DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,233,636. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason.
Regarding claims 1-20, the patented claims disclose the same package as claimed in present claims except that the patented claims further disclose LDPE. However, in light of the open language of the present claims, i.e. comprising, it is clear that the claims are open to the inclusion of additional ingredients including LDPE as disclosed in the patented claims.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-12, 15 and 17-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goodwin et al. (US 3891089) in view of Moriwaki et al (JP 2000-128229) and evidence given in Abubakar et al. (US 2020/0308383).
Regarding claims 1, 7, 9, 17 and 19, Goodwin discloses a package comprising a uncoated layer of paper, i.e. substrate, paper having uncoated sealant side, and including paper fibers (abstract, col. 3, lines 38-40) and at least one layer of EVA copolymer film, i.e. skin layer, and supporting layers, i.e. exterior layer, by heat sealing to the paper layer, i.e. multilayer film coupled to the substrate to form an article receiving space located therebetween and adapted to receive an article, (abstract, col. 1, lines 3-18), wherein the skin layer is between the exterior layer and the uncoated sealant paper. Goodwin discloses that the skin layer is heat sealed at predetermined temperature with the paper substrate, i.e. hermetic seal. (col. 3, lines 24-40). Goodwin further discloses that the uncoated paper is peeled away from the skin layer without separating paper fibers from the uncoated side of the paper (col. 3, lines 25-40) and without discharging those paper fibers into the article receiving space so that the article receiving space and any article in the article receiving space are uncontaminated by paper fibers associated with the uncoated sealant side of the paper when the consumer separates at least a portion of the uncoated sealant side of the paper from the skin layer of the multilayer film to gain to an article in the article receiving space (col. 1, line 20 to col. 2, lines 25).
Goodwin fails to disclose skin layer composition as claimed in presently claims.
Moriwaki discloses easy to open package (title) comprising thermal bonding layer containing 13 to 85 wt% of polybutene-1, i.e. poly alpha olefin, and a polyethylene (0006) to obtain good adhesive strength and easy openability (0007).
It would have been obvious to one of ordinary skill in the art to use the thermal bonding layer composition of Moriwaki in the skin layer of Goodwin to obtain good adhesive strength and easy openability.
Further, given that the multilayer of Goodwin in view of Moriwaki discloses the same composition as presently claimed and based on the disclosure of Goodwin, it is clear that the multilayer of Goodwin in view of Moriwaki would have the same property as presently claimed.
Regarding claims 2, 10 and 18, Goodwin in view of Moriwaki discloses the package of claim 1 but does not specifically disclose that the skin layer comprises 5 to 20 % of the thickness of the multilayer film.
Since the instant specification is silent to unexpected results, the specific thickness of the skin layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of the skin layer and the mulitlayer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of skin layer in Goodwin in view of Moriwaki to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 3-4, Goodwin in view of Moriwaki discloses the package of claim 2, wherein the skin layer comprises LLDPE, i.e. polymer, (0006).
Regarding claims 5-6, Goodwin in view of Moriwaki discloses the package of claim 2, wherein it is evidenced by Abubakar that LLDPE typically have a melt index of 0.2 to 10 (0079).
Regarding claims 8 and 20, Goodwin in view of Moriwaki discloses the package of claim 1, wherein the polybutene-1 has melt index of 1 (0012).
Regarding claim 11, Goodwin in view of Moriwaki discloses the package of claim 2, wherein the total multilayer film has a thickness of 100 microns or less (0007).
Regarding claim 12, Goodwin in view of Moriwaki discloses the package of claim 2, given that the multilayer of Goodwin in view of Moriwaki discloses the same composition as presently claimed and based on the disclosure of Goodwin, it is clear that the multilayer of Goodwin in view of Moriwaki would have the same property as presently claimed.
Regarding claim 15, Goodwin in view of Moriwaki discloses the package of claim 1, wherein Goodwin discloses a skin layer and supporting layers as explained above wherein one supporting layer corresponds to exterior layer and another supporting layer corresponds to a core layer. Goodwin in view of Moriwaki does not specifically disclose that the skin layer comprises 5 to 20 % of the thickness of the multilayer film.
Since the instant specification is silent to unexpected results, the specific thickness of the skin layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of the skin layer and the multilayer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of skin layer in Goodwin in view of Moriwaki to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 13-14 and 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Goodwin et al. (US 3891089) in view of Moriwaki et al (JP 2000-128229) and further in view of Ohlsson et al (US 20120100356).
Regarding claims 13-14, Goodwin in view of Moriwaki discloses the package of claim 2, but fails to disclose slip component and antiblock component.
Ohlsson discloses multilayer film comprising a skin layer (18, figure 2, paragraph 0028) wherein the skin layer further comprises slip agent (paragraph 0065) and antiblocking agent (paragraph 0053) to obtain anti slip and antiblocking properties.
It would have been obvious to one of ordinary skill in the art to use slip agent and antiblocking agent of Ohlsson in the skin layer of Goodwin to obtain anti slip and antiblocking properties.
Regarding claim 16, Goodwin in view of Moriwaki discloses the package of claim 15, but fails to disclose LDPE in each layers.
Ohlsson discloses skin layer comprises LDPE (paragraph 0019) and exterior and core layers comprise LDPE to obtain improved strength or toughness (paragraphs 0012, 0015-0019). Given that Ohlsson discloses LDPE may be branched or heterogeneously branched (paragraph 0029), it is clear that each layer may comprise different LDPE.
It would have been obvious to one of ordinary skill in the art to use the LDPEs of Ohlsson in each layer of Goodwin to obtain enhanced adhesion and improved strength or toughness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Christopherson et al. (US 5965254) discloses a medical package comprising uncoated paper and multilayer film that clearly peels away from paper to have access of medical equipment.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMIR SHAH/Primary Examiner, Art Unit 1787
Prosecution Insights