DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-31 is/are pending.
Claim(s) 1-14, 16-30 is/are rejected.
Claim(s) 15, 31 is/are cancelled by Applicant.
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 .
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 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.
Response to Election/Restrictions
Applicant's election with traverse of Group I (claims 1-14, 16-30) in the reply filed on 07/15/2026 is acknowledged. The traversal is on the ground(s) that there is no serous burden on the Examiner because the searches involved for the claims are coextensive. This is not found persuasive because the product claims of Group I contain process limitations and there is no evidence that these product by process limitations result in products which are structurally or chemically distinct from products made by other methods. In contrast, the method claims of 15, 31 require specific process steps which are not required in the product claims of Group I.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 15, 31 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/15/2026.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-7, 9-14, 16-22, 24-30 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-27 of copending Application No. 19/050,730 (US 2025/0257201) (DANDA ET AL),
and in view of AITHANI ET AL (US 2010/0092893).
The above copending Application claim a film composition as recited in present application claims 1-7, 9, 11-14, 16-22, 24, 26-29. Features not explicitly claimed are known and/or are obvious in view of the prior art -- for example:
AITHANI E AL ‘893 discloses that it is well known in the art that suitable processes for forming polyolefin-containing films and layers in packaging materials (e.g., monolayer, multilayer) include blown films, cast film, and extrusion coating. (paragraph 0054, etc.)
Regarding claims 1-7, 9-14, 16-22, 24-30, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the film compositions claimed in copending Application No. 19/050,730 to form films or layers in multilayer packaging materials.
Further regarding claims 1-7, 9-14, 16-22, 24-30, the recitation of “cast” and “extrusion-coated” are product-by-process limitations and are not further limiting in as so far as the structure of the product is concerned. "[E]even 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a 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. 1993).
Alternatively and/or additionally, regarding claims 1-7, 9-14, 16-22, 24-30, one of ordinary skill in the art would have used known methods for processing thermoplastics (e.g., casting, extrusion coating, as suggested in AITHANI ET AL ‘793) to form individual stand-alone film layers (e.g., a preformed film layer via casting) and/or film layers in multilayer packaging materials (e.g., via coating on a pre-existing substrate (e.g., a paper layer or a polyethylene terephthalate (PET) layer (corresponding to the recited “plastic film” of claim 30) via extrusion casting on a substrate) from the polyethylene-based film layer compositions of HUANG-CN ‘449.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103 (AIA )
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.
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.
Claim(s) 1-14, 16-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• CN 114162449 (HUANG-CN ‘449),
in view of KIM ET AL (US 2006/0094810) or KIM ET AL (US 2006/0121224),
and in view of KITO ET AL (US 2014/0364569),
and in view of AITHANI ET AL (US 2010/0092893).
HUANG-CN ‘449 discloses a polyethylene-based film layer composition comprising:
• a polyethylene component comprising (corresponding to the recited “ungrafted ethylene-based copolymer”)
• 20-50 parts by weight of low density polyethylene (LDPE)
• 50-80 parts by weight of high density polyethylene (HDPE) (alternatively; corresponding to the recited “ungrafted ethylene-based copolymer”);
• 15-20 parts by weight of polyamide (PA) / montmorillonite (MMT) (corresponding to the recited “nanocomposite”), wherein the PA resin can be, but is not limited to, nylon 66;
wherein the film layer composition is used to form layers in a multilayer packaging material. (entire document, e.g., paragraph n0007, n0012-n0013, n0015, 0044, n0027, etc.) However, the reference does not specifically mention the use of compatibilizers.
KIM ET AL ‘810 and KIM ET AL ‘224 disclose that it is well known in the art to incorporate 1-30 parts by weight of ethylene-based compatibilizer modified with polar groups (e.g., maleic anhydride-grafted HDPE; maleic anhydride-grafted LLDPE, etc.) in blends containing: (i) polyolefin (e.g., HDPE, LDPE, LLDPE, etc.); and (ii) polyamide / intercalated clay (e.g., montmorillonite, etc.) nanocomposite; in order to improve composition stability, dispersion, and intercomponent compatibility in the polyolefin / polyamide nanocomposite blend. The reference further discloses that polyamides such as nylon 4.6, nylon 6, nylon 6.6, etc. can be used to form the polyamide / intercalated clay nanocomposite component. The reference further discloses the nanocomposite component in polyethylene-based film compositions can also comprise ethylene vinyl alcohol (EVOH). (KIM ET AL ‘810, paragraph 0009-0014, 0018, 0020-0022, 0024, 0026, 0028, 0030-0033, 0036, 0042, etc.) (see corresponding portions of KIM ET AL ‘224)
KITO ET AL ‘569 discloses that it is well known in the art to incorporate 1-50 wt% of ethylene-based copolymer compatibilizer modified with polar groups (e.g., maleic anhydride-modified, etc.) in blends containing: (i) polyolefin (e.g., HDPE, LDPE, LLDPE, etc.); and (ii) polyamide / intercalated clay (e.g., montmorillonite, etc.) nanocomposite; in order to improve stability, dispersion, and/or intercomponent compatibility in a polyolefin / polyamide nanocomposite blend. (paragraph 0035, 0042, 0044-0046, 0051, 0051-0054, 0060, 0069, 0074-0076, 0105-0115, etc.)
AITHANI E AL ‘893 discloses that it is well known in the art that suitable processes for forming polyolefin-containing films and layers in packaging materials (e.g., monolayer, multilayer) include blown films, cast film, and extrusion coating. (paragraph 0054, etc.)
Regarding claims 1-2, 5-7, 11-13, 16-17, 20-22, 26-28, 30, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize effective minor amounts (e.g., less than 50 wt% as suggested by KITO ET AL ‘569; 1-30 parts by weight as suggested by KIM ET AL ‘810 or KIM ET AL ‘224) of known maleic anhydride-grafted ethylene-based copolymer compatibilizers in the polyethylene-based film layer compositions of HUANG ET AL ‘449 in order to improve dispersion of the PA / MMT component in the polyolefin matrix and/or intercomponent compatibility.
Further regarding claims 1-14, 16-30, the recitation of “cast” and “extrusion-coated” are product-by-process limitations and are not further limiting in as so far as the structure of the product is concerned. "[E]even 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a 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. 1993).
Alternatively and/or additionally, regarding claims 1-14, 16-30, one of ordinary skill in the art would have used known methods for processing thermoplastics (e.g., casting, extrusion coating, as suggested in AITHANI ET AL ‘793) to form individual stand-alone film layers (e.g., a preformed film layer via casting) and/or film layers in multilayer packaging materials (e.g., via coating on a pre-existing substrate (e.g., a paper layer or a polyethylene terephthalate (PET) layer (corresponding to the recited “plastic film” of claim 30) via extrusion casting on a substrate) from the polyethylene-based film layer compositions of HUANG-CN ‘449.
Regarding claims 3, 18, one of ordinary skill in the art would have selected the melt index of the polyethylene component (or alternatively, the HDPE resin) in the film layer composition of HUANG-CN ‘449 in order to optimize the processibility, extrusion characteristics, and/or the mechanical properties of the film layer for specific applications.
Regarding claims 4, 19, one of ordinary skill in the art would have incorporated minor amounts of other known and/or commercially available polyethylene resins (e.g., LLPDE) in the polyethylene-based film layer composition of HUANG-CN ‘449 in order to optimize the performance properties (e.g., melt properties; mechanical properties, etc.) for specific applications.
Regarding claims 5-6, 20-21, one of ordinary skill in the art would have used known polyamides (e.g., nylon 4.6, nylon 6, nylon 6.6, etc. as suggested by KIM ET AL ‘810 or KIM ET AL ‘224) to form the PA / MMT nanocomposite component in the polyethylene-based film layer compositions of HUANG-CN ‘449 in order to tailor various performance properties (e.g., thermal and/or melt characteristics, etc.) for specific applications.
Regarding claims 8-9, 23-24, one of ordinary skill in the art would have utilized other known and/or commercially available maleic anhydride-grafted ethylene-based compatibilizers in the polyethylene-based film layer compositions of HUANG-CN ‘449 based on the desired performance properties (e.g., low temperature flexibility; impact resistance; tear and/or puncture properties, etc.) for specific applications.
Regarding claims 10, 25, one of ordinary skill in the art would have selected the melt index of a maleic anhydride-graft ethylene-based copolymer compatibilizer incorporated into the polyethylene-based film layer composition of HUANG-CN ‘449 in order to prevent non-uniformity and/or non-homogeneity with the other components of the film layer composition, which can result in inferior mechanical properties.
Regarding claims 11-12, 26-27, the film layer composition in HUANG-CN ‘449, expressed in parts by weight, at least partially reads on the recited contents of ungrafted ethylene-based polymer and nanocomposite. For example, using a basis of about 115 parts by weight, the polyethylene component (i.e., 20 parts LDPE + 80 parts HPDE) can constitute about 87 wt% while the PA / MMT nanocomposite can constitute about 13 wt%.
Regarding claim 29, one of ordinary skill in the art would have incorporated effective amounts of other known barrier-improving resins (e.g., EVOH, as suggested by as suggested by KIM ET AL ‘810 or KIM ET AL ‘224) in the nanocomposite component of the polyethylene-based film layer composition of HUANG-CN ‘449 in order to further improve the barrier properties film layers containing the nanocomposites.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KIM ET AL (US 2006/0211804) and KRISHNASWAMY (US 2020/0040183) discloses polyethylene-based compositions containing compatibilizers.
EP 2331312 B1 disclose polyethylene-based compositions containing anisotropic mineral filler.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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September 5, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights