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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/16/2026 has been entered.
Election/Restrictions
Newly submitted claim 37 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The inventions listed as Group I and claim 37 do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: The special technical feature that is commonly shared between the inventions of Group I and claim 37 of a high barrier paperboard is taught by Shih et al. (WO 00/76862) who teaches a multi-layer structure comprising at least one polymer/nanoclay composite layer coated onto a paperboard substrate and an ethylene vinyl alcohol copolymer layer on the polymer/nanoclay composite layer (See Abstract, page 12, lines 3-17, page 13, lines 21-28, Fig. 5), wherein the polymer includes polyethylene (page 14, line 19). Given that Shih et al. teaches nanoclay in the polymer/nanoclay composite layer, the polymer/nanoclay composite layer would necessarily be nucleated as presently claimed. Given that Shih et al. teaches the claimed invention, the cited claims fail to define a contribution over the prior art. Therefore, the cited claims fail to constitute a special technical feature and hence lack of unity exists between the cited claims.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 37 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-3, 16-17, 20, 22, 24, 26, and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (WO 00/76862).
Regarding claim 1, Shih et al. teaches a multilayer polymer layer laminate comprising at least one polymer/nanoclay composite layer coated or applied to paper or paperboard (See Abstract) which inherently has a first major side and a second major side. The polymer/nanoclay composite layer includes polyethylene polymers (page 10). Given Shih et al. teaches nanoclay, the polymer/ nanoclay composite layer would necessarily be nucleated. The laminate may include a flavor retention layer 18 which may be an ethylene vinyl alcohol copolymer (pages 12-13) and corresponds to the claimed at least one ethylene-vinyl alcohol layer. Both polymer/nanoclay composite layer 6 and flavor retention layer 18 are on the first major side of the paperboard substrate 4 and the polymer/nanoclay composite layer 6 is on one side of the flavor retention layer 18 (See Fig. 4).
Given the overlap between the paperboard of Shih et al. and that presently claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a paperboard that is both disclosed by Shih et al. and encompassed by the present claims and thereby arrive that the claimed invention.
Regarding claims 2 and 3, given that Shih et al. teaches high barrier paperboard comprising materials and structure identical to that presently claimed, the high barrier paperboard would necessarily have the water barrier properties as presently claimed, absent evidence to the contrary.
Regarding claim 16, Shih et al. teaches wherein the polymer/nanoclay composite layer includes high-density polyethylene polymers (page 10).
Regarding claim 17, Shih et al. teaches wherein an average thickness of the nucleated polyethylene layer is in a range of about 1 to about 30 microns (page 7) which overlaps the claimed ranges of 0.01 mil to 10 mil.
Regarding claim 20, Shih et al. teaches further comprising tie layers 12 and/or 16 (page 12, Fig. 4) between the paperboard substrate and the ethylene- vinyl alcohol layer.
Regarding claim 22, Shih et al. teaches further comprising tie layer 16 (page 12, Fig. 4) i.e. at least a second tie layer between the first tie layer and the ethylene-vinyl alcohol layer.
Regarding claim 24, Shih et al. teaches further comprising tie layer 12 (page 12, Fig. 4), i.e. at least a third tie layer between the ethylene-vinyl alcohol layer and the nucleated polyethylene layer.
Regarding claim 26, Shih et al. teaches further comprising polyolefin layer 22 which function as heat sealing layer (pages 12, Fig. 4) and corresponds to the first sealant layer on the outermost layer on the first major side of the paperboard substrate.
Regarding claim 28, Shih et al. teaches further comprising polyolefin layer 8 which function as heat sealing layer (pages 12, Fig. 4) and corresponds to the second sealant layer on the second major side of the paperboard substrate.
Regarding claim 29, Shih et al. teaches wherein the second sealant layer includes low-density polyethylene (page 15).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (WO 00/76862) in view of Uradnisheck et al. (US 2014/0311099).
Shih et al. is relied upon as disclosed above.
Regarding claim 12, Shih et al. fails to teach wherein the ethylene-vinyl alcohol layer is an oxygen-scavenging ethylene-vinyl alcohol layer.
However, Uradnisheck et al. teaches an oxygen scavenging composition comprising an oxygen scavenging agent used in a multilayer package with polymers including ethylene/vinyl alcohol copolymers (See Abstract, paragraphs [0008], [0036] and [0070]).
It would have been obvious to one of ordinary skill in the art to include an oxygen scavenging agent in the ethylene-vinyl alcohol layer of Shih et al. in order to retain product quality and improve shelf life of oxygen sensitive materials (Uradnisheck et al., paragraphs [0002] and [0037]).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (WO 00/76862) in view of Bellini et al. (US 2013/0092590).
Shih et al. is relied upon as disclosed above.
Regarding claim 13, Shih et al. fails to teach wherein an average thickness of the ethylene-vinyl alcohol layer as claimed.
However, Bellini teaches multilayer packaging films comprising a barrier layer (See Abstract, paragraph [0047]) comprising EVOH having a thickness of between 6 and 22 microns (paragraphs [0051]-[0053]) which falls within the claimed ranges of 0.01 mil to 5 mil.
It would have been obvious to one of ordinary skill in the art to choose a thickness including that presently claimed for the ethylene-vinyl alcohol layer of Shih et al. in order to impart the desired Oxygen Transmission Rate (OTR) (Bellini, paragraphs [0052]-[0053]).
Claim(s) 31-32 and 34-35 is rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (WO 00/76862) in view of Borke et al. (WO 2008/112050).
Shih et al. is relied upon as disclosed above.
Regarding claim 31, 32, 34, and 35, Shih et al. fails to teach the nucleating agent as claimed.
However, Borke et al. teaches polyethylene film used in barrier films (page 1) comprising a nucleating agent such as glycerol alkoxide salts, hexahydrophthalic acid salts, and mixtures thereof, wherein the glycerol alkoxide salts include zinc, magnesium, and calcium glycerolates, wherein the amount of nucleating agent is about 0.01 wt% to 1 wt% (pages 4-5).
It would have been obvious to one of ordinary skill in the art to include the nucleating agent in the polyethylene layer of Shih et al. in order to improve the barrier properties of the polyethylene film (Borke et al., page 5).
Response to Arguments
Applicant's arguments filed 03/16/2026 have been fully considered but they are not persuasive.
Applicant amended claim 1 to include the limitation at least one nucleated polyethylene layer on the “at least one ethylene-vinyl alcohol layer” and new claim 37.
Applicant argues that Shih fails to teach the claimed configuration given that the ethylene-vinyl alcohol (EVOH) is present as an additional barrier layer positioned above the polymer/nanoclay composite rather than a nucleated polyethylene layer applied on top of an EVOH layer that itself is on paperboard.
However, given the broadest reasonable interpretation of the phrase “on” and given that the polymer/nanoclay composite of Shih is on one side of the ethylene-vinyl alcohol, it is clear Shih still meets the present claim. There is nothing in the present claims that limits the configuration to that as asserted by Applicant. If Applicant meant to imply the at least one nucleated polyethylene layer is directly on the at least one ethylene-vinyl alcohol layer, it is suggested the claim is amended to recite “directly” and such an amendment would overcome the rejection of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
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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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
