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 .
Drawings
The drawings filed 4/22/2022 are accepted.
Information Disclosure Statement
The information disclosure statement filed 4/7/2026 has been fully considered. An initialed copy of said IDS is enclosed herein.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-23,25-28 and 54-56 (all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not contain support for the claimed invention wherein “the polymer layer comprises a water dispersible substrate layer and the wax layer comprises a water-dispersible layer.” While the specification teaches the polymer layer may be a water dispersible substrate layer, the specification does not contain support for a multilayer film comprising both a polymer layer and a water dispersible substrate film. Similarly, the specification contain support for embodiments wherein the wax layer is utilized as a water-dispersible coating layer,
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 1-23,25-28 and 54-56 (all pending claims) 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. It is unclear how a polymer layer can comprise both a “water-soluble polymer” and a “water dispersible “ substrate layer. Furthermore, it is unclear if the claim requires two distinct layers (i.e., a polymer layer and a substrate layer) be present or if the polymer layer is the substrate layer (as detailed in the specification). Similarity, it is unclear if the wax layer and the water-dispersible coating layer are two distinct layer or if the wax layer is the water-dispersible layer (as detailed in the specification).
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) 1-5, 11, 12, 14-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boswell et al (US 2018//0369859) in view of Wilhoit et al (US 2006/0068212) and van Slujis et al (US 2018/0265712).
Boswell teaches a multilayer water-dispersible article (see figure 2) comprising a polymer layer comprising a water-soluble polymer (abstract). The water soluble film may comprise PVOH. The PVOH is understood to read on the claimed “polymer layer” and the ”water dispersible substrate layer.” The multilayer water-dispersible article has a moisture vapor transmission rate (MVTR) of about 7.75 g H2O/m7/day to about 248 g H2O/m7/day (0103). Said range is understood to read on the claimed range. Alternatively, Boswell teaches the barrier properties are result effective variable dependent upon the thickness of the water-soluble layer (0085). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the thickness of the water-soluble layer in order to optimize the moisture vapor transmission properties of the film. The water-dispersible film may comprise an anti-blocking agent (093).
Boswell does not explicitly teach wherein a wax emulsion is present in water-dispersible layer in “amount ranging from about 5-30wt%, based on 100 parts by weight of the water-soluble polymer”. However, Wilhoit teaches wax emulsions may be added to water-dispersible films as an anti-blocking additive (0007). It is believed that the wax migrates to the surface to create a "non-stick" surface and that the application of heat to the film during the formation process can facilitate the migration, or "blooming," of the wax to the surface of the polymeric layer (0039). The wax may be provided in any amount required to impart the desired anti-blocking characteristics (0048). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add wax to the water-dispersible film taught in Boswell because Wilhoit teaches wax is an effective anti-blocking additive. Furthermore, it would have been obvious to one of ordinary sill in the art at the time the invention was filed to optimize the amounts of wax present in the film in order to optimize the anti-blocking properties of the film. With regards to the amount of wax in the emulsion, said limitation is understood to be a method limitation which specifies how the wax is added to the polymer composition. Said limitation fails to distinguish the claimed product from the product of the prior art as the courts have held the method of making a product does not patentably distinguish a claimed product from a product taught in the prior art unless applicant can demonstrate the claimed method of making the product inherently results in a materially different product. In the present case, no such showing has been made.
With regards to the limitation requiring an “intermediate region disposed between the water-soluble polymer layer and the wax layer comprising a mixture of the water soluble polymer layer and the wax layer,” the examiner takes the position that the blooming/migration of the wax from the water-dispersible film will inherently form such a region. Furthermore, the bloomed wax formed on the surface of the film is understood to read on the claimed “wax layer” and “water-dispersible coating layer.”
Boswell in view of Wilhoit is relied upon as above, but neither reference teaches that the wax utilized as the anti-blocking additive may comprise paraffin wax, beeswax, or mixtures thereof. However, van Slujis teaches examples of waxes that are generally used as anti-blocking agents are polyethylene wax, paraffin wax, microcrystalline wax, beeswax, carnauba wax, montan wax, candelilla wax, synthetic wax or mixtures of the above mentioned waxes (0078). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize polyethylene wax, paraffin wax, microcrystalline wax, beeswax, carnauba wax, montan wax, candelilla wax, synthetic wax or mixtures as the anti-blocking additive disclosed in WIlhoit. The motivation for doing so would have been van Slujis teaches such waxes are generally used in the art as anti-blocking agents. Said waxes are understood to be “water-dispersible” since they are compositionally identical to applicant’s preferred waxes (see claim 2 of the pending application).
With regards to claims 3-5, Boswell teaches the polymer may comprise unmodified polyvinyl alcohol (0004).
With regards to claim 11, Boswell teaches the polyvinyl alcohol may be fully hydrolyzed, herein understood to read on the claimed “degree of hydrolysis of at least 88 mol%” (0080).
With regards to claim 12, Boswell teaches the polyvinyl alcohol may be fully hydrolyzed, herein understood to read on the claimed “degree of hydrolysis in a range from 90 mol% to less than 99 mol%.” (0080).
With regards to claim 14, Boswell teaches the water-soluble polymer may comprise a cellulose ether (0075).
With regards to claim 15, Boswell teaches the cellulose ether comprises carboxymethylcellulose (0075).
With regards to claim 16, Boswell teaches the multilayer water-dispersible article comprises a first face and a second face opposing the first face, wherein the first face comprises the polymer layer and the second face comprises the wax layer (see figures).
With regards to claims 17 and 18, Boswell teaches the multilayer water-dispersible article may be in the form of a pouch defining an interior pouch volume, the pouch having an interior surface facing the interior pouch volume and an exterior surface opposing the interior surface, and the wax layer forms at least a portion of the interior or exterior surface of the pouch (0112-0113; 0042).
With regards to claim 19, the examiner takes the position that an intermediate region disposed between the polymer layer and the wax layer comprising a mixture of the water-soluble polymer and the wax is inherent to the invention of Boswell as said film is compositionally and structurally identical to the claimed film.
With regards to claim 20, Boswell teaches the polymer layer further comprises a plasticizer(0087).
With regards to claim 21, Boswell teaches the plasticizer may comprises glycerol, diglycerol, propylene glycol, dipropylene glycol, ethylene glycol, diethylene glycol, triethylene glycol, a polyethylene glycol up to MW 400, sorbitol, 2-methyl- 1,3-propanediol, ethanolamines, trimethylolpropane (TMP), a polyether polyol, isomalt, maltitol, xylitol, erythritol, adonitol, dulcitol, pentaerythritol, mannitol, or a combination of any of the foregoing (0087).
With regards to claim 22, Boswell teaches the polymer layer or the wax layer further comprises a filler, a surfactant, an anti-block agent, an antioxidant, a slip agent, a dispersant, or a combination of any of the foregoing (0093).
With regards to claim 23, Boswell teaches the plasticizer, the filler, the surfactant, the anti-block agent, the antioxidant, the slip agent, the dispersant, or the combination of any of the foregoing is admixed with the water- soluble polymer (0093).
With regards to claim 27, Boswell in view of Wilhoit and van Slujis render obvious the use of beeswax and/or paraffin waxes-including blends thereof- but does not teach the claimed blend. However, the courts have "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." (MPEP 2144.06). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine said waxes in any relative amounts in order to make a composition having the same purpose.
With regards to claim 28, Boswell teaches the use of paraffin wax. Said wax is known to have a melting point of 80-87C.
With regards to claim 54, Boswell teaches the article is a film (title).
With regards to claim 55, Boswell teaches the water soluble film may have a thickness of 5um to 300um (0082).
With regards to claim 56, the polymer layer of Boswell is understood to be the claimed water-dispersible substrate layer.
Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boswell et al (US 2018//0369859) in view of Wilhoit et al (US 2006/0068212) and van Slujis et al (US 2018/0265712)., as applied to claims above, and further in view of Nii et al (US 2018/0029763).
Boswell in view of Wilhoit and van Slujis is relied upon as above, but does not teach the water-soluble polymer comprises an anionic group-modified polyvinyl alcohol resin modified with one or more in the group of itaconic acid, monomethyl maleate, aminopropyl sulfonate, maleic acid, maleic anhydride, n-vinylpyrrolidone, n-vinylcaprolactam, and a derivative of any of the foregoing. However, Nii teaches an anionic group modified PVOH (abstract), wherein the anionic group may be monomethyl maleate (0013). The anionic group-modified polyvinyl alcohol comprises at least 0.5 mol% anionic group modification (0045), such as from about 1.0 to about 4.0 mol% anionic group modification (0045). Nii teaches the anionic group modified PVOH has the advantage forming water soluble packages for holding harsh oxidizing chemicals, such as chlorinated compounds, and remain water soluble after being stored in contact with such oxidizing chemicals (0005). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize an anionic group modified PVOH in the invention of Boswell. The motivation for doing so would have been to all the film to be used with harsh oxidizing chemicals.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boswell et al (US 2018//0369859) in view of Wilhoit et al (US 2006/0068212) and van Slujis et al (US 2018/0265712), as applied to claims above, and further in view of Echt et al (US2013/0225021)
Boswell in view of Wilhoit and van Slujis is relied upon as above, but does not teach the polyvinyl alcohol has a 4% aqueous viscosity at 20 °C of at least about 6 cP. However, Etch teaches PVOH with a 4% aqueous viscosity at 20 °C of at least about 8-75 cP (0055) are useful for making dispersions for barrier layers. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a PVOH with a 4% aqueous viscosity at 20 °C of at least about 6 cP because Echt teaches PVOH with such viscosities are useful as dispersions for making barrier layers.
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
Rejections under 35 U.S.C. § 103
With regards to the rejection of claims 1, 3-5, 11, 12, 14-24, and 28 under 35 U.S.C. § 103 as allegedly unpatentable over Boswell et al. (US 2018/0369859; hereinafter "Boswell") in view of Wilhoit et al. (US 2006/0068212; hereinafter "Wilhoit"), the Office Action acknowledges that Boswell does not report a wax emulsion layer, but alleges that Wilhoit cures this deficiency. The Office Action concludes that it would have been "obvious to one of ordinary skill in the art to add wax to the water-dispersible film taught in Boswell because Wilhoit teaches wax is an effective anti-blocking additive.” Applicant respectfully traverses this rejection at least for the following reasons. Initially, applicant notes the amended claims are directed to a multilayer water-dispersible article, wherein the substrate and coating layers of the multilayer article is water-dispersible. Applicant argues Boswell clearly reports films comprising a water-soluble layer and one or two coatings or layers that are distinctly not water-soluble or water-dispersible; neither the vapor deposited organic coating, nor the vapor deposited inorganic layer is water-soluble or water- dispersible. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not require every layer of the claimed multilayer article be water-dispersible. To the contrary, the specification states “The term “multilayer water-dispersible article,” as used herein, can refer to an article prepared by a process that includes coating a distinct, self-supporting, substrate layer with a coating layer to provide a multilayer article.” (0016).
Applicant further argues Boswell does not teach or suggest a multilayer water-dispersible article comprising a water-dispersible substrate and a water-dispersible coating as recited in the instant claims. Said argument is noted but is not persuasive as the examiner never relied upon Boswell for such a teaching; rather, Boswell was relied upon to teach the water-soluble polymer layer and Wilhoit was relied upon to render obvious the claimed wax layer. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further acknowledges that Boswell broadly describes one or more wax coatings as an alternative vapor- deposited organic coating but argues Boswell does not exemplify the use of wax coatings instead of the preferred and exemplified poly(p-xylylene) polymer coatings. The examiner respectfully disagrees; as applicant notes, Boswell describes wax coatings as an alternative vapor-deposited organic coating. Applicant further submits that the Office Action fails to point to any teaching or suggestion in Boswell or elsewhere that such alternative wax coatings would offer the particular advantages and properties of the poly(p- xylylene) polymer coatings and fails to point to any teaching in Boswell or elsewhere that waxes can be similarly vapor-deposited as poly(p-xylylene) polymer coatings while retaining the particular advantages and properties of Boswell's vapor deposited organic coating. Said argument is noted but is not persuasive as applicant is not comparing the claimed invention to the closest prior art. Furthermore, applicant fails to acknowledge that a reference may be relied upon for all that it fairly teaches and is not limited to preferred or exemplary embodiments. Additionally, the examiner notes a patent is presumed enabled. Thus, it is not clear why applicant believes why additional teachings are required or germane to the pending rejection.
With regards to Wilhoit, applicant argues said reference is directed to a barrier paper with paper as a substrate upon which the polymeric layer and the anti-blocking coating are provided and thus requires a substrate that is not water dispersible. Said argument is noted but is not persuasive for the reasons noted above. Additionally, In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(II) Claims 2 and 25-27 stand rejected under 35 U.S.C. § 103 as allegedly unpatentable over Boswell in view of Wilhoit as applied to claims above, further in view of van Slujis et al.
Applicant argues the deficiencies of Boswell and Wilhoit are delineated above and that van Slujis does not cure these deficiencies. Said argument is noted but is not persuasive for the reasons noted above.
(III) Claims 6-10 stand rejected under 35 U.S.C. § 103 as allegedly unpatentable over Boswell in view of Wilhoit as applied to claims above, further in view of Nii et al. (US 2018/0029763; hereinafter "Nii")
Applicant argues the deficiencies of Boswell and Wilhoit are delineated above and that Nii does not cure these deficiencies. Said argument is noted but is not persuasive for the reasons noted above.
(IV) Claim 13 stands rejected under 35 U.S.C. § 103 as allegedly unpatentable over Boswell in view of Wilhoit as applied to claims above, further in view of Echt et al. (US 2013/0225021)
Applicant argues the deficiencies of Boswell and Wilhoit are delineated above and that Echt does not cure these deficiencies. Said argument is noted but is not persuasive for the reasons noted above.
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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