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 the last lines 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 is a relative term which renders the claim indefinite. The term "high" is not defined by the claim, 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 virgin 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.
Claim 18 is 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 claim 18 states that the at least one layer consists of the reclaimed polypropylene while independent claim 1 states that the at least one layer comprises a combination of virgin and reclaimed polypropylene and that this combination is no more than about 95 wt% of the at least one layer. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim 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 1-14, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Marchal (US 2018/0333935) in view of Potter (US 2016/0311988) as evidenced by the Sabic® PP 521P data sheet.
Marchal is directed to a cavitated and pigmented film suitable for use as a label (paragraph 0007). The film is coextruded biaxially oriented polypropylene and layers of the film may additionally contain copolymers of ethylene and propylene (paragraph 0015). The film may comprise skin layers of propylene-ethylene-butylene terpolymer, tie layers of polypropylene, and a core layer comprising virgin and reclaimed polypropylene (Tables 1-7). The core layer may further contain an additional polymer, such as a plastomer (paragraph 0029).
Regarding claims 4 and 5, Sabic® PP521P is an isotactic polypropylene (see the Sabic® PP 521P data sheet). As an isotactic polypropylene, one of ordinary skill in the art would expect it to satisfy the limitations of claim 4.
Regarding claim 6, Marchal teaches that skin layers are optional and, when present, may be applied directly to the core layer (paragraph 0038). This suggests that the film may be a two layer film, one core and one skin layer.
Regarding claims 9-11, Marchal teaches that calcium carbonate or polybutylene terephthalate may be added to the film as the cavitating agent (paragraph 0011).
Regarding claim 13, a coating may be applied to the film (paragraph 0042).
Regarding claim 14, the film may be metallized (paragraph 0059).
Marchal does not report the filter pressure of the 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 ≥ about 50 bar/kg results in films that break and are generally commercially unacceptable films (e.g., paragraph 0019 on pages 4-5). One of ordinary skill in the art would see the ability of Marchal to produce oriented layers comprising reclaimed polypropylene as an indication that the reclaimed polypropylene necessarily has a filter pressure that satisfies the limitations of claim 1.
Marchal does not teach the melt flow index or 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, virgin and reclaimed, used to form the film of Marchal have a dispersion index of as low as 9.0 and a melt flow rate of less than or equal to 7.0 g/10 min to provide greater dimensional stability to the oriented film.
Since the ranges of melt flow index and dispersion index taught by the prior art overlap those recited in the claims, the invention as claimed would have been obvious to one of ordinary skill in the art. The courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Marchal (US 2018/0333935) in view of Potter (US 2016/0311988) as applied to claim 1 above, and further in view of Destro (WO 2024/083434).
Marchal taken in view of Potter suggest all the limitations of claims 15-17, as outlined above, except for the type of reclaimed polypropylene used in the biaxially oriented film.
Destro is directed to a recycled polypropylene composition that is suitable for use in making biaxially oriented films (paragraph 0002). The recycled polypropylene may be post-industrial resin or post-consumer resin (paragraph 0009).
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), it would have been obvious to one of ordinary skill in the art to use post-industrial resin and/or post-consumer resin as the reclaimed polypropylene of Marchal.
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 1-13, 15, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 (reference application).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the inventions of instant claims 1-13, 15, and 18 represent a genus of which the inventions described by claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 are species. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). The invention recited in claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 represent a species of instant claims 1-13, 15, and 18 since they are restricted to films having a haze of about 50% or less that are neither cavitated nor pigmented while the films of instant claims 1-13, 15, and 18 are allowed to be cavitated or pigmented and can have any haze.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 in view of Marchal (US 2018/0333935).
Claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 recite all the limitations of claim 14, as outlined above, except for the film being metallized.
Marchal, directed to oriented polypropylene films, teaches that the outer surface(s) of such films may be metallized (paragraph 0059).
It would have been obvious to one of ordinary skill in the art to metallize the film claimed in copending Application No. 19/067,851 for aesthetic reasons.
This is a provisional nonstatutory double patenting rejection.
Claims 16 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 in view of Destro (WO 2024/083434).
Claims 1-5, 7, and 9-16 of copending Application No. 19/067,851 recite all the limitations of claims 16 and 17, as outlined above, except for the use of post-consumer resin as the recycled polypropylene. However, the claims of copending Application No. 19/067,851 do recite the use of post-industrial reclaimed polypropylene.
Destro is directed to a recycled polypropylene composition that is suitable for use in making biaxially oriented films (paragraph 0002). The recycled polypropylene may be post-industrial resin or post-consumer resin (paragraph 0009).
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), it would have been obvious to one of ordinary skill in the art to use post-industrial resin and/or post-consumer resin as the reclaimed polypropylene of Marchal.
Destro shows that post-industrial resin or post-consumer resin are known in the art as functionally equivalent reclaimed polypropylene resins for use in oriented films. Therefore, because these two types of reclaimed polypropylene 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 post-consumer resin in place of, or in addition to, post-industrial resin.
This is a provisional nonstatutory double patenting rejection.
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.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
