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 .
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,202,232. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claim 1-20, the patented claims disclose the same machine direction oriented polymeric film as claimed in present application.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21-41 of copending Application No. 16599689 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claim 1-20, the copending claims disclose the same machine direction oriented polymeric film as claimed in present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schwab (US 2016/0115284).
Regarding claims 1, 7-8 and 14, Schwab discloses machine direction oriented polymeric film (0091) comprising a first layer A, i.e. first skin layer, comprising LLDPE (0017) and a nucleator such as HYPERFORM HPN-20E (0025, 0110, 0111), a layer B, i.e. core layer, comprising HDPE (0026), a second layer A, i.e. second skin layer, comprising LLDPE (0017) wherein the polymeric film has 45 degree gloss of 60 to 80 and haze of 5 to 14% (0034-0035). Given that the polymeric film of Schwab discloses the same polymeric film structure and the same composition as claimed, it is clear that the polymeric film of Schwab would inherently have the same properties as presently claim.
Regarding claims 2 and 9, Schwab discloses the machine direction oriented polymeric film of claims 1 and 8, wherein given that Schwab discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Schwab would inherently have the same formula as presently claimed.
Regarding claims 3 and 10, Schwab discloses the machine direction oriented polymeric film of claims 1 and 8, wherein the nucleating agent comprises 0 to 5 % by weight of the first skin layer (0025).
Regarding claims 4 and 11, Schwab discloses the machine direction oriented polymeric film claims 1 and 8, wherein the second skin layer comprises a nucleator, i.e. second nucleating agent (0025, 0110, 0111).
Regarding claims 5 and 12, Schwab discloses the machine direction oriented polymeric film of claims 4 and 11, wherein given that Schwab discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Schwab would inherently have the same formula as presently claimed.
Regarding claims 6 and 13, Schwab discloses the machine direction oriented polymeric film claim 4 and 11, wherein the nucleating agent comprises 0 to 5 % by weight of the second skin layer (0025).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kalihari (US 2018/0281369).
Regarding claim 1, Kalihari discloses machine direction oriented polymeric film (title, 0056) a first outer layer, i.e. a first skin layer, comprising polyethylene resin (abstract and 0044) and nucleator such as HYPERFORM HPN-20E (0044), a core layer comprising a polyethylene (abstract) and a second outer layer, i.e. a second skin layer, comprising polyethylene (abstract). Given that Kalihari discloses the same machine direction oriented polymeric film including the same nucleator as presently claimed, it is clear that the polymeric film of Kalihari would inherently have the same properties as claim in present claim.
Regarding claim 2, Kalihari discloses the machine direction oriented polymeric film of claim 1, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 3, Kalihari discloses the machine direction oriented polymeric film of claim 1, wherein the nucleating agent comprises 0.001 to 5 % by weight of the first skin layer (0044).
Regarding claim 4, Kalihari discloses the machine direction oriented polymeric film claim 1, wherein the second skin layer comprises a nucleator, i.e. second nucleating agent (0044).
Regarding claim 5, Kalihari discloses the machine direction oriented polymeric film of claim 4, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 6, Kalihari discloses the machine direction oriented polymeric film claim 6, wherein the nucleating agent comprises 0.001 to 5 % by weight of the second skin layer (0044).
Regarding claim 7, Kalihari discloses the machine direction oriented polymeric film claim 1, wherein the polyethylene of the first skin layer, the polyethylene of the core layer, and the polyethylene of the second skin layer are each independently selected from LDPE or LLDPE (0017, 0036, 0070).
Regarding claim 8, Kalihari discloses machine direction oriented polymeric film (title, 0056) a first outer layer, i.e. a first skin layer, comprising polyethylene resin such as MDPE or LDPE (abstract, 0036, 0070) and nucleator such as HYPERFORM HPN-20E (0044), a core layer comprising a polyethylene (abstract) and a second outer layer, i.e. a second skin layer, comprising polyethylene (abstract). Given that Kalihari discloses the same machine direction oriented polymeric film including the same nucleator as presently claimed, it is clear that the polymeric film of Kalihari would inherently have the same properties as claim in present claim.
Regarding claim 9, Kalihari discloses the machine direction oriented polymeric film of claim 8, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 10, Kalihari discloses the machine direction oriented polymeric film of claim 8, wherein the nucleating agent comprises 0.001 to 5 % by weight of the first skin layer (0044).
Regarding claim 11, Kalihari discloses the machine direction oriented polymeric film claim 8, wherein the second skin layer comprises a nucleator, i.e. second nucleating agent (0044).
Regarding claim 12, Kalihari discloses the machine direction oriented polymeric film of claim 11, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 13, Kalihari discloses the machine direction oriented polymeric film claim 11, wherein the nucleating agent comprises 0.001 to 5 % by weight of the second skin layer (0044).
Regarding claim 14, Kalihari discloses the machine direction oriented polymeric film claim 1, wherein the polyethylene of the core layer, and the polyethylene of the second skin layer are each independently selected from LDPE or LLDPE (0017, 0036, 0070).
Regarding claim 15, Kalihari discloses machine direction oriented polymeric film (title, 0056) a first outer layer, i.e. a first skin layer, comprising polyethylene resin such as MDPE or LDPE (abstract, 0036, 0070) and nucleator such as HYPERFORM HPN-20E (0044), a core layer comprising a polyethylene (abstract) and a second outer layer, i.e. a second skin layer, comprising polyethylene (abstract). Kalihari further discloses that tie layers, i.e. first sub-skin layer and second sub-skin layer, can be positioned between the core layer and each outer layer wherein the first and second sub-skin layers comprise polyethylene (0015). Given that Kalihari discloses the same machine direction oriented polymeric film including the same nucleator as presently claimed, it is clear that the polymeric film of Kalihari would inherently have the same properties as claim in present claim.
Regarding claim 16, Kalihari discloses the machine direction oriented polymeric film of claim 15, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 17, Kalihari discloses the machine direction oriented polymeric film of claim 15, wherein the nucleating agent comprises 0.001 to 5 % by weight of the first skin layer (0044).
Regarding claim 18, Kalihari discloses the machine direction oriented polymeric film claim 15, wherein the second skin layer comprises a nucleator, i.e. second nucleating agent (0044).
Regarding claim 19, Kalihari discloses the machine direction oriented polymeric film of claim 18, wherein given that Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 20, Kalihari discloses the machine direction oriented polymeric film claim 18, wherein the nucleating agent comprises 0.001 to 5 % by weight of the second skin layer (0044).
Claim(s) 1, 3-4, 6, 8, 10, 11, 13, 15, 17-18 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavacas et al. (US 2016/0229158).
Regarding claims 1, 4, 8 and 11, Cavacas discloses machine direction oriented film comprising a first outer layer, i.e. skin layer, comprising HDPE, i.e. polyethylene (paragraph 0077) and nucleating agent (paragraph 0084), a core layer comprising polyethylene (paragraph 0044) and second outer layer, second skin layer, comprises HDPE, i.e. polyethylene (paragraph 0077) and nucleating agent (paragraph 0084). Cavacas discloses the film is said to be at maximum extension when machine direction (MD) tensile strength has a less than 100% elongation at break under ASTM D-882, i.e. strain at break in a machine direction of less than about 300%, (paragraph 0097). Cavacas further discloses the haze of the multilayer is 4.4 and the gloss is 110 % (table 1, example 2). Given that the multilayer film of Cavacas is the same as presently claimed including the composition of the multilayer film, it is clear that the multilayer film of Cavacas would have the same properties as claimed in present claims.
Regarding claims 3, 6, 10 and 13, Cavacas discloses the film of claims 1 and 11, wherein the nucleating agent is used in minor amount, i.e. less than 50%, (0084).
Regarding claims 15 and 18, Cavacas discloses machine direction oriented film AABAA (paragraph 0093) comprising a first outer layer, i.e. skin layer, comprising HDPE, i.e. polyethylene (paragraph 0077) and nucleating agent (paragraph 0084), a core layer comprising polyethylene (paragraph 0044), first sub skin layer interposed between the first skin layer and the core layer, the first sub skin layer comprising polyethylene (paragraphs 0093, 0077), second outer layer, second skin layer, comprises HDPE, i.e. polyethylene (paragraph 0077) and nucleating agent (paragraph 0084) and second sub skin layer interposed between the second skin layer and the core layer, the second sub skin layer comprising polyethylene (paragraphs 0093, 0077). Cavacas discloses the film is said to be at maximum extension when machine direction (MD) tensile strength has a less than 100% elongation at break under ASTM D-882, i.e. strain at break in a machine direction of less than about 300%, (paragraph 0097). Cavacas further discloses that the haze of the multilayer is 4.4 and the gloss is 110 % (table 1, example 2). Given that the multilayer film of Cavacas is the same as presently claimed including the composition of the multilayer film, it is clear that the multilayer film of Cavacas would have the same properties as claimed in present claims.
Regarding claims 17 and 20, Cavacas discloses the film of claims 15 and 18, wherein the nucleating agent is used in minor amount, i.e. less than 50%, (0084).
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.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schwab (US 2016/0115284) in view of Kalihari (US 2018/0281369).
Regarding claim 15, Schwab discloses machine direction oriented polymeric film (0091) comprising a first layer A, i.e. first skin layer, comprising LLDPE (0017) and a nucleator such as HYPERFORM HPN-20E (0025, 0110, 0111), a layer B, i.e. core layer, comprising HDPE (0026), a second layer A, i.e. second skin layer, comprising LLDPE (0017) wherein the polymeric film has 45 degree gloss of 60 to 80 and haze of 5 to 14% (0034-0035).
Schwab does not disclose first sub skin layer and second sub skin layer.
Kalihari discloses multilayer polyethylene films (title) wherein tie layers are used between the core layer and each outer layer (0015) to obtain improved adhesion between layers wherein the tie layers comprise polyethylene (0015).
It would have been obvious to one of ordinary skill in the art to use the tie layers of Kalihari in the film of Schwab between the core layer and each outer layer to obtain improved adhesion between layers.
Given that the polymeric film of Schwab in view of Kalihari discloses the same polymeric film structure and composition as claimed, it is clear that the polymeric film of Schwab in view of Kalihari would inherently have the same properties as presently claim.
Regarding claim 16, Schwab in view of Kalihari discloses the machine direction oriented polymeric film of claim 15, wherein given that Schwab in view of Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Schwab in view of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 17, Schwab in view of Kalihari discloses the machine direction oriented polymeric film of claim 15, wherein the nucleating agent comprises 0 to 5 % by weight of the first skin layer (0025).
Regarding claim 18, Schwab in view of Kalihari discloses the machine direction oriented polymeric film claim 15, wherein the second skin layer comprises a nucleator, i.e. second nucleating agent (0025, 0110, 0111).
Regarding claim 19, Schwab in view of Kalihari discloses the machine direction oriented polymeric film of claim 18, wherein given that Schwab in view of Kalihari discloses the same nucleating agent as disclosed in the present specification, it is clear that the nucleating agent of Schwab in view of Kalihari would inherently have the same formula as presently claimed.
Regarding claim 20, Schwab in view of Kalihari discloses the machine direction oriented polymeric film claim 18, wherein the nucleating agent comprises 0 to 5 % by weight of the second skin layer (0025).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/ Primary Examiner, Art Unit 1787
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