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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/08/2026 has been entered.
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) 1-7, 12-14, 18-22 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548).
Regarding claims 1-4, 12-14, 18-22 and 25 Taguchi discloses adhesive compound composition comprising a olefin-based block copolymer elastomer (A), an ethylene-vinyl acetate copolymer having a vinyl acetate content of 25 to 80 wt% (B) [would intrinsically have the claimed melting point] and a tackifier (C), a laminated film formed by laminating a laminating layer made of a thermoplastic resin (D) and a heat-sealing layer made of a thermoplastic resin (E) via an intermediate layer made of said adhesive compound composition, and a container enclosure material comprising said laminated film (abstract). The substrate layer comprising such thermoplastic resin film may be either non-oriented film or oriented film, or extruded, extrusion-laminated or dry-laminated laminates of not less than one type of material. Out of these substrate layers, biaxially-oriented film made of polypropylene, polyethylene terephthalate, polyamide, etc. is preferable because of its excellent transparency and stiffness (page 5-6). The polymers used in the examples and relative examples are as follows: (1) Olefin-based block copolymer elastomer (A): (1-1) Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657 (page 9). Taguchi disclose the use of 40% styrenic copolymer elastomer (see example 1). Taguchi discloses Ethylene-vinyl acetate copolymer (B) of the present invention has MFR (melt flow rate as defined in ASTM D-1238 under a load of 2160 g at the temperature of 190.sup.2C) which is not particularly specified but normally ranges from 0.5 to 20 g/10 minute (page 4). Specific examples of tackifier (C) include coumarone resins such as coumarone indene resin; phenolic resins such as phenol formaldehyde resin and xylene formaldehyde resin; terpene-based resins such as terpene phenol resin, terpene resin ( a , β -pinene resin), aromatic modified terpene resin and terpene hydride resin; petroleum hydrocarbon resins such as synthetic polyterpene resin, aromatic hydrocarbon resin, aliphatic hydrocarbon resin (page 4). The tackifying resin has a softening point of 70C or higher (page 5). The adhesive compound composition obtained by mixing uniformly 40 wt% of SEBS, 40 wt% of 40% EVA, 20 wt% of terpene resin(the total parts by weight of SEBS, 40% EVA and terpene is equal to 100 parts by weight) (see example 1, page 9). The thickness of the substrate layer is 9-100 microns (page 7). The thickness of the laminating layer is 1-100 microns and the thickness of the intermediate layer is 1-94 microns and the thickness of the heat-sealing layer is 1-20 microns (page 8). Assuming the composite film is formed from substrate layer, laminating layer, intermediate layer and heat-sealing layer and based on the thickness range of upper and lower limit, the thickness of the heat-sealable layer would meet the limitation of 5-45% of the total thickness of the film.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05).
The only deficiency of Taguchi is that Taguchi disclose the use of 40% EVA (see example 1), while the present claims require 35% EVA
It is apparent, however, that the instantly claimed amount of EVA and that taught by Taguchi are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of EVA disclosed by Taguchi and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of EVA, it therefore would have been obvious to one of ordinary skill in the art that the amount of EVA disclosed in the present claims is but an obvious variant of the amounts disclosed in Taguchi, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 3, Taguchi discloses out of these substrate layers, biaxially-oriented film made of polypropylene, polyethylene terephthalate, polyamide, etc. is preferable because of its excellent transparency and stiffness (page 5-6).
Regarding claim 4, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657. As Taguchi discloses elastomer identical to the one used by the Applicant in their invention would intrinsically meet the claim limitation as KRATON G1657 is styrenic linear block copolymer consisting of polystyrene blocks and rubber blocks. (see page 9).
Regarding claims 5-7, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657 (see page 9), where KRATON G1657 discloses styrenic content of 13% (https://sds.kraton.com/product-sds/shared-files/94748/KratonG1657M.pdf).
Alternatively, with respect to 50% of styrenic component of claim 5, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claims 26-27, As Taguchi discloses heat-sealable composite film as presently claimed, it therefore would be obvious that heat-sealable film would intrinsically exhibit a heat-seal strength in range of 600 g/25.4mm to 1500 g/25.4 mm and exhibit a clarity of atleast 70%.
Claim(s) 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548), further evidence by Sugimoto et al. (WO 2012/077373).
Regarding claims 8-11, Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657, where KRATON G1657 has MW of 200,000 as disclosed in Sugimoto (page 12).
As Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657, identical to the one used by the Applicant in their invention, it therefore would be obvious that styrenic linear block copolymer would intrinsically have the claimed tensile strength, solution viscosity and glass transition temperature.
Claim(s) 16-17 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548) as applied to claim 1, further in view of Shibayama et al. (WO 2015-025899).
Regarding claims 16, 33 Taguchi discloses the use of ethylene vinyl acetate copolymer, but fails to disclose the layer comprising a blend of EVA-1 and EVA-2 in claimed vinyl acetate and melt index as claimed.
Whereas, Shibayama discloses film comprises a mixture layer that contains EVA copolymer having a content of a constituent unit derived from vinyl acetate of 14% by mass or more and a melt flow rate (MFR in accordance with JIS K7210-1999, at 190°C under a load of 2,160 g, the same shall apply hereafter) of from 11 g/10 min to 300 g/10 min (inclusive) [abstract]. The ethylene / vinyl acetate copolymer can be used alone or in combination of two or more different copolymerization ratios (page 3).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include EVA-1 having a vinyl content of 20% and MFR of 11 g/10 min and EVA-2 having a vinyl content of 11 wt% and MFR of 100 g/10 min as taught by Shibayama in the layer comprising elastomer, tackifier of Taguchi motivated by the desire to have balance of mechanical properties and processability and better tensile strength and improved impact resistance.
Regarding claim 17, with respect to the weight ratio of EVA-2/EVA-1, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim(s) 32 is rejected under 35 U.S.C. 103 as being unpatentable over Taguchi et al. (WO 2006-001548) as applied to claim 1, further in view of Yamamoto et al. (JP 2019-218417).
Regarding claim 32, Taguchi fails to disclose that the hydrogenated styrenic copolymers are selected from triblock copolymers containing styrene blocks and rubber blocks consisting of ethylene and butylene repeating units.
Whereas, Yamamoto discloses adhesive layer is composed of an adhesive composition containing an A-B-A triblock copolymer, a tackifier, and an aliphatic hydrocarbon (abstract). Yamamoto discloses the styrene-based block copolymer is an ABA triblock copolymer, wherein A is a block obtained by polymerizing styrene, and B is a polymer obtained by polymerizing at least one selected from ethylene, propylene and butene (page 2).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include styrene tri block copolymer obtained by polymerizing styrene and ethylene and propylene or butylene as taught by Yamamoto in the adhesive composition of Taguchi motivated by the desire to have a low relative dielectric constant, high hardness and low moisture permeability (page 3).
Response to Arguments
Applicant’s arguments filed on 06/08/2026 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Applicant argues that Taguchi does not disclose or make obvious a heat-sealable composite film comprising a heat-sealable layer having a thickness of 5% to 45% of the total thickness of the composite film, as recited in previous claim 25, and as recited in claim 1 as presently amended. In contrast, Taguchi discloses the preparation of composite films wherein the layer that the Patent Office points to as the heat-sealable layer is a far greater proportion of the overall thickness of the composite film.
For example, Example 1 of Taguchi reports the preparation of a 50 µm thick composite film having a structure such that the layer order is laminating layer/adhesive compound composition intermediate layer/heat sealing layer and that the thicknesses of the layers are 15 µm/30 µm/5 µm respectively (see page 10, lines 2-4 of Taguchi). Each of examples 2-6 of Taguchi illustrate composite films which have the same layer thicknesses as the composite film of example 1.
However, it should be noted that the thickness of the substrate layer is 9-100 microns (page 7). The thickness of the laminating layer is 1-100 microns and the thickness of the intermediate layer is 1-94 microns and the thickness of the heat-sealing layer is 1-20 microns (page 8). Assuming the composite film is formed from substrate layer, laminating layer, intermediate layer and heat-sealing layer and based on the thickness range of upper and lower limit, the thickness of the heat-sealable layer would meet the limitation of 5-45% of the total thickness of the film.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05).
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues that Sugimoto does not address the competing mechanical and sealability constraints governing food packaging lidding films. In fact, a skilled person would not have considered Sugimoto or combined it with Taguchi because they belong to non-analogous fields. Taguchi relates to laminated films for sealing plastic containers containing, for example, food products (see 'Field of Technology' section of Taguchi). In contrast, Sugimoto relates to a strip for an inner liner used for a pneumatic tire. Accordingly, the skilled person would not have even turned to Sugimoto, let alone combined it with Taguchi, and let alone with a reasonable expectation of success.
However, it should be noted that Sugimoto is only used as an evidence reference to teach a particular limitation. Taguchi discloses Styrene-diene block copolymer (A1) (i) Hydrogenated material (SEBS) of styrene-butadiene-styrene block copolymer (SBS): Available from KRATON Polymer Japan, product name: KRATON G1657, where KRATON G1657 has MW of 200,000 as disclosed in Sugimoto (page 12).
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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