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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 17, 2026 has been entered.
Response to Amendment
Withdrawn Rejections
The 35 U.S.C. 103 rejections of claims 1-6, 8-12, 14-19 over Delnoye, as the primary reference, are withdrawn due to Applicant’s arguments filed on July 17, 2026.
New Rejections
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 1-6, 9-12, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Delnoye (US 2021/0017715) in view of Allard (EP 3561178 A1).
Regarding claims 1, 3, Delnoye teaches a coating composition for reducing hydrocarbon migration (resistance against the penetration of oil and grease [0050]) through a cellulosic substrate (cellulosic material … paper and cardboard … benefit from imparting oil and grease resistance [0008]), the coating composition comprising:
- waxy starch (amylopectin potato starch [0061]) having an amylose content of less than 2% (amylopectin content > 98%, starch B [0061]) which is within the claimed range of 5% or less, and a weight average molecular weight of 2,800 kDa (2.8 x 106 g/mol, starch B, Table 1 [0075]) which is within the claimed range of between 500 kDa and 20,000 kDa. Delnoye fails to provide an example where a synthetic latex polymer which has a Tg within the claimed range of between -10 [Symbol font/0xB0]C and 25 [Symbol font/0xB0]C, is comprised in a waxy starch-containing coating composition (starch B, Table 1 [0075]).
However, Delnoye teaches in the broader disclosure of the specification, that a styrene butadiene rubber (styrene butadiene copolymer [0052]) which is a synthetic latex polymer (synthetic emulsion polymer [0052]) which has a Tg within the claimed range of between -10 [Symbol font/0xB0]C and 25 [Symbol font/0xB0]C, as disclosed in Applicant’s specification (original claim 2), is added to a coating composition, for the purpose of providing the desired improvement in flexibility of the formed coating layer ([0052]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have added a synthetic latex polymer which has a Tg within the claimed range of between -10 [Symbol font/0xB0]C and 25 [Symbol font/0xB0]C, to the waxy starch-containing coating composition of Delnoye, in order to obtain the desired improvement in flexibility of the formed coating layer, as taught by Delnoye.
Delnoye is silent regarding a ratio between the synthetic latex polymer and the waxy starch.
However, Allard teaches that in a coating composition (coating layer [0004], coating dispersion [0088]) for reducing hydrocarbon migration (penetration of mineral oils [0004] which are saturated hydrocarbons and aromatic hydrocarbons [0002], block migration of hydrocarbons [0025]) through a cellulosic substrate (through the substrate [0025] cellulose-based substrate [0004]), the coating composition comprising:
- starch ([0007, 0085]) having a weight average molecular weight of 5,000 kDa (molecular weight … 5,000,000 g/mole [0044, 0085]) which is within the claimed range of between 500 kDa and 20,000 kDa; and
- a synthetic latex polymer (latex [0007] styrene-acrylate latex [0046], styrene-butadiene latex [0087]), wherein the polymer has a Tg of between 5 [Symbol font/0xB0]C and 20 [Symbol font/0xB0]C ([0048]), or 11 [Symbol font/0xB0]C ([0087]), which is within the claimed range of between -10 [Symbol font/0xB0]C and 25 [Symbol font/0xB0]C, a ratio between the synthetic latex polymer and the starch is 1:1 ([0035]) to 1:1.3 (0.75:1, Sample 4 [0090]) which is within the claimed range of 2:1 to 1:8, or between 1:6 and 2:1, for the purpose of providing the desired improvement in reduction of hydrocarbon migration (sufficiently impenetrable coating matrix for mineral oil hydrocarbons [0029]), and improvement in flexibility of the formed coating layer ([0029]), whereby the ratio described above, not only reduces migration of hydrocarbon oils (mineral oils [0004]), but also reduces permeation of hydrocarbons that are volatile (heptane vapor transmission [0024, 0079, 0090]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided a ratio between the synthetic latex polymer and the waxy starch, that is within a range of 2:1 to 1:8, or between 1:6 and 2:1, in the coating composition for reducing hydrocarbon migration through a cellulosic substrate, of Delnoye, in order to obtain the desired improvement in flexibility of the formed coating layer, in addition to the desired improvement in reduction of hydrocarbon migration which not only includes migration of hydrocarbon oils, but also permeation of hydrocarbons that are volatile, as taught by Allard.
In addition, Delnoye teaches that the starch is present in an amount of 50 wt% based on the dry weight of the composition (oxidized carboxylated starch, based on the coating dry weight [0037]). Accordingly, modified Delnoye teaches that the starch is present in an amount of 50 wt%, and that the synthetic latex polymer is present in an amount of 50 wt% (1:1 [0035] Allard), such that modified Delnoye teaches that the combined amount of starch and synthetic latex polymer is 100 wt% (50+50) which is within the claimed range of at least 80 wt.%., for the purpose of providing the desired improvement in flexibility of the formed coating layer, in addition to the desired improvement in reduction of hydrocarbon migration which not only includes migration of hydrocarbon oils, but also permeation of hydrocarbons that are volatile,, as described above.
Regarding claim 2, Delnoye teaches that the synthetic latex polymer is styrene butadiene rubber and styrene acrylate (styrene butadiene copolymer emulsions, styrene acrylate copolymer emulsions [0052]).
Regarding claim 4, Delnoye teaches that the starch has a weight average molecular weight of 2,800 kDa (2.8 x 106 g/mol, starch B, Table 1 [0075]) which is within the claimed range of between 1,000 kDa and 17,000 kDa.
Regarding claims 5, 18, Delnoye teaches that the starch is an oxidized carboxylated starch (oxidized-carboxylated, starch B, Table 1 [0075]).
Regarding claim 6, Delnoye teaches that the waxy starch can be further hydroxypropylated (oxidized-carboxylated, hydroxypropylether, starch D, Table 1 [0075]).
Regarding claim 9, Delnoye teaches that the coating composition does not comprise a plasticizer (coating based on oxidized carboxylated starch [0091-0092], no plasticizer is added).
Regarding claim 10, Delnoye teaches that the coating composition comprises an aqueous continuous phase comprising the starch in a dissolved form (homogenous aqueous solution comprising the oxidized carboxylated starch [0055]), and a hydrophobic dispersed phase comprising the synthetic latex polymer in the form of droplets (styrene butadiene copolymer emulsions, styrene acrylate copolymer emulsions [0052]), but is silent regarding a diameter of the droplets.
However, Allard teaches that in a coating composition comprising an aqueous continuous phase comprising a starch in a dissolved form (pH in solution [0085]), and a hydrophobic dispersed phase comprising the synthetic latex polymer in the form of droplets ([0048]), the droplets have a diameter of 50 nm to 500 nm ([0048]) or 90 nm (latex with a particle size [0087]), which is within the claimed range of between 10 nm and 5,000 nm, for the purpose of providing the desired improvement in flexibility of the formed coating layer, in addition to the desired improvement in reduction of hydrocarbon migration which not only includes migration of hydrocarbon oils, but also permeation of hydrocarbons that are volatile, as described above.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided the droplets of the synthetic latex polymer in the hydrophobic dispersed phase of the coating composition of Delnoye, with a diameter that is within a range of between 10 nm and 5,000 nm, in order to obtain the desired improvement in flexibility of the formed coating layer, in addition to the desired improvement in reduction of hydrocarbon migration which not only includes migration of hydrocarbon oils, but also permeation of hydrocarbons that are volatile, as taught by Allard.
Regarding claim 11, Delnoye teaches that the coating composition has a dry solids content of 20 wt% (20% [0079]) and fails to teach that it is within a higher range of 40 wt% to 60 wt%.
However, Delnoye teaches that the dry solids content of 20 wt% is merely exemplary and non-limiting ([0059]).
Allard teaches that a coating composition has a dry solids content that depends on the application method, and that the dry solids content of 40 wt% to 60 wt% (dry matter content [0056]) which is within the claimed range of at least 30 wt%, based on a total weight of the composition, is used for the purpose of providing the desired coating properties in an inline coating process ([0056]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have increased the dry solids content of the coating composition of Delnoye, from 20 wt% to one that is within a range of at least 30 wt%, based on a total weight of the composition, in order to obtain the desired coating properties in an inline coating process, as taught by Allard.
Regarding claim 12, Delnoye teaches a method for reducing hydrocarbon migration (resistance against the penetration of oil and grease [0050], improve the oil and grease resistance [0054]) through a cellulosic substrate (cellulosic material [0054]), said method comprising:
- providing a cellulosic substrate (cellulosic material [0054]);
- coating said cellulosic substrate (said material [0054]) on at least one side ([0054]) with the coating composition (homogenous aqueous composition comprising an oxidized carboxylated starch [0054]), and drying the cellulosic substrate (drying the first cellulosic material [0054]).
Regarding claim 14, Delnoye teaches a cellulosic substrate (cellulosic material [0054]), comprising the coating composition (homogenous aqueous composition comprising an oxidized carboxylated starch [0054]).
Regarding claim 15, Delnoye is silent regarding a weight of said cellulosic substrate comprising the coating composition.
However, Delnoye teaches that the cellulosic substrate is used for food packaging ([0008]).
Allard teaches that a cellulosic substrate (cellulose-based substrate [0004]), comprising the coating composition (having a coating layer arranged on a surface [0004]), can have a weight of 310 g/m2 (substrate having a basis weight of 300 g/m2, plus coating weight of …10 g/m2 [0089]) which is within the claimed range of 60-400 g/m2, for the purpose of providing the desired food packaging utility ([0007]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided the cellulosic substrate of Delnoye, with a weight that is within a range of 60-400 g/m2, in order to obtain the desired food packaging utility, as taught by Allard.
Regarding claims 16, 19, Delnoye teaches that the coating composition is present at a coat weight of 7.5 g/m2 ([0015]) which is within the claimed range of between 3 and 25 g/m2, or between 7.5 and 20 g/m2.
Regarding claim 17, Delnoye teaches a method for preparing the coating composition as an aqueous coating composition, comprising:
- providing an aqueous solution (homogenous aqueous composition [0054]) of waxy starch (oxidized carboxylated starch [0054], amylopectin potato starch [0061]) having an amylose content of less than 2% (amylopectin content > 98%, starch B [0061]) which is within the claimed range of 5% or less, and a weight average molecular weight of 2,800 kDa (2.8 x 106 g/mol, starch B, Table 1 [0075]) which is within the claimed range of between 500 kDa and 20,000 kDa;
- providing an aqueous emulsion of a synthetic latex polymer (synthetic emulsion polymer [0052], styrene butadiene copolymer emulsion, styrene acrylate copolymer emulsion [0052]) which has a Tg within the claimed range of between -10 [Symbol font/0xB0]C and 25 [Symbol font/0xB0]C, as disclosed in Applicant’s specification (original claim 2), added for the purpose of providing the desired improvement in flexibility of the formed coating layer ([0052]);
- mixing the aqueous solution of starch with the emulsion of the synthetic latex polymer (added to the coating formulation [0052]), thereby forming the coating composition (coating formulation [0052]).
Allard also teaches a similar method for preparing the coating composition, comprising:
- providing an aqueous solution of starch (water … pH in solution [0085], solvent of the dispersion may be water … starch may be dissolved in the solvent [0055]) having a weight average molecular weight of 5,000 kDa (molecular weight … 5,000,000 g/mole [0044, 0085]) which is within the claimed range of between 500 kDa and 20.000 kDa;
- providing an aqueous emulsion (latex dispersed in water [0087]) of a synthetic latex polymer (latex [0007] styrene-acrylate latex [0046], styrene-butadiene latex [0087]) having a Tg of between 5 [Symbol font/0xB0]C and 20 [Symbol font/0xB0]C ([0048]), or 11 [Symbol font/0xB0]C ([0087]), which is within the claimed range between -10 °C and 25 °C;
- mixing the aqueous solution of starch (water … pH in solution [0085], solvent of the dispersion may be water … starch may be dissolved in the solvent [0056]) with the emulsion of the synthetic latex polymer (mixing starch with latex [0056]), thereby forming the coating composition (coating dispersion [0058]).
Regarding claim 20, Allard teaches that the synthetic latex polymer has a Tg of +11 [Symbol font/0xB0]C ([0087]) which is within the claimed range of between 0 [Symbol font/0xB0]C and +15 [Symbol font/0xB0]C, for the purpose of providing the desired improvement in flexibility of the formed coating layer, in addition to the desired improvement in reduction of hydrocarbon migration which not only includes migration of hydrocarbon oils, but also permeation of hydrocarbons that are volatile, as described above.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Delnoye in view of Allard, as applied to claims 1-6, 9-12, 14-20 above, and further in view of Müller (US 2016/0230342).
Delnoye, as modified by Allard, teaches the coating composition for reducing hydrocarbon migration through a cellulosic substrate, comprising: the waxy starch; and the synthetic latex polymer that is added for the purpose of providing the desired improvement in flexibility of the formed coating layer, as described above. Modified Delnoye fails to teach that the coating composition further comprises polyvinyl alcohol.
However, Müller teaches that a coating composition (abstract) for reducing hydrocarbon migration (mineral oil, abstract) through a cellulosic substrate (paper, abstract), comprising: waxy starch (low amylose content of less than 35 % and greater than 0.5 % ([0063]), further comprises polyvinyl alcohol, for the purpose of stabilizing and improving the flexibility of the formed coating layer ([0092]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have further comprised polyvinyl alcohol in the coating composition of Delnoye, in order to stabilize and further improve the flexibility of the formed coating layer, as taught by Müller.
Response to Arguments
Applicant’s arguments have been considered but are moot because of the new order of references and embodiments used in the current prior art rejections. Delnoye in view of Allard, is now the primary combination of references in the current prior art rejections. Applicant’s arguments regarding Delnoye are addressed below for the purpose of advancing prosecution.
Applicant argues that Delnoye relates to barriers against grease upon direct contact, while the invention relates to a barrier against volatile hydrocarbons.
Applicant is respectfully apprised that the fact that Applicant 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.” (Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)). In the instant case, Delnoye, as modified by Allard, teaches the presently claimed coating composition, as described above.
Applicant argues that there is no teaching or suggestion in Delnoye that ageing of the coating against permeating of volatile hydrocarbons can be avoided by applying the starch and latex in the proportions recited above.
Applicant is respectfully apprised that Allard is the secondary reference that teaches the starch and latex in the proportions recited above, for the purpose of providing the desired combination of reduction of hydrocarbon migration, and improvement in flexibility of the formed coating layer, as described above, thus providing the motivation to modify Delnoye.
Furthermore, Allard teaches that the barrier formed by the proportions not only reduces migration of hydrocarbon oils (mineral oils [0004]), but also reduces permeation of hydrocarbons that are volatile (heptane vapor transmission [0024, 0079, 0090]) thus providing even more motivation to modify Delnoye.
.
Conclusion
The prior art US 2018/0135250, CN-103917565-A, and AT-404606-B, made of record and not relied upon are considered pertinent to Applicant's disclosure.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
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