affects impact resistance, the EVOH layer (A) and the polyethylene layer (B) together of Forloni read on multilayer structure comprising layer (A) and layer (B) as presently claimed.
Further, it is examiner’s position that it would be possible to measure the impact strength of the multilayer structure comprising layer (A) and layer (B), without inclusion of the layer (C). For instance, a multilayer structure comprising layer (A) and layer (B) can be prepared first, followed by measuring impact strength of the multilayer structure comprising layer (A) and layer (B), and then laminating additional layers such as layer (C). While the applicants argue that the claims require that the entirety of the multilayer structure has the recited impact strength, given that claim recite a multilayer structure comprising layer (A) and layer (B), the multilayer structure can include only layers (A) and layer (B), and in that case the impact strength corresponds to the impact strength of the multilayer structure comprising layer (A) and (B).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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