DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2023/0068867, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Response to Amendment
The Amendment filed 20 May 2026 in response to the Non-Final Rejection dated 20 February 2026 (hereinafter “NFOA”) has been entered. Claims 1, 18, and 20 have been amended, claims 16-17 and 19 have been canceled, and new claims 21-26 have been added. As such, claims 1-4, 6-7, 10-14, 18, and 20-26 remain pending and under consideration on the merits.
The amendments to the claims have overcome the objections to claims 1 and 20 [NFOA, ¶6], and the rejection of claims 1, 6-7, 10, 13, 16, and 18-20 under 35 U.S.C. 103 as being unpatentable over Iura [NFOA, ¶11-32], previously set forth. As such, the objections to the claims and the rejection under 103 over Iura have been withdrawn.
The rejection of claims 1-4, 6, 10-14 and 16-20 under 35 U.S.C. 103 as being unpatentable over Shaw in view of Nurmi [NFOA, ¶33-60], and the rejection of claim 7 over the foregoing further in view of Muraki [NFOA, ¶61-65], are maintained herein – the rejection heading(s) and grounds of rejection have been updated to reflect the cancelation of claims, addition of new claims, and new limitations added to independent claims 1 and 18. If present, any new grounds of rejection set forth hereinafter have been necessitated by the amendments to the claims.
Claim Objections
Claims 1 and 18 are objected to because of the following informalities.
[claim 1] improper amendment formatting – the period after “5 µm” has been deleted by strikethrough, and a comma has been added by underline thereafter, however, the period appearing at the end of claim 1 does not include the necessary/corresponding underline mark-up. This issue is noted for record clarity – however, to facilitate compact/expedient prosecution, claim 1 has been interpreted for examination where the period at the end of the sentence is present/correctly marked-up via underline.
[claim 18] the following two typographical/spelling errors, identified by the mark-ups suggested for amendment to correct the issues: “wherein the inorganic vapor-deposited layer covers 95%...” and “wherein the inorganic vapor-deposited layer is formed…”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 21, 23, and 25 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding each of claims 21, 23, and 25, the phrase “the adhesive layer formed on the paper substrate layer” lacks sufficient antecedent basis – there is no prior recitation in independent claims 1, 18, and 20, respectively, of “an adhesive layer formed on the paper substrate layer”. Claims 1 and 20 require “a sealing layer” interposed between the paper substrate layer and the adhesive layer such that the adhesive layer is not “formed on the paper substrate layer”, i.e. “adhesive layer formed on the paper substrate layer” is not positively recited or implicitly supported in claims 1 and 20. In claim 18, the phrase “in this order” does not constitute a requisite that the adhesive layer be formed on the paper substrate layer (i.e. intervening layers may be present), and thus there is no implicit antecedent basis for “the adhesive layer formed on the paper substrate layer” recited in claim 23.
In view of the foregoing, it is unclear if claims 21, 23, and 25 intend to introduce a separate adhesive layer which is distinct from each adhesive layer recited in claims 1, 18, and 20, or if claims 21, 23, and 25 intend to limit the adhesive layer recited/introduced in claims 1, 18, and 20 respectively. The aforesaid uncertainties are further propagated by the fact that each of independent claims 1, 18, and 20 [already] recite that the inorganic vapor-deposited layer is formed on the adhesive layer by way of a transfer method (see rejection of claims 21, 23, and 25 under 35 U.S.C. 112(d) set forth below).
For examination on the merits, claims 21, 23, and 25 are interpreted in accordance with the following amendment which is respectfully suggested in order to overcome the indefiniteness issue(s): “wherein the inorganic vapor-deposited layer is formed on the adhesive layer
Appropriate action is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 21, 23, and 25 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends.
Regarding claims 21, 23, and 25, and in view of the rejection under 112(b) above, the phrase regarding the inorganic vapor-deposited layer being formed on the adhesive layer “by way of the transfer method” fails to further limit the subject matter of independent claims 1, 18, and 20, respectively, as each of claims 1, 18, and 20 recite “wherein the inorganic vapor-deposited layer is formed on the adhesive layer by way of a transfer method”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4, 6, 10-14, 18, 20-21, 23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Shaw et al. (US 6,218,004; “Shaw”), in view of Nurmi et al. (US 6,545,079; “Nurmi”) (both references previously cited). It is noted that the italicized text in parentheses throughout the rejection indicate the claimed element/feature to which the prior art element(s) correspond(s).
Regarding claim 1, Shaw discloses a paper-based multilayer material (hereinafter “multilayer material”) (barrier paper) suitable for use in packaging applications/articles, said multilayer material comprising the following layers arranged in the order stated: paper-based substrate (12)/clay-based coating (C)/polymer base coating (14)/metal coating (16)/polymer top coating (18), i.e. 12/C/14/16/18 [Abstract; col. 2 ln. 50–col. 3 ln. 42; col. 5 ln. 46–col. 6 ln. 49].
The paper-based substrate 12 (paper substrate layer) is suitably selected from different blends and/or types of paper, cardboard, recycled paper, and the like; the substrate may have a thickness of, e.g. 30-150 µm (not limited thereto) [col. 5 ln. 62-64; col. 6 ln. 7-9].
The clay-based coating C (sealing layer, the sealing layer is a clay-coated layer) functions as a precoat of the substrate 12, which smoothens the surface of the substrate and increases the ability of the surface to bond (adhesively) with adjacent coatings [col. 6 ln. 9-15].
The polymer base coating 14 (adhesive layer) further smoothens the clay-based coating C and provides a uniform surface for deposition of the metal coating layer 16, thereby enabling the metal coating 16 to exhibit a shiny/bright/glossy metallized finish, wherein the resultant/finished multilayer material is virtually pinhole free [col. 3 ln. 27-42; col. 6 ln. 16-24; col. 7 ln. 20-44; col. 8 ln. 1-6]. The base coating 14, formed as a single layer or as two sub-layers (14a, 14b), suitably exhibits a thickness on the order of, e.g. 3-4 µm, or on the order of 1.5-2.5 µm [col. 6 ln. 35-49] (the adhesive layer being in contact with the inorganic vapor-deposited layer, the thickness of the adhesive layer is between 1.5 µm and 5 µm). The base coating 14 is formed from radiation-curable acrylate monomer(s)/prepolymer(s) deposited from the vapor phase and subsequently cured, and does not employ the use of solvent and corresponding solvent evaporation techniques which contribute to pinhole/defect formation [col. 7 ln. 20-44; col. 8 ln. 1-6; col. 9 ln. 37–col. 10 ln. 14; col. 14 ln. 37–col. 17 ln. 21].
The metal coating 16 is vapor-deposited on the polymer base coating 14 via vacuum metallization, and suitably exhibits a thickness of about 300 Angstroms (30 nm); the metal is preferably aluminum [col. 3 ln. 7-8, 36-42; col. 4 ln. 53-54; col. 6 ln. 1; col. 11 ln. 60–col. 12 ln. 4] (inorganic vapor-deposited layer).
Shaw does not explicitly or implicitly disclose or otherwise suggest that any of the superimposed layers of the multilayer material cover less than all of the area of the respectively-underlying layer/coating; further, Shaw depicts complete superimposition of each layer by the respectively adjacent layer [Figs. 1A-4B]. As such, Shaw is reasonably interpreted as disclosing each of the layers of the multilayer material covering the entirety of the area of the layer underlying/adjacent thereto, as would have been readily understood by, and prima facie obvious to, one of ordinary skill in the art (wherein the adhesive layer covers 95% or more of the area of one side of the paper substrate on an area basis, wherein the inorganic vapor-deposited layer covers 95% or more of the area of the side of the adhesive layer opposite to the paper substrate layer).
Regarding the claim limitation “wherein the inorganic vapor-deposited layer is formed on the adhesive layer by way of a transfer method”, it is noted that the aforesaid constitutes a product-by-process claim limitation. Applicant is respectfully directed to MPEP 2113(I) and (II) – even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production – if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. Further, the structure implied by the process steps should be considered when assessing patentability, in particular where the product can only be defined by the process steps by which it is made or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.
In the instant case, it is noted that Applicant’s spec states that the inorganic vapor-deposited layer may be formed (deposited) directly on the underlying adhesive layer, or formed via a transfer method [0155, 0168], wherein the latter is preferable with respect to achieving the desired surface roughness and kurtosis values [0168-0171]. The spec does not disclose/indicate or demonstrate that the former of said methods (direct deposition on the adhesive layer) results in undesirable properties/characteristics (noted that Comparative Examples 1-3 [spec, 0383-0388; Table 1] encompass direct deposition of the inorganic layer on a primer layer which is nominally and materially different from the adhesive utilized in the inventive examples [spec, 0374-0375]).
In view of the foregoing, the inorganic vapor-deposited layer formed on the adhesive layer by way of a transfer method, as claimed (and in view of Applicant’s specification), would not have been structurally or materially distinct from the metal coating 16 (inorganic layer) of Shaw which is vapor-deposited directly on the underlying polymer base coating 14 (adhesive layer). That is, there would have been no nonobvious difference(s) between the inorganic layer formed by a transfer method, as claimed, and the coating 16 of Shaw vapor-deposited directly on the underlying coating 14, absent a showing of objective evidence to the contrary. See MPEP 2113(II). As such, the metal coating 16 of Shaw (as set forth/cited above) reads on the claimed product-by-process limitation (by way of a transfer method).
With respect to the difference(s) relative to the barrier paper defined by claim 1, Shaw is silent regarding the thickness of the clay-based coating C (clay-coated sealing layer) ranging from 10-40 µm, and regarding the standard deviation of the thickness of the polymer base coating 14 (adhesive layer) being 0.60 µm or less (of which encompasses zero deviation).
Nurmi teaches a clay-based (pre)coating for application to paper, board, or other cellulosic-based substrates typically utilized in food packaging applications, to impart a smooth surface thereto prior to deposition of additional coatings [thereon] intended to impart predetermined properties to the substrate, and to increase the barrier properties of the substrate relative to moisture/water vapor and oxygen transmission [Abstract; col. 1 ln. 14-20; col. 2 ln. 48-64; col. 3 ln. 35-57; col. 4 ln. 31-41]. The clay-based coating is formed from a composition including a polymer latex, 30-80% (wt. solids relative to dry coating) pure talc particles having a purity of 90-100%, and may additionally contain other additives [col. 2 ln. 60–col. 3 ln. 15; col. 3 ln. 58–col. 4 ln. 41]. The polymer of the latex (polymer dispersion) is suitably, inter alia styrene butadiene, acrylate, styrene acrylate, or polyvinyl acetate [col. 3 ln. 6-15]
Nurmi teaches that when applied on said substrates at a coat weight of 3-30 g/m2, such as a coating thickness of, e.g. 14 µm, the aforesaid effects (smoothened surface, increased barrier properties) are exhibited [col. 4 ln. 37-40; col. 5 ln. 64–col. 6 ln. 15]. The clay-based coating C of Shaw and the clay-based coating of Nurmi impart smoothness to the surface of the paper substrate.
Shaw and Nurmi each constitute prior art which is directly analogous to the claimed invention. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the multilayer material of Shaw by (i) having formed the clay-based coating C to a thickness of 14 µm, or by (ii) having utilized the clay-based coating composition of Nurmi to form the clay-based coating C to a thickness of 14 µm, as the aforesaid thickness or clay-based coating composition/corresponding thickness would have been readily recognized as suitable for the intended purpose in the food-packaging art of pre-coating the paper-based substrate 12 to smoothen the surface thereof for subsequently deposited coating(s) and/or impart barrier properties thereto. See MPEP 2144.07, MPEP 2144.04(IV)(A).
In accordance with either modification (i) and (ii) above, the clay-based coating C of the multilayer material of Shaw (hereinafter interchangeably “modified Shaw”) would have exhibited a thickness of 14 µm (sealing layer is a clay-coated layer having a thickness of 10 µm or more and 40 µm or less).
In view of the foregoing, and as set forth/cited above, the polymer base coating 14 (adhesive layer) of the multilayer material of modified Shaw exhibits a thickness of, e.g. 3-4 µm, or on the order of 1.5-2.5 µm, wherein the former is within the claimed adhesive layer thickness range and the latter is within the upper bound of, and exhibits an identical lower bound to, the claimed adhesive layer thickness range (1.5-5 µm).
In light thereof, and given:
(a) that the polymer base coating 14 is formed via vapor-deposition of acrylate monomers/prepolymers in the absence of solvent (no evaporation of components resultant from typical heating/drying processes of the polymer coating) and subsequently cured via exposure to radiation (see spec [0040] – adhesive layer is suitably formed from UV-curable acrylic polymers; see spec [0047-0048] – adhesive content remaining in adhesive layer is preferably zero, and formation methods other than solventless and aqueous adhesives may be utilized);
(b) the disclosed absence of pin-holes/defects in the metal coating 16 as a result of the smooth surface provided by the clay-based coating C and the further-smoothened and uniform surface provided by the polymer base coating 14 deposited on said clay-based coating C;
(c) the metal coating 16 being vapor-deposited via vacuum metallization directly on the aforesaid base coating 14 (suitable alternative to release/transfer film, see ¶26-28 above), to a thickness of about 300 Angstroms (30 nm), both of which are substantially identical to Applicant’s claimed and disclosed inorganic vapor-deposited layer and suitable method of deposition [spec, 0155-0168];
(d) the clay-coating layer C exhibits a thickness (14 µm) within the claimed range (claim 1, 10-40 µm; claim 17, 10-30 µm), is formed from a polymeric latex inclusive of talc (clay) and e.g. styrene-butadiene, acrylate, or vinyl-acetate as the dispersed polymer component, and is positioned between the paper substrate 12 and polymer base coating 14, wherein the spec indicates talc is the preferred clay, styrene-butadiene, acrylate, and vinyl acetate-based latexes are suitable for use/exemplary, and the presence of the clay-coated sealing layer between the paper substrate and adhesive layer allows for the adhesive layer thickness standard deviation and thickness variance coefficient to be easily attained [spec, 0186-0181]; and
(e) that the thickness range of the polymer base coating 14 (e.g. 3-4 µm) is within the claimed adhesive layer range, wherein Shaw discloses/teaches (f) that layer thicknesses – in contrast to solvent-based coatings – of as small as a few tenths or hundredths of a micrometer are readily achievable [col. 18 ln. 32-35, 50-55], such as (g) thickness ranges (e.g. 0.2-0.5 µm) [col. 18 ln. 63–col. 19 ln. 4] whose breadth (0.3 µm) is within the claimed standard deviation range (± 0.60 µm),
it stands to reason, and there is a strong expectation, that the standard deviation of the thickness of the polymer base coating 14 (adhesive layer) would have necessarily been less than or equal to 0.60 µm, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the Applicant and the prior art are the same, the Applicant has the burden of showing that they are not. The prima facie case can be rebutted by evidence showing that the products do not necessarily possess the characteristics of the claimed product“ (MPEP 2112.01(I)).
The multilayer material of modified Shaw, set forth above hereinabove, reads on the barrier paper defined by each and every limitation of claim 1.
Regarding claims 2-4, the rejection of claim 1 above reads on each barrier paper defined by claims 2-4. That is, in view of the totality of the foregoing, inclusive of the rationale at ¶35 above comprising identified elements (a)-(g) of the multilayer material which are substantially identical or identical to the corresponding elements of the barrier paper as claimed and disclosed – and in view of Applicant’s spec regarding the inorganic vapor-deposited layer [0118-0168], adhesive layer [0037-0070], and clay-coated sealing layer [0184-0192], in particular [0184] – it stands to reason that the metal coating layer 16, on the side opposite to the paper substrate 12 (i.e. formed on surface of polymer coating 14) would have necessarily exhibited an arithmetic average roughness Ra1 of 0.100 µm or less (claim 3), standard deviation σRa1 thereof of 0.030 µm or less (claim 2), and roughness curve kurtosis Rku1 or more than 3.0 (claim 4), as claimed, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
Regarding claim 6, the rejection of claim 1 above reads on the barrier paper defined by claim 6. The multilayer material of modified Shaw includes polymer top coating 18 (protective layer) disposed on the metal coating 16 (inorganic vapor-deposited layer) on the side opposite that of polymer base coating 14 (on the side of the inorganic vapor-deposited layer opposite to the adhesive layer).
Regarding claim 10, the rejection of claim 1 above – further in view of Applicant’s spec regarding the inorganic vapor-deposited layer [0118-0168], adhesive layer [0037-0070], and clay-coated sealing layer [0184-0192], in particular [0184] – reads on the barrier paper defined by claim 10. That is, in view of the rationale at ¶35 above, and in view of the spec [0184] indicating that provision of the clay-coated sealing layer between the paper substrate and adhesive layer allows for the adhesive layer thickness standard deviation and thickness variance coefficient to be easily attained, it stands to reason that polymer base coating 14 (adhesive layer) of the multilayer material of modified Shaw would have necessarily exhibited a thickness variance coefficient of 0.17 or less, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
Regarding claim 11, in view of the rejection of claim 1 above, Shaw discloses that the thickness of the polymer top coating layer 18 may be from 1-2 µm [col. 6 ln. 1-3]. As such, the layers of the multilayer material of modified Shaw suitably exhibit the following thickness ranges: paper substrate 12, 30-150 µm; clay coating C, 14 µm; polymer base coating 14, 3-4 µm; metal coating 16, 30 nm (0.03 µm); polymer top coating 18, 1-2 µm. Through simple calculation, the thickness of the paper substrate relative to the total thickness of the multilayer material of modified Shaw (thickness proportion of the paper substrate layer in the barrier paper) ranges from about 59.96% (30/50.03*100) to about 89.27% (150/168.03*100), of which is substantially identical to the lower bound of, and within the upper bound of the claimed range of 60% or more and less than 100%, thereby rendering the range prima facie obvious (see MPEP 2144.05(I)).
Regarding claim 12, the rejection of claim 1 above reads on the barrier paper defined by claim 12. That is, in view of the foregoing inherency rationale, and in view of Applicant’s spec regarding the inorganic vapor-deposited layer [0118-0168], adhesive layer [0037-0070], and clay-coated sealing layer [0184-0192], it stands to reason that the interlayer adhesion strength between the metal coating layer 16 (inorganic vapor-deposited layer) and polymer base coating (14) (adhesive layer) would have necessarily corresponded to any of classes 0, 1, and 2 in a crosscut test in accordance with JIS K5600-5-6, as claimed, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V); MPEP 2112.01(I) and (II); MPEP 2145; and MPEP 2145(I).
Regarding claim 13, in view of the rejection of claim 1 above, Shaw teaches that multilayer metallized papers are commonly utilized for product identification purposes, such as labels for beer and labels for canned foods [col. 1 ln. 20-37], i.e. recognizes that multilayer metallized papers are suitable for the intended use as labels for consumer products including beer and canned foods. Further, Shaw teaches that polymer top coating 18 and thickness thereof may be configured for lamination/sealing or heat-sealing of the multilayer material to another layer/surface and/or to exhibit good heat seal properties [col. 6 ln. 64-67; col. 18 ln. 56–col. 19 ln. 4].
As such, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have utilized the multilayer material of modified Shaw as a metallized paper label laminated or heat-sealed to a corresponding [outer/surface] layer of a food can, beer can or bottle, or otherwise any food container requiring a label and capable of receiving said label by way of lamination or heat-sealing (i.e. to have laminated or heat-sealed the multilayer material of modified Shaw to a container, e.g. food can), as the multilayer material would have been readily recognized as suitable for the intended use as a label on food packaging containers, e.g. food cans and functionally capable of heat-sealing or lamination to other layers/surfaces/articles. See MPEP 2144.07 – the selection of a known material based on its suitability for its intended use has been held prima facie obvious; further, “selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious”. Accordingly, the multilayer material of modified Shaw, set forth above in the rejection of claim 1, would have constituted a label and been heat-sealed or laminated to a food packaging container, e.g. canned food label. The resultant container reads on claim 13 (A container comprising the barrier paper according to claim 1).
Regarding claim 14, in view of the rejection of claim 1 above, the aforecited disclosure/teachings of Shaw set forth in the rejection of claim 13 are incorporated herein by reference (not repeated). In short, the multilayer material of modified Shaw may be configured for lamination or heat-sealing via polymer top coating 18, wherein the use of multilayer metallized papers in the food packaging industry is readily recognized.
Given that the “lid” defined by claim 14 does not require any structural, physical, or compositional elements or properties/characteristics/functions beyond the elements of the barrier paper as defined in claim 1, wherein the multilayer material of modified Shaw reads on the aforesaid barrier paper defined by claim 1; and given that the multilayer material of modified Shaw may be capable of, or configured to, heat-seal/heat-sealing or otherwise lamination/be laminated to other layers/surfaces/articles, the multilayer material of modified Shaw set forth above in the rejection of claim 1 is reasonably interpreted as reading on the lid defined by claim 14 (A lid comprising the barrier paper according to claim 1).
Regarding claim 18, the rejection of claim 1 above is incorporated herein by reference (not repeated for sake of brevity). The multilayer material of modified Shaw reads on the barrier paper defined by each and every limitation of claim 18. It is noted that the claim phrase “in this order” is not so narrow so as to effectively exclude the presence of non-recited layers interposed between the substrate and adhesive layers or interposed between the adhesive and inorganic vapor-deposited layers.
Regarding claim 20, the rejection of claim 1 above is incorporated herein by reference. The multilayer material of modified Shaw reads on the barrier paper defined by each and every limitation of claim 20.
Regarding claims 21, 23, and 25, the rejection of claim 1 above (see ¶26-28) reads on each barrier paper defined by claims 21, 23, and 25. See MPEP 2113(I) and (II).
Claim 7 is rejected under 35 U.S.C. 103 as unpatentable over Shaw in view of Nurmi as applied to claim 1 above, further in view of Muraki (JP 2019-147606; “Muraki”) (previously cited).
Regarding claim 7, in view of the rejection of claim 1 above, Shaw (as modified) is silent regarding the multilayer material comprising a printing layer on the side of paper substrate 12 opposite to the polymer base coating 14 (adhesive layer), as defined in claim 7.
Muraki is directed to multilayer metallized paper-based packaging materials exhibiting gas-barrier properties and inclusive of a vapor-deposited metal layer (13) adhered to a paper substrate (11) via an acrylic-based adhesive layer (12) interposed therebetween [Fig. 1; 0008-0009, 0011, 0015-0024]. Muraki teaches that either or both of the outer surface (a2) and inner surface (a1) of the paper substrate (11) may have printed pattern layers (a1, a2) formed thereon [Fig. 1; 0018, 0025, 0027], i.e. based on the intended/predetermined orientation and/or use of the multilayer material to form packaging (e.g. containers), i.e. to provide printed information or patterns on either surface.
Muraki constitutes prior art which is directly analogous to the claimed invention. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the multilayer material of modified Shaw by including a printing layer (hereinafter designated “P”) on, e.g. the outer (exposed) surface of paper substrate 12 in order to provide, or achieve the predictable result of, said outer surface with a printed pattern, information, color, or otherwise decorative effect based on the pre-determined/end use of the multilayer material as a packaging material and/or label (see MPEP 2143(I)(A); MPEP 2144.07).
In accordance with the foregoing modification, the multilayer material of modified Shaw would have included printing layer P disposed on the outer surface of the paper substrate 12, and would therefore have exhibited the following layer arrangement in the order stated: P/12/C/14/16/18. The printing layer P and position thereof in the layer sequence of the multilayer material reads on the barrier paper defined by claim 7 (comprising a printing layer on the side of the paper substrate layer opposite to the adhesive layer).
Claims 1-4, 6, 10-12, 14, 18, and 20-26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (JP 2017-226186; “Nakajima”) (newly relied upon, previously cited; copy and machine translation previously provided), in view of Nurmi. It is noted that the italicized text in parentheses throughout the rejection indicate the claimed element/feature to which the prior art element(s) correspond(s).
Regarding claim 1, Nakajima discloses a paper-based, laminated packaging material [0001, 0008-0010, 0049, 0061, 0072] (hereinafter “laminate”) comprising the following layers in the order stated: paper layer [0040, 0042-0043] (paper substrate layer), paper coating layer [0041-0042] (sealing layer), adhesive layer [0011-0039, 0047] (adhesive layer), and vapor-deposited inorganic layer [0045, 0048] (inorganic vapor-deposited layer).
The thickness of the adhesive layer is from 2-10 µm [0047], which overlaps, and thereby renders prima facie obvious, the claimed adhesive layer thickness of between 1.5 µm and 5 µm (MPEP 2144.05(I)).
The paper coating layer imparts smoothness to the surface of the paper layer, and is suitably formed from resin [0041-0042] (sealing layer is a resin layer).
The adhesive layer is in direct contact with the vapor-deposited inorganic layer – specifically, the vapor-deposited inorganic layer is first formed on a thermoplastic substrate/film (e.g. unstretched polypropylene), then the adhesive is coated on the inorganic layer, and thereafter the adhesive layer-side of the resultant multilayer intermediate (adhesive/inorganic/thermoplastic) is laminated to the paper coating layer, i.e. brought into contact with the paper coating layer-side of the paper substrate [0045, 0048-0049, 0061] (the adhesive layer being in contact with the inorganic vapor-deposited layer). The aforesaid lamination process – resulting in direct contact between the adhesive layer and inorganic layer, without subjecting the paper substrate/surface(s) to the vapor deposition process – constitutes a transfer method, in accordance with Applicant’s spec [0168-0171] (wherein the inorganic vapor-deposited layer is formed on the adhesive layer by way of a transfer method).
Nakajima does not explicitly or implicitly disclose or otherwise suggest that any of the [superimposed] layers of the laminate cover less than all of the area of the respectively-underlying layer/coating. As such, Nakajima is reasonably interpreted as disclosing each of the layers of the laminate covering the entirety of the area of the layer underlying/adjacent thereto, as would have been readily understood by, and prima facie obvious to, one of ordinary skill in the art (wherein the adhesive layer covers 95% or more of the area of one side of the paper substrate on an area basis, wherein the inorganic vapor-deposited layer covers 95% or more of the area of the side of the adhesive layer opposite to the paper substrate layer).
With respect to the differences relative to the barrier paper defined by claim 1, Nakajima is silent regarding (i) the (resin-based) paper coating layer (sealing layer) exhibiting a thickness of 10-60 µm, or alternatively, the paper coating layer being a clay-coated layer having a thickness of 10-40 µm; and regarding (ii) the standard deviation of the thickness of the adhesive layer being 0.60 µm or less.
The aforecited disclosure/teachings of Nurmi, set forth above at ¶30-31, are incorporated herein by reference (not repeated). The “clay-based” paper coating [layer] of Nurmi, which includes resin, is reasonably interpreted as a resin layer – that is, the coating of Nurmi reads on both of “clay-coated layer” and “resin layer”. Nurmi teaches that the paper coating layer suitably exhibits a thickness of 14 µm.
Nakajima and Nurmi each constitute prior art which is directly analogous to the claimed invention. In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the laminate of Nakajima by having formed the paper coating layer (sealing layer) to a thickness of 14 µm, and optionally or additionally, to have included 30-80 wt.% talc (clay) particles therein, in order to smooth the surface of the paper layer and increase adhesion to the adhesive layer, and/or to impart additional gas or water vapor barrier properties to the laminate [Nurmi, as cited above; Nakajima, 0042], wherein said paper coating layer and corresponding thickness would have been readily recognized as suitable for provision of/use in gas barrier packaging laminates (MPEP 2144.07, 2144.04(IV)(A)).
In accordance with the foregoing modification(s), the resin-based paper coating layer (sealing layer) of the laminate of Nakajima (hereinafter “modified Nakajima”) would have exhibited a thickness of 14 µm, and additionally or optionally, would have also included 30-80 wt.% talc particles (clay). The aforesaid paper coating layer thickness is within the claimed resin layer range of 10-60 µm, and within the claimed clay-coated layer range of 10-40 µm – the paper coating layer, inclusive of said talc particles, reads on the claimed resin layer and clay-coated layer embodiments of the sealing layer; the paper coating layer from which the talc particles are absent reads on the claimed resin layer embodiment of the sealing layer.
It is noted that Nakajima discloses (1) that the adhesive forming the adhesive layer is a solvent-free, two-component (liquid) curable polyurethane – the polyurethane is formed by the reaction/curing of, i.e. formation of urethane linkages between, a polyester polyol (A) having Tg of -50 to 80° C, and a polyisocyanate (B) [0008, 0011-0035, 0039, 0059, 0061]. The adhesive layer (polyurethane) resultant after curing exhibits a Tg of -30 to 80° C [0038]. Further, (2) the cured adhesive layer thickness of 2 µm or more, such as 2-10 µm, is sufficient to cover any paper-surface defects which may be present as a result of the pulping/papermaking process [0047].
In view of the totality of the foregoing, including said (1) and (2), the laminate of modified Nakajima is substantially identical or identical to the claimed and disclosed barrier paper at least in terms of, in particular:
(a) the adhesive layer thickness;
(b) the adhesive layer in direct contact with the vapor-deposited inorganic layer by way of a transfer method and, thereby, the paper substrate not subject to any vapor deposition processes;
(c) the adhesive being a solventless, two-component (two-liquid) curable polyurethane having a Tg of -30 to 80° C, wherein component (A) is a polyester polyol and (B) is a polyisocyanate [spec, 0040-0043, 0046, 0050-0052, 0071-0106]; and
(d) the specific thickness of the paper coating layer (sealing layer), wherein the paper coating layer is resin-based and may include clay particles.
Given said substantially-identical or identical elements/features between the claimed/disclosed barrier paper and the laminate of modified Nakajima, wherein Applicant’s spec indicates that the presence/thickness of the sealing layer, preferable method of forming the direct contact between adhesive and inorganic layers (transfer) resulting in the paper not being subject to deposition processes, and the thickness of the adhesive layer all contribute to/result in the standard deviation in adhesive layer thickness, it stands to reason that the standard deviation of the thickness of the adhesive layer of modified Nakajima would have necessarily been 0.60 µm or less, absent a showing of factually supported objective evidence to the contrary. See MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
The laminate of modified Nakajima set forth above reads on the barrier paper defined by each and every limitation of claim 1.
Regarding claims 2-4, the rejection of claim 1 above reads on each barrier paper defined by claims 2-4. Absent a showing of factually supported objective evidence to the contrary, it stands to reason that the laminate of modified Nakajima would have necessarily exhibited an σRa1, Ra1, and Rku1 as claimed. See MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
Regarding claim 6, the rejection of claim 1 above reads on the barrier paper defined by claim 6 – the, e.g. unstretched thermoplastic film which carries the inorganic layer, i.e. has the inorganic layer vapor-deposited thereon prior to the inorganic layer being coated with the adhesive, is present in the laminate and constitutes a heat-sealable layer [0049, 0061] (a heat seal layer on the side of the inorganic vapor-deposited layer opposite to the adhesive layer).
Regarding claim 10, the rejection of claim 1 above reads on the barrier paper defined by claim 10. See MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
Regarding claim 11, in view of the rejection of claim 1 above, Nakajima discloses that the thickness of the paper layer may be up to 1 mm, but is preferably 200 µm or less [0043]. Given that the thickness of the adhesive layer ranges from 2-10 µm, the thickness of the paper coating layer is 14 µm, and that vapor-deposited inorganic layers are typically on the nanometric thickness level and may be considered negligible relative to the aforesaid thicknesses, through calculation, the thickness of the paper layer of the laminate of modified Nakajima would have defined up to approximately 93% of the overall thickness of the laminate, of which overlaps with, and thereby renders prima facie obvious the claimed range of 60% or more and less than 100% (MPEP 2144.05(I)).
Regarding claim 12, the rejection of claim 1 above reads on the barrier paper defined by claim 12. See MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
Regarding claim 14, given that the “lid” defined by claim 14 does not require any structural, physical, or compositional elements or properties/characteristics/functions beyond the elements of the barrier paper as defined in claim 1, wherein the laminate of modified Nakajima reads on the barrier paper defined by claim 1; and given that the laminate of modified Nakajima is, or may be configured to be, heat-sealable or sealable via lamination to other layers/surfaces/articles, and is disclosed as suitable for use in forming flexible packaging articles/components for foods [Nakajima, 0002, 0044, 0072] (see MPEP 2144.07), the laminate of modified Nakajima set forth above in the rejection of claim 1 is reasonably interpreted as reading on the lid defined by claim 14 (A lid comprising the barrier paper according to claim 1).
Regarding claim 18, the rejection of claim 1 above is incorporated herein by reference (not repeated for sake of brevity). The laminate of modified Nakajima reads on the barrier paper defined by each and every limitation of claim 18.
Regarding claim 20, the rejection of claim 1 above is incorporated herein by reference (not repeated for sake of brevity). The laminate of modified Nakajima reads on the barrier paper defined by each and every limitation of claim 20.
Regarding claim 21, the rejection of claim 1 above reads on the barrier paper defined by claim 21.
Regarding claim 22, the rejection of claim 1 above reads on the barrier paper defined by claim 22. That is, the adhesive forming the adhesive layer of the laminate of modified Nakajima is a (liquid) two-component curable polyurethane-based adhesive exhibiting Tg -30 to 80° C, wherein said adhesive is substantially identical to that disclosed in the spec, including an identical Tg range [0071-0117], and wherein said adhesive may include a tackifier [Nakajima, 0036]. Thus, absent a showing of factually supported objective evidence to the contrary, the adhesive of Nakajima is–, or may be formulated with tackifying additives as–, a pressure-sensitive adhesive. See MPEP 2112(IV) and (V), MPEP 2112.01(I) and (II), MPEP 2145, and MPEP 2145(I).
Regarding claim 23, the rejection of claim 18 above reads on the barrier paper defined by claim 23.
Regarding claim 24, in view of the rejection of claim 18 above, the rejection of claim 22 above is incorporated herein by reference and reads on the barrier paper defined by claim 24.
Regarding claim 25, the rejection of claim 20 above reads on the barrier paper defined by claim 25.
Regarding claim 26, in view of the rejection of claim 20 above, the rejection of claim 22 above is incorporated herein by reference and reads on the barrier paper defined by claim 26.
Claims 7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima in view of Nurmi as applied to claim 1 above, further in view of Muraki.
Regarding claim 7, in view of the rejection of claim 1 above, Nakajima (as modified) is silent regarding the laminate comprising a printing layer on the side of the paper layer opposite to the adhesive layer (i.e. the side of the paper layer which is not coated directly with the paper coating layer), as claimed.
The aforecited disclosure and teachings of Muraki, set forth above at ¶52-53, are incorporated herein by reference (not repeated for sake of brevity).
In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the laminate of modified Nakajima (as set forth in rejection of claim 1) by having included a printing layer (“print layer”) on, e.g. the outer surface of the paper layer (i.e. that which is not coated directly with the paper coating layer, i.e. that which is opposite the adhesive layer) in order to provide, or achieve the predictable result of, said outer surface with a printed pattern, information, color, or otherwise decorative effect based on the pre-determined/end use of the laminate as a packaging material for foods (MPEP 2143(I)(A); MPEP 2144.07). Accordingly, the laminate of modified Nakajima would have included a print layer on said outer surface, and thereby exhibited the following layer sequence: print/paper/paper coating/adhesive/inorganic/heat-sealable or sealant, thereby reading on the barrier paper defined by claim 7 (comprising a printing layer on the side of the paper substrate layer opposite to the adhesive layer).
Regarding claim 13, in view of the rejection of claim 1 above, Nakajima (as modified) discloses that the laminate is suitable for use as, or in forming, packaging materials for foods [0002, 0044, 0072]; and specifically discloses that when the paper layer is a paperboard-type material, the laminate is suitable for use as a box exhibiting gas barrier properties [0043]. Under the broadest reasonable interpretation, the claimed term “container” encompasses boxes.
Nonetheless, Muraki – whose disclosure/teachings at ¶52-53 above are incorporated herein by reference – teaches that paper-based, multilayer gas barrier materials are suitable for forming Gabeltop-type containers for liquids [0001-0004, 0008-0010].
In view of the combined teachings of the foregoing prior art, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the laminate of modified Nakajima by having formed it into a container for liquids or other foods, as the laminate would have been readily recognized as a food packaging material suitable for forming container-type food packaging articles and exhibiting the requisite gas barrier properties (see MPEP 2144.07). Accordingly, the laminate of modified Nakajima set forth above in the rejection of claim 1 would have been formed into a box or container, e.g. Gabeltop-type container, thereby reading on the container defined by claim 13 (A container comprising the barrier paper according to claim 1).
Response to Arguments
Applicant’s arguments presented on pp. 6-7 of the Remarks filed 20 May 2026 regarding the rejection of the claims under 35 U.S.C. 103 as unpatentable over Iura have been fully considered by the Examiner and, taken in light of the amendments to the claims, found persuasive. As such, the rejection under 103 over Iura has been withdrawn.
Applicant’s arguments presented on pp. 8-9 of the Remarks regarding the rejection of the claims under 35 U.S.C. 103 as unpatentable over Shaw in view of Nurmi have been fully considered by the Examiner but are not found persuasive.
On p. 8, Applicant asserts that Shaw does not disclose or suggest the vapor-deposited inorganic layer being formed by way of a transfer method, as claimed. However, while the Examiner agrees that Shaw does not disclose or suggest the claimed transfer method, the claimed method constitutes a product-by-process claim (see MPEP 2113(I) and (II)). The statements/reasoning, and the corresponding position taken by the Examiner, set forth above at ¶26-28 in the grounds of rejection under 35 U.S.C. 103 are incorporated herein by reference (not repeated) in response to Applicant’s assertion. For the reasons incorporated herein, Applicant’s argument is not found persuasive.
On p. 9, Applicant asserts that Shaw does not disclose the claimed sealing layer or adhesive layer, and thereby does not disclose the correct layer sequence, as claimed. Specifically, Applicant states “…where one of the layers of the base layer is a sealant, and where one of the base layers is an adhesive”, and further states “But in such an interpretation, then the metal layer would be between the adhesive layer and the inorganic vapor deposited layer…”.
It is the Examiner’s respectful position that Applicant may have misconstrued the grounds of rejection previously set forth, and/or is relying upon an alternative interpretation or embodiment of Shaw not in accordance with that which was/is set forth, cited, and relied upon by the Examiner in the grounds of rejection. Applicant is respectfully directed to ¶20-24 above – as previously set forth in the NFOA and maintained herein, Shaw discloses that the metal coating 16 is a vapor-deposited metal layer (metallization layer) formed on the underlying polymer base coating 14, wherein the metal coating layer 16 was/is mapped to the claimed vapor-deposited inorganic layer, the underlying polymer base coating 14 was/is mapped to the claimed adhesive layer, and the clay-based coating C underlying the polymer 14 was/is mapped to the claimed sealing layer which is a clay-coated layer.
In contrast to Applicant’s assertion on p. 9 of the Remarks, the aforesaid layer sequence of Shaw set forth/cited by the Examiner does not rely upon one [sub]layer of the polymer base coating as the claimed sealing layer and one [sub]layer of said base coating as the claimed adhesive layer.
For these reasons above, Applicant’s argument is not found persuasive.
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 Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782
