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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10, 12, 14-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al. (US 2020/0047960 A1) (previously cited) in view of Suzuki et al. (US 2018/0126696 A1) (previously cited).
Regarding claim 1, Kono discloses a laminate that has excellent gas barrier properties (Kono, abstract). Kono teaches the barrier laminate comprises at least a polypropylene resin layer (base material layer (A)), a gas barrier adhesive layer (B), an evaporated film comprising an inorganic oxide (gas barrier vapor-deposited inorganic layer), and a sealant layer (D) (Kono, abstract, Par. 0065 and 0068-0070). Kono teaches the base material layer can be a multilayer substrate (Kono, Par. 0065-0066) that comprises biaxially stretched oriented polypropylene and a surface coating (undercoating layer) (Kono, Par. 0068-0070). Kono teaches the evaporated film is directly provided onto the surface coating layer (Kono, Fig. 5). Kono teaches the sealant layer comprises polypropylene (Kono, Par. 0126). Kono teaches the barrier laminate comprises a barrier coating layer (E) directly provided onto the evaporated film, the barrier coating layer is a gas barrier coating film formed of a resin composition comprising a metal alkoxide including tetraethoxysilane and a water-soluble polymer including polyvinyl alcohol (Kono, Par. 0020, 0139-0149, and Fig 5). Kono teaches an embodiment where the laminate comprises the polypropylene resin layer (base material layer (A)), the surface coating (undercoating layer), the sealant layer comprising polypropylene (D), two evaporated film layers (C), the barrier coating layer (E), and an adhesive layer (B) (Kono, Fig. 5). Kono teaches the polypropylene resin layer has a thickness of 1-300 µm (Kono, Par. 0069), the sealant layer comprising polypropylene has a thickness of 5-500 µm (Kono, Par. 0138), the evaporated film layers have a thickness of 1 to 100 nm (.0001-.01 µm) (Kono, Par. 0024), the barrier coating layer has a thickness of 0.1 to 50 µm (Kono, Par. 0158), and the adhesive layer has a thickness of 0.5-6.0 µm (Kono, abstract). Kono thus teaches the layers comprising polypropylene ((A) and (D)) can have a combined thickness of up to 800 µm, and the layers not comprising polypropylene can have a thickness as low as 0.62 µm. While Kono is silent regarding the thickness of the surface coating layer, Kono teaches the thickness of the polypropylene layers can be up to 99.9% of the thickness of the laminate without the surface coating layer. It would have been obvious to one of ordinary skill in the art that if the polypropylene layers comprise up to 99.9% of the thickness of the laminate, then the laminate would comprise a polypropylene content that renders obvious the claimed range of 90% or more by mass the total amount of resin materials in the barrier laminate, see MPEP 2144.05, I & MPEP 2143.
Regarding the limitations of the ratio of silicon atoms to carbon atoms (Si/C), Kono teaches the water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight of the metal alkoxide (Kono, Par. 0149). This results in a solid content ratio of 0.05 to 5 (5/100 and 500/100). Further, Kono teaches the metal alkoxide can include tetraethoxysilane and the water-soluble polymer can include polyvinyl alcohol (Kono, Par. 0143-0147), which is the same as the instant invention as stated in the instant specification Par. 0076-0079. Meanwhile, the instant specification states the ratio of silicon atoms to carbon atoms depends on the ratio of metal alkoxide and water-soluble polymer (See the instant specification Par. 0082). Further, the instant specification states the amount of water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight metal alkoxide (See the instant specification Par. 0080), which is the same as the range of Kono. The instant specification further provides examples (see example 4-2) which uses a solid content ratio within the range of Kono that has a ratio of Si/C atoms that lies within the claimed range (See the instant specification Table 4). Therefore, Kono’s barrier coating layer, which utilizes the same materials and the same amounts as the instant invention, would have a ratio of silicon atoms to carbon atoms (Si/C) on the surface that renders obvious the claimed range, see MPEP 2144.05 & MPEP 2112.01.
Kono is silent with regard to the surface coating layer containing a resin material with a polar group.
Suzuki discloses a barrier laminate comprising a base material layer (Suzuki, abstract). The base material layer comprises biaxially stretched/oriented (Suzuki, Par.0131) polypropylene (Suzuki, Par. 0132). The base material layer can comprise an undercoat layer (Suzuki, Par.0136). The undercoat layer is formed of one or two types of resin selected from polyurethane-based resin, a polyester based resin, an oxazoline-based resin, and an acrylic-based resin (Suzuki, Par. 0138 and Claim 1). As Suzuki indicates the undercoat layer can be one type of resin, Suzuki teaches embodiments wherein the undercoat layer comprises 100 wt.% of acrylic-based resin, which lies within the claimed range of at least 90 wt.% and therefore satisfies the claimed range, see MPEP 2131.03. Suzuki teaches the acrylic-base resin can be a (meth)acrylic resin with a hydroxy group (Suzuki, Par. 0138-0139, 0159-0160, and 0165). Thus, the undercoat layer comprises a resin material with a polar group (such as a hydroxy group).
Kono and Suzuki are analogous art as they both disclose a barrier laminate that comprises a base material layer of a biaxially stretched oriented polypropylene that comprises a coating layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the undercoat layer that comprises a polar group as disclosed by Suzuki for the undercoat layer in Kono motivated by the expectation of forming a surface of the base material layer that has improved adhesion between the base material layer and the inorganic material layer (Suzuki, Par. 0136, 0161).
Regarding claim 2, modified Kono discloses the sealant layer comprises polypropylene (Kono, Par. 0126). It would have been obvious to select and to try polypropylene to form the sealant layer from the finite list of viable materials disclosed by Kono with a predictable and reasonable expectation of success (MPEP 2143).
Regarding claim 3, Kono discloses a laminate that has excellent gas barrier properties (Kono, abstract). Kono teaches the barrier laminate comprises at least a polypropylene resin layer (base material layer), a gas barrier adhesive layer (B), an evaporated film comprising an inorganic oxide (gas barrier vapor-deposited inorganic layer), and a sealant layer (D) (Kono, abstract, Par. 0065 and 0068-0070). Kono teaches the base material layer can be a multilayer substrate (Kono, Par. 0065-0066) that comprises biaxially stretched oriented polypropylene and a surface coating (undercoating layer) (Kono, Par. 0068-0070). Kono teaches the sealant layer can comprise a second evaporated film and a sealant substrate (Kono, Par. 0161 and fig. 5). Kono teaches the evaporated film is directly provided onto the surface coating layer (Kono, Fig. 5). Kono teaches the sealant layer comprises polypropylene (Kono, Par. 0126). Kono teaches the barrier laminate comprises a barrier coating layer (E) directly provided onto the evaporated film, the barrier coating layer is a gas barrier coating film formed of a resin composition comprising a metal alkoxide including tetraethoxysilane and a water-soluble polymer including polyvinyl alcohol (Kono, Par. 0020, 0139-0149, and Fig 5). Kono teaches an embodiment where the laminate comprises the polypropylene resin layer (base material layer (A)), the surface coating (undercoating layer), the sealant layer comprising polypropylene (D), two evaporated film layers (C), the barrier coating layer (E), and an adhesive layer (B) (Kono, Fig. 5). Kono teaches the polypropylene resin layer has a thickness of 1-300 µm (Kono, Par. 0069), the sealant layer comprising polypropylene has a thickness of 5-500 µm (Kono, Par. 0138), the evaporated film layers have a thickness of 1 to 100 nm (.0001-.01 µm) (Kono, Par. 0024), the barrier coating layer has a thickness of 0.1 to 50 µm (Kono, Par. 0158), and the adhesive layer has a thickness of 0.5-6.0 µm (Kono, abstract). While Kono is silent regarding the thickness of the surface coating layer, Kono teaches the thickness of the polypropylene layers can be up to 99.9% of the thickness of the laminate without the surface coating layer. It would have been obvious to one of ordinary skill in the art that if the polypropylene layers comprise up to 99.9% of the thickness of the laminate, then the laminate would comprise a polypropylene content that renders obvious the claimed range of 90% or more by mass the total amount of resin materials in the barrier laminate, see MPEP 2144.05, I & MPEP 2143.
Regarding the limitations of the ratio of silicon atoms to carbon atoms (Si/C), Kono teaches the water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight of the metal alkoxide (Kono, Par. 0149). This results in a solid content ratio of 0.05 to 5 (5/100 and 500/100). Further, Kono teaches the metal alkoxide can include tetraethoxysilane and the water-soluble polymer can include polyvinyl alcohol (Kono, Par. 0143-0147), which is the same as the instant invention as stated in the instant specification Par. 0076-0079. Meanwhile, the instant specification states the ratio of silicon atoms to carbon atoms depends on the ratio of metal alkoxide and water-soluble polymer (See the instant specification Par. 0082). Further, the instant specification states that the amount of water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight metal alkoxide (See the instant specification Par. 0080), which is the same as the range of Kono. The instant specification further provides examples (see example 4-2) which uses a solid content ratio within the range of Kono that has a ratio of Si/C atoms that lies within the claimed range (See the instant specification Table 4). Therefore, Kono’s barrier coating layer, which utilizes the same materials and the same amounts as the instant invention, would have a ratio of silicon atoms to carbon atoms (Si/C) on the surface that renders obvious the claimed range, see MPEP 2144.05 & MPEP 2112.01.
Kono is silent with regard to the surface coating layer containing a resin material with a polar group.
Suzuki discloses a barrier laminate comprising a base material layer (Suzuki, abstract). The base material layer comprises biaxially stretched/oriented (Suzuki, Par.0131) polypropylene (Suzuki, Par. 0132). The base material layer can comprise an undercoat layer (Suzuki, Par.0136). The undercoat layer is formed of one or two types of resin selected from polyurethane-based resin, a polyester based resin, an oxazoline-based resin, and an acrylic-based resin (Suzuki, Par. 0138 and Claim 1). As Suzuki indicates the undercoat layer can be one type of resin, Suzuki teaches embodiments wherein the undercoat layer comprises 100 wt.% of acrylic-based resin, which lies within the claimed range of at least 90 wt.% and therefore satisfies the claimed range, see MPEP 2131.03. Suzuki teaches the acrylic-base resin can be a (meth)acrylic resin with a hydroxy group (Suzuki, Par. 0138-0139, 0159-0160, and 0165). Thus, the undercoat layer comprises a resin material with a polar group (such as a hydroxy group).
Kono and Suzuki are analogous art as they both disclose a barrier laminate that comprises a base material layer of a biaxially stretched oriented polypropylene that comprises an undercoat layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the undercoat layer that comprises a polar group as disclosed by Suzuki for the undercoat layer in Kono motivated by the expectation of forming a surface of the base material layer that has improved adhesion between the base material layer and the inorganic material layer (Suzuki, Par. 0136, 0161).
Regarding claim 4, modified Kono discloses the sealant layer comprises polypropylene (Kono, Par. 0136).
Regarding claim 5, modified Kono discloses the second evaporated film is an aluminum evaporated film (Kono, Par. 0113). The adhesive layer is an adhesive agent layer containing a cured product of a composition containing a polyester polyol and an isocyanate compound (Kono, Par. 0075).
Regarding claim 6, Kono discloses a laminate that has excellent gas barrier properties (Kono, abstract). Kono teaches the barrier laminate comprises at least a polypropylene resin layer (base material layer), a gas barrier adhesive layer, an evaporated film comprising an inorganic oxide (gas barrier vapor-deposited inorganic layer), and a sealant layer (Kono, abstract, Par. 0065 and 0068-0070). Kono teaches the base material layer can be a multilayer substrate (Kono, Par. 0065-0066) that comprises biaxially stretched oriented polypropylene and a surface coating (undercoating layer) (Kono, Par. 0068-0070). The multilayer substrate can be biaxially stretched oriented polypropylene films bonded to a PVDC-coated oriented polypropylene films (Kono, Par. 0067-0068). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the base material as a multilayer structure wherein the PVDC-coated oriented polypropylene is the substrate and the oriented polypropylene film is the intermediate layer wherein the oriented polypropylene film has a surface treatment motivated by the expectation of forming a barrier laminate that has excellent chemical and physical strength (Kono, Par. 0065). Kono teaches the evaporated film is directly provided onto the surface coating layer (Kono, Fig. 5). Kono teaches the sealant layer comprises polypropylene (Kono, Par. 0126). Kono teaches the barrier laminate comprises a barrier coating layer (E) directly provided onto the evaporated film, the barrier coating layer is a gas barrier coating film formed of a resin composition comprising a metal alkoxide including tetraethoxysilane and a water-soluble polymer including polyvinyl alcohol (Kono, Par. 0020, 0139-0149, and Fig 5). Kono teaches an embodiment where the laminate comprises the polypropylene resin layer and substrate (base material layer (A)), the sealant layer comprising polypropylene (D), two evaporated film layers (C), the surface coating (E), and an adhesive layer (B) (Kono, Fig. 5). Kono teaches the polypropylene resin layer and substrate (base material layer (A)) has a thickness of 1-300 µm (Kono, Par. 0069), the sealant layer comprising polypropylene has a thickness of 5-500 µm (Kono, Par. 0138), the evaporated film layers have a thickness of 1 to 100 nm (.0001-.01 µm) (Kono, Par. 0024), the barrier coating layer has a thickness of 0.1 to 50 µm (Kono, Par. 0158), and the adhesive layer has a thickness of 0.5-6.0 µm (Kono, abstract). While Kono is silent regarding the thickness of the surface coating layer, Kono teaches the thickness of the polypropylene layers can be up to 99.9% of the thickness of the laminate without the surface coating layer. It would have been obvious to one of ordinary skill in the art that if the polypropylene layers comprise up to 99.9% of the thickness of the laminate, then the laminate would comprise a polypropylene content that renders obvious the claimed range of 90% or more by mass the total amount of resin materials in the barrier laminate, see MPEP 2144.05, I & MPEP 2143.
Regarding the limitations of the ratio of silicon atoms to carbon atoms (Si/C), Kono teaches the water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight of the metal alkoxide (Kono, Par. 0149). This results in a solid content ratio of 0.05 to 5 (5/100 and 500/100). Further, Kono teaches the metal alkoxide can include tetraethoxysilane and the water-soluble polymer can include polyvinyl alcohol (Kono, Par. 0143-0147), which is the same as the instant invention as stated in the instant specification Par. 0076-0079. Meanwhile, the instant specification states the ratio of silicon atoms to carbon atoms depends on the ratio of metal alkoxide and water-soluble polymer (See the instant specification Par. 0082). Further, the instant specification states that the amount of water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight metal alkoxide (See the instant specification Par. 0080), which is the same as the range of Kono. The instant specification further provides examples (see example 4-2) which uses a solid content ratio within the range of Kono that has a ratio of Si/C atoms that lies within the claimed range (See the instant specification Table 4). Therefore, Kono’s barrier coating layer, which utilizes the same materials and the same amounts as the instant invention, would have a ratio of silicon atoms to carbon atoms (Si/C) on the surface that renders obvious the claimed range, see MPEP 2144.05 & MPEP 2112.01.
Kono is silent with regard to the surface coating layer containing a resin material with a polar group.
Suzuki discloses a barrier laminate comprising a base material layer (Suzuki, abstract). The base material layer comprises biaxially stretched/oriented (Suzuki, Par.0131) polypropylene (Suzuki, Par. 0132). The base material layer can comprise an undercoat layer (Suzuki, Par.0136). The undercoat layer is formed of one or two types of resin selected from polyurethane-based resin, a polyester based resin, an oxazoline-based resin, and an acrylic-based resin (Suzuki, Par. 0138 and Claim 1). As Suzuki indicates the undercoat layer can be one type of resin, Suzuki teaches embodiments wherein the undercoat layer comprises 100 wt.% of acrylic-based resin, which lies within the claimed range of at least 90 wt.% and therefore satisfies the claimed range, see MPEP 2131.03. Suzuki teaches the acrylic-base resin can be a (meth)acrylic resin with a hydroxy group (Suzuki, Par. 0138-0139, 0159-0160, and 0165). Thus, the undercoat layer comprises a resin material with a polar group (such as a hydroxy group).
Kono and Suzuki are both analogous art as they both disclose a barrier laminate that comprises a base material layer that is of a biaxially stretched oriented polypropylene that comprises an undercoat layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the undercoat layer that comprises a polar group as disclosed by Suzuki for the undercoat layer in Kono motivated by the expectation of forming a surface of the base material layer that has improved adhesion between the base material layer and the inorganic material layer (Suzuki, Par. 0136, 0161).
Regarding claim 7, modified Kono discloses the polypropylene resin layer, the substrate, and the sealant layer comprises polypropylene (Kono, Par. 0065-0070 and 0136).
Regarding claim 8, modified Kono discloses the adhesive layer is an adhesive agent layer containing a cured product of a composition containing a polyester polyol and an isocyanate compound (Kono, Par. 0075).
Regarding claims 9-10, modified Kono discloses the surface coating has a thickness of 0.01 µm to 0.05 µm (Suzuki, Par. 0181), which overlaps the claimed range of 0.02 to 10 µm, and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Further, given the thicknesses of the other layers as stated above for claim 6, this results in the surface coating layer having a thickness in the range of ~0% to 0.8% of a total thickness of the intermediate layer, which overlaps the claimed range of 0.08% to 20% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 12, modified Kono discloses the layer is formed using an aqueous emulsion (Suzuki, Par. 0139, 0167-0168).
Regarding claims 14-15, modified Kono discloses the laminate is used for a packaging container (Kono, abstract).
Regarding claim 18, modified Kono teaches the resin material can be a polyurethane or a methacrylic resin with a hydroxy group (Suzuki, Par. 0015, 0138-0139, 0159-0160, 0165, and Claim 1).
Response to Arguments
Applicant’s remarks and amendments filed 05 March 2026 have been fully considered.
On pages 6-10 of the remarks, Applicant first argues that the claimed Si/C ratio results in superior and unexpected results. This is not found persuasive for the following reasons:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). The nonobviousness of a broader claimed range [or genus] can be supported by evidence based on unexpected results from testing a narrower range [or species] if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. Applicant points to Table 4 as evidence of superior and unexpected results. Applicant only provides inventive and comparative data utilizing a specific methacrylic acid with a hydroxy group as the surface coating material with a thickness of 0.5 µm, whereas the instant independent claims broadly recite a polar resin as the material for the surface coating, with no mention of the specific thickness. Applicant only provides inventive and comparative data utilizing 10 parts by mass of an unspecified curing agent in the surface coating, whereas the instant independent claims do not recite any curing agent. Applicant only provides inventive and comparative data utilizing a silicon oxide containing carbon evaporated film with a thickness of 12 nm, whereas the instant independent claims broadly recite an inorganic oxide with no mention of the specific thickness. Applicant only provides inventive and comparative data utilizing an unstretched polypropylene film with a thickness of 70 µm as the sealant layer, whereas the instant independent claims broadly recite a sealant layer with no mention of the material or thickness. One of ordinary skill in the art would be unable to determine a trend based upon this limited data to reasonably extend the probative data to the much more broadly claimed features as discussed above. Therefore, the inventive and comparative examples are not sufficiently commensurate in scope with the claimed invention in view of MPEP 716.02(d), I.
Regarding Applicant’s argument that the specific materials and ranges of the other layers would not affect the final barrier properties, Applicant has not provided objective evidence or data showing this assertation. Applicant’s data does not show sufficient data utilizing different materials within the claimed limitations to show a trend that the materials of the other layers would not affect the final barrier properties. Therefore, the inventive and comparative examples are not sufficiently commensurate in scope with the claimed invention in view of MPEP 716.02(d), I.
Also, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d), II.
Applying the required analysis noted above, it is clear that the data provided in the examples is not commensurate with the scope of the claims and does not show criticality in establishing unexpected results as follows. The inventive examples only utilize an Si/C ratio of from 0.83 to 1.45. No comparative data is provided below the claimed range of 0.83. One of ordinary skill in the art would not be able to reasonably conclude that all possible claimed content ranges/ratios would necessarily yield the asserted superior and unexpected results. Regarding Applicant’s argument that Kono’s examples would have an Si/C ratio above the claimed range and thus data below the claimed range is not required, MPEP 716.02(d), II states that “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)”, see MPEP 716.02(d), II. Therefore, in order to show the criticality of the claimed range, data outside the claimed range, including below the claimed range, must be shown. Furthermore, while Kono’s example has an Si/C ratio above the claimed range, Kono teaches a range of content amounts that would result in Si/C ratio’s that overlap the claimed range, including within the claimed range and below the claimed range as stated above for claim 1.
In view of the foregoing, the data provided is not commensurate in scope with the instant claims as required by MPEP 716.02(d). When all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. As such, Applicant’s argument that the instant invention has superior and unexpected results in unconvincing.
On pages 6-8 of the remarks, Applicant argues that Kono would not inherently exhibit the claimed Si/C ratio. This is not found persuasive for the following reasons:
Kono teaches the water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight of the metal alkoxide (Kono, Par. 0149). This results in a solid content ratio of 0.05 to 5 (5/100 and 500/100). Further, Kono teaches the metal alkoxide can include tetraethoxysilane and the water-soluble polymer can include polyvinyl alcohol (Kono, Par. 0143-0147), which is the same as the instant invention as stated in the instant specification Par. 0076-0079. Meanwhile, the instant specification states the ratio of silicon atoms to carbon atoms depends on the ratio of metal alkoxide and water-soluble polymer (See the instant specification Par. 0082). Further, the instant specification states that the amount of water-soluble polymer can be present in an amount of 5 to 500 parts by weight based on 100 parts by weight metal alkoxide (See the instant specification Par. 0080), which is the same as the range of Kono. The instant specification further provides examples (see example 4-2) which uses a solid content ratio within the range of Kono that has a ratio of Si/C atoms that lies within the claimed range (See the instant specification Table 4). For example, the instant example 4-2 has a solid content ratio of 4.1 and an Si/C ratio of 1.45, which lies within the claimed range. Therefore, Kono’s barrier coating layer, which utilizes the same materials and the same amounts as the instant invention, would have a range of values for a ratio of silicon atoms to carbon atoms (Si/C) on the surface that overlaps and thus renders obvious the claimed range, see MPEP 2144.05 & MPEP 2112.01. While Kono may teach an example utilizing an Si/C ratio above the claimed range, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. Kono thus does not teach away from the broader disclosure that use a solid content ratio of 0.05-5, which would result in an Si/C ratio range that overlaps and renders obvious the claimed range, see MPEP 2144.05, I.
In response to applicant's argument that Kono is silent regarding the benefits of Si/C, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As stated above, Kono teaches a solid content range that results in a Si/C ratio that renders obvious the claimed range.
In view of the above, Kono in view of Suzuki render obvious the claimed Si/C ratio and Applicant’s argument is unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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