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 .
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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112(b)
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 1-20 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.
Claim 1 (as well as claims 2-20 which depend from claim 1) is rejected under 35 U.S.C. 112(b) as being indefinite because the language "according to the methods and settings in the description" on line 8 of the claim fails to point out what is included or excluded by the claim language. This claim is akin to an omnibus type claim. See MPEP 2173.05(r).
Claim 1 (as well as claimed 2-20 which depend from claim 1) is rejected under 35 U.S.C. 112(b) as being indefinite because the conditions under which the melt flow index is calculated are not recited.
The term "high" on line 1 of claim 4 and line 2 of claim 6 is a relative term which renders the claims indefinite. The term "high" is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term "high" renders the crystallinity of the polypropylene indefinite.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 and 13 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claims 12 and 13 require the oriented film to contain calcium carbonate and polybutylene terephthalate, respectively. However, independent claim 1 requires the oriented film to be neither cavitated nor pigmented. Calcium carbonate is cited in the specification as a pigment (paragraph 0053 on page 15) and polybutylene terephthalate is cited as a cavitating agent (paragraph 0054 on page 15). Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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.
Claims 1-9, 11, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Keller (US 5,691,043) in view of in view of Potter (US 2016/0311988).
Keller is directed to a biaxially oriented multilayer film having a polypropylene core layer and a polyolefin skin layer, wherein the polypropylene of the core layer is isotactic polypropylene (column 3, lines 2-9). The core may contain additional polypropylene homopolymers or copolymers (column 4, lines 59-65). The core layer may comprise recycled polypropylene (column 7, lines 12-14). The film can be a clear film which does not contain opacifying materials, such as cavitation agents (column 7, lines 15-37). The skin layer of the film may be a copolymer or terpolymer of ethylene and propylene (column 7, lines 58-67). In the embodiment of Examples 9-11, the polypropylene has a melt index of 3 and the resulting film has a haze of less than 2.
Regarding the limitation that the at least one layer comprises about 5 to 95 wt% polypropylene, Keller teaches that the layer may contain 2 to 15 wt% linear low density polyethylene (column 6, lines 12-24).
Keller does not report the filter pressure of the post-industrial reclaimed polypropylene through a 350-mest filter as recited in claim 1, however, one of ordinary skill in the art would expect the reclaimed polypropylene to intrinsically satisfy this requirement for the following reasons. According to the applicant's specification, oriented films comprising layers formed from a reclaimed polypropylene having a filter pressure of below 20 bar/kg results stable production of films having a thickness of 25 mm (e.g., paragraph 0037 on page 10). Keller is able to produce 30 micron clear films (column 10, lines 45-51). One of ordinary skill in the art would see the ability of Keller to produce oriented layers at a thickness of 30 mm comprising reclaimed polypropylene as an indication that the reclaimed polypropylene necessarily has a filter of less than about 20 bar/kg.
Keller does not specify that the recycled polypropylene is post-industrial reclaimed polypropylene. However, it would have been obvious to one of ordinary skill in the art to use scraps of the Keller film as the recycled polypropylene of Keller as a means of reducing waste. Additionally, in the absence of a showing of criticality or unexpected results, it would have been obvious to one of ordinary skill in the art to use any recycled polypropylene, including post-industrial polypropylene, as the recycled polypropylene.
Regarding claims 4, one of ordinary skill in the art would expect an isotactic polypropylene to read on a high-crystalline polypropylene.
Regarding claim 14, the film of Keller may be used as a label (column 1, lines 51-67).
Regarding claim 16, Keller teaches that the skin layer may be coated (column 8, line 65-column 9, line 3).
Keller does not teach the dispersion index of the reclaimed polypropylene used in the oriented film.
Potter is directed to a biaxially oriented polypropylene film (paragraph 0001) having low shrinkage to ensure dimensional stability during post treatment and subsequent use (paragraph 0003). The polypropylene preferably has a dispersion index of at least 9.0 (paragraph 0007) and a melt flow rate of less than or equal to 7.0 g/10 min (paragraph 0018).
It would have been obvious to one of ordinary skill in the art to ensure that the polypropylenes used to form the film of Keller have a dispersion index of as low as 9.0 to provide greater dimensional stability - a property sought by Keller (see column 10, lines 5-27) - to the oriented film.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Keller (US 5,691,043) in view of Potter (US 2016/0311988) as applied to claim 1 above, and further in view of Fiscus (US 2010/0215933).
Keller taken in view of Potter suggest all the limitations of claim 10, as outlined above, except for the presence of a plastomer.
Fiscus is directed to a polypropylene film having a haze of 13% or less (paragraph 0008). The film may have a skin layer comprising polyolefins, such as ethylene-propylene copolymer, ethylene-propylene-butylene terpolymer, or ethylene-based plastomers (paragraphs 0060-0061). Fiscus also teaches that the outer surface of the film may be coated with an ethylene acrylic acid coating, an ethylene methacrylate coating, an ethylene vinyl alcohol coating, or a metal coating applied by physical deposition (paragraph 0080).
Regarding claim 10, Keller does teach that the film may have a skin layer comprising polyolefins such as ethylene-propylene copolymer or ethylene-propylene-butylene terpolymer (column 7, lines 58-67). Fiscus shows that polyolefins such as ethylene-propylene copolymer, ethylene-propylene-butylene terpolymer, and ethylene-based plastomers are known in the art as functionally equivalent coatings for low haze polypropylene films. Therefore, because these materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to use an ethylene-based plastomers in the skin layer of Keller.
Regarding claims 18-20, it would have been obvious to use ethylene acrylic acid, ethylene methacrylate, ethylene vinyl alcohol, or metal applied by physical deposition as the coating of Keller since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07. One of ordinary skill in the art would expect an ethylene acrylic acid or ethylene methacrylate coating to provide the film with sealability, an ethylene vinyl alcohol coating or metal applied by physical deposition to provide the film with a barrier property.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Keller (US 5,691,043) in view of in view of Potter (US 2016/0311988) as applied to claim 1 above, and further in view of Ishii (US 2016/0017479).
Keller taken in view of Potter suggest all the limitations of claims 17-20, as outlined above, except for specifying the material of the coating.
Ishii is directed to providing gas barrier properties to a biaxially oriented polypropylene film by forming an aluminum oxide thin film of one surface (paragraph 0012). The surface is preferably provided with an anchor coat (paragraph 0014). The anchor coat may be formed from a urethane resin, an acrylic resin, or an ethylene vinyl alcohol resin (paragraph 0054). The aluminum oxide layer may be formed by vacuum vapor deposition or sputtering (paragraph 0090), both of which are formed of physical vapor deposition.
It would have been obvious to one of ordinary skill in the art to apply the coating of Ishii to provide the resulting film with gas barrier properties. Moreover, it would have been obvious to one of ordinary skill in the art to use scraps formed during the production of this coated film as the recycled polypropylene of Keller as a means of reducing waste.
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.
Claim 1-16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 18 of copending Application No. 19/069,397 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claim(s), such as claim 15, with the independent claim to yield an oriented film exhibiting the benefits conveyed by the limitations of the dependent claims. Additionally, the range of filter pressures (and the range of number of layers for claim 8) recited in the instant claims overlaps those range recited in the claims of copending Application No. 19/069,397, and the courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
Regarding claim 20, it would have been obvious to one of ordinary skill in the art to use scraps formed during the production of the film recited in the claims of copending Application No. 19/069397 as the reclaimed polypropylene as a means of reducing waste.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 18 of copending Application No. 19/069,397 in view of Ishii (US 2016/0017479).
Ishii is directed to providing gas barrier properties to a biaxially oriented polypropylene film by forming an aluminum oxide thin film of one surface (paragraph 0012). The surface is preferably provided with an anchor coat (paragraph 0014). The anchor coat may be formed from a urethane resin, an acrylic resin, or an ethylene vinyl alcohol resin (paragraph 0054).
It would have been obvious to one of ordinary skill in the art to apply the anchor coat of Ishii to provide the metallized layer with improved adhesion to the biaxially oriented polypropylene. Additionally, it would have been obvious to one of ordinary skill in the art to use scraps formed during the production of this film as the reclaimed polypropylene as a means of reducing waste.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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 on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
