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 .
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of a thickness of 3 to 200 microns, and the claim also recites a thickness of 20 to 90 microns which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the 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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hata et al. (US 5972447) in view of Hirose (US 2019/0367718).
Regarding claim 1, Hata discloses a multilayer film comprising an ethylene vinyl alcohol based copolymer layer having a thickness of 3 to 50 microns (abstract), a heat sealing layer such as polypropylene having a thickness of 80 microns (col. 10, lines 33-36, col. 18, lines 17-19) and an adhesive layer (col. 10, lines 30-31 and col. 18, lines 16-17) wherein the adhesive resin layer is maleic anhydride modified polypropylene (col. 24, lines 12-13) and has a thickness of 5 microns (col. 22, line 2) wherein the ethylene vinyl alcohol based copolymer layer contains sodium ion and a content of sodium ion is 10 to 500 ppm (col. 5, lines 43-50), wherein the ethylene-vinyl alcohol-based copolymer layer comprises an ethylene-vinyl alcohol-based copolymer resin composition and the copolymer having ethylene content of 20 to 60 mol% (abstract), and the composition does not comprise an ethylene-vinyl alcohol-based copolymer which has been modified by oxyalkylene formation (col. 4, lines 54-65).
Hata does not disclose vinyl ester component with a degree of saponification of 99 to 100 mol%.
Hirose discloses multilayer structure comprising ethylene vinyl resin composition comprising EVOH copolymer having ethylene content of 20 to 50 mol% (0049) and degree of saponification of vinyl ester 99 to 100 mol% to obtain excellent oxygen barrier properties and thermal properties (0050).
It would have been obvious to one of ordinary skill in the art to use degree of saponification of vinyl ester of Hirose in the EVOH resin of Hata to obtain excellent oxygen barrier properties and thermal properties.
The recitation in the claims that the multilayer structure is “used in a treatment under a high pressure of 100MPa or more” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Hata in view of Hirose discloses multilayer film as presently claimed, it is clear that the multilayer film of Hata in view of Hirose would be capable of performing the intended use, i.e. used in a treatment under a high pressure of 100MPa or more, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, Hata in view of Hirose discloses the multilayer structure of claim 1 wherein the multilayer structure has a thickness of 50 to 300 microns (abstract).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiroshi et al. (JP 2003-025518) in view of Hata et al. (US 5972447) and Hirose (US 2019/0367718).
Regarding claim 1, Hiroshi discloses a multilayer film comprising a gas barrier layer C comprising ethylene vinyl alcohol copolymer (paragraph 0008) and having a thickness of 2 to 30 microns (0020), a heat sealing layer D comprising polypropylene and having a thickness of 2 to 120 microns (paragraphs 0023-0024) and adhesive layer B such as maleic anhydride modified polypropylene with a thickness of 0.5 to 25 microns (paragraphs 0017-0018) wherein Hiroshi is silent with respect to modified ethylene vinyl alcohol with oxyalkylene formation and therefore it is clear that the ethylene vinyl alcohol based copolymer is not modified by oxyalkylene formation.
Hiroshi does not disclose sodium ion in the ethylene vinyl alcohol.
Hata discloses multilayer structure comprising a layer containing ethylene vinyl alcohol made with 10 to 500 ppm of sodium ion and having ethylene content of 20 to 60 mol% (abstract) to improves adhesion between layers and compatibility (col. 5, lines 43-50, col. 6, line 5-11).
It would have been obvious to one of ordinary skill in the art to use the ethylene content and the sodium ion and its amount of Hata in the ethylene vinyl alcohol of Hiroshi to obtain thermal stability.
Hiroshi in view of Hata does not disclose vinyl ester component with a degree of saponification of 99 to 100 mol%.
Hirose discloses multilayer structure comprising ethylene vinyl resin composition comprising EVOH copolymer having ethylene content of 20 to 50 mol% (0049) and degree of saponification of vinyl ester 99 to 100 mol% to obtain excellent oxygen barrier properties and thermal properties (0050).
It would have been obvious to one of ordinary skill in the art to use degree of saponification of vinyl ester of Hirose in the EVOH resin of Hiroshi in view of Hata to obtain excellent oxygen barrier properties and thermal properties.
The recitation in the claims that the multilayer structure is “used in a treatment under a high pressure of 100MPa or more” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Hiroshi in view of Hata and Hirose discloses multilayer film as presently claimed, it is clear that the multilayer film of Hiroshi in view of Hata and Hirose would be capable of performing the intended use, i.e. used in a treatment under a high pressure of 100MPa or more, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 2, Hiroshi in view of Hata and Hirose discloses the multilayer of claim 1 wherein the surface layer A having a thickness of 10 to 150 microns (paragraph 0016), the adhesive layer having a thickness of 0.5 to 25 microns (paragraph 0018), the gas barrier layer C having a thickness of 2 to 30 microns (paragraph 0020) and the heat sealing layer D having thickness of 2 to 120 microns (paragraph 0024). Therefore, the overall thickness of the multilayer is 14.5 to 325 microns.
Response to Arguments
Applicant's arguments filed 06/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the amended claim 1 is appropriately commensurate with the unexpected results and is now patentable. However, it is noted that the data is still not commensurate is scope with the scope of the present claim given that the examples disclose specific compositions with specific amounts while the present claim recites any amount and type ethylene vinyl alcohol based copolymer that has ethylene content of 25 to 50 mol% and a vinyl ester component with a degree of saponification of 99 to 100 mol% in EVOH layer, any amount and type of polypropylene modified by grafting with maleic anhydride polymer or copolymer in adhesive layer and any type and amount of polypropylene in heat sealing layer . Further, there is no data points for higher and lower contents of sodium ions, i.e. 400 ppm and 100 ppm.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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