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 .
Response to Amendment
Withdrawn Objections/Rejections
The objections to claims 1-6, 8-12, 14-19 are withdrawn due to Applicant’s arguments filed on January 14, 2026.
The 35 U.S.C. 103 rejections of claims 1-6, 8-12, 14-19 over Allard in view of Müller, as the primary combination of references, are withdrawn due to Applicant’s arguments filed on January 14, 2026.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 1-2, 4-6, 9, 12, 14, 16, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Delnoye (US 2021/0017715).
Regarding claim 1, 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.
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 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 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.
Claims 3, 10-11, 15, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Delnoye as applied to claims 1-2, 4-6, 9, 12, 14, 16, 18-19 above, and further in view of Allard (EP 3561178 A1).
Delnoye 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.
Regarding claim 3, 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]; 0.75:1, Sample 4 [0090]) which is within the claimed range of between 1:6 and 2:1, for the purpose of providing the desired combination of reduction of hydrocarbon migration (sufficiently impenetrable coating matrix for mineral oil hydrocarbons [0029]), and improvement in flexibility of the formed coating layer ([0029]).
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 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 combination of reduction of hydrocarbon migration, and improvement in flexibility of the formed coating layer, as taught by Allard.
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 combination of reduction of hydrocarbon migration, and improvement in flexibility of the formed coating layer, 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 combination of reduction of hydrocarbon migration, and improvement in flexibility of the formed coating layer, 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 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 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]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Delnoye as applied to claims 1-2, 4-6, 9, 12, 14, 16, 18-19 above, and further in view of Müller (US 2016/0230342).
Delnoye 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. 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.
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.
The prior art AT-404606-B made of record and not relied upon is 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.
Information regarding the status of an application may be obtained from the Patent Center (https://patentcenter.uspto.gov). Should you have any questions on the Patent Center system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782
Prosecution Insights