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.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12319797_B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims teach all of the claimed limitations of the instant, independent claims.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19, 20, 21, and 22, is/are rejected under 35 U.S.C. 103 as being unpatentable over Peiffer USPN_6068936 in view of Grimm WO_2012022409_A1 (see machine English translation).
1. Regarding Claims 1, 2, 3, 4, 5, 6, 7, 11, 12, 14, 15, 17, 18, 19, 20, 21, and 22, Peiffer discloses a polyolefin film, that can be biaxially stretched (column 10, lines 33-35), containing cycloolefin polymer (Title) having a glass transition temperature ranging from 20 to 200C (column 5, lines 15-23) with a concentration ranging from 1 to 40 wt% (Claim 2), thereby overlapping with Applicants’ claimed ranges. Peiffer further discloses mixing said cycloolefin polymer with a non-cyclic polyolefin (column 3, lines 56-62; as is being claimed in instant Claim 7) ranging from 60 to 99 wt% (Claims 1 and 2), such as the commercial isotactic polypropylene Solvay Eltex PHP 405 (Column 11, lines 30-32) which due to being isotactic PP presumably is semicrystalline. Moreover, Peiffer discloses that said PP can be a homopolymer (corresponds to claimed limitation of instant Claim 31) and copolymers of propylene with C.sub.4 -C.sub.8 -.alpha.-olefins having an .alpha.-olefin content of 10% by weight or less (column 4, lines 5-17), as is being claimed in instant Claim 4. Peiffer also discloses said non-cyclic polypropylene (corresponds to claimed semicrystalline alpha-olefin polymer) can have a crystallite melting temperature ranging from 140 to 170C (column 4, lines 1-2); thereby meeting the claimed ranges of the instant independent claims as well as instant claim 32. No additional ingredients are mandated by Peiffer; thereby meeting the limitation of instant Claim 33. Yet, Peiffer, does not disclose antiblocking agents (corresponds to claimed additives) that can be used in a concentration of 0.1 to 2 wt% (column 9, lines 13-22), as is being claimed in instant Claim 18.
2. Although Peiffer’s cycloolefin polymer’s broad Tg range of 20 to 200C encompasses the claimed Tg range, it does not offer much guidance for specificity, or to render obvious using the narrower claimed range of 120 to 170C.
3. Grimm discloses a composition for producing a film comprising a cycloolefin polymer, such as norborene-ethylene copolymer produced by ring conserving copolymerization (Grimm: Derwent Abstract, Claims 2 and 3) using a metallocene catalyst (Grimm: paragraphs 0067, 0072), that is found in the commercial brand of Topas 6013 (as also used by Applicants in their specification; thereby meeting the limitations of instant Claims 2, 3, 6, 19, and 21), having a glass transition temperature of at least 140C (thereby meeting the claimed ranges of instant Claims 1, 5) (Derwent Abstract) in a concentration that can be from 4.5 wt% to 23 wt% (paragraph 0142). Furthermore, Grimm discloses that its norbornene-ethylene copolymers when combined with polyolefins resulted in increases in strength, modulus, and hardness, without a decrease in flexural impact strength (paragraph 0016).
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the cycloolefin, of Peiffer, with the norbornene-ethylene cycloolefin copolymer, of Grimm. One of ordinary skill in the art would have been motivated in doing so in order to obtain the aforementioned advantageous properties.
5. As such, the Tg of said cycloolefin norbornene-ethylene copolymer will be lower than the crystallite melting temperature of the PP, thereby meeting the claimed relationship. Finally, although the claimed shrinkage of instant claims 15 as well as the dielectric strength and loss of instant Claims 12, 20, 22 are not disclosed, it would be expected for it to be inherently found due to Peiffer in view of Grimm teaching substantially the same claimed product. The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
6. Regarding Claim 8, Peiffer in view of Grimm suggests a co-continuous phase that results (column 13, lines 1-5).
7. Regarding Claim 9, Peiffer in view of Grimm does not state the inclusion of these metals and as such it can be assumed that it meets the claimed limitation.
8. Regarding Claim 10, Peiffer in view of Grimm suggests a 10 microns thickness (Peiffer: column 3, lines 56-62).
9. Regarding Claim 16, Peiffer in view of Grimm suggests having a multi-layered film with the afore-described compositions (Peiffer: column 3, lines 7-27).
Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peiffer USPN_6068936 in view of Grimm WO_2012022409_A1 (see machine English translation), as applied to Claims 1-12 and 14-22, and further in view of Kobayashi JP_09270361_A (see machine English translation).
12. Regarding Claim 13, Peiffer in view of Grimm do not suggest the claimed surface roughness limitations.
13. Kobayashi discloses a polyolefin film that can be drawn using biaxial stretching to produce films of 10 microns thickness and used in capacitors (Title, Derwent abstract, paragraphs 0017, 0034). Kobayashi suggests using stretching to change surface roughness (Kobayashi: paragraph 0023) to achieve a surface roughness of 0.15 microns or less (Kobayashi: paragraph 0015); thereby meeting the claimed ranges of instant claim 13. It would be expected for one of ordinary skill in the art to know how to vary the stretching based on end-user needs to arrive at a desired surface roughness. Applicants have not indicated how the claimed range results in unexpected and surprising properties.
14. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the film, of Peiffer in view of Grimm, by using the surface roughness obtained from stretching, as disclosed by Kobayashi. One of ordinary skill in the art would have been motivated in doing so in order to obtain a desirable roughness used in capacitor applications.
Conclusion
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 September 27, 2026
