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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Claims Status
Claims 1-13, 15-17 and 19-21 and 23 are pending. Claims 1 and 9 are amended. Claim 23 is added. Claims 11-17 and 19 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions.
Response to Amendments/Arguments
Applicant's amendments and arguments filed 10/30/2025 with respect to the rejection of present claim(s) 1-8 rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/019699 to Gerard et al. (“Gerard”) have been carefully studied, fully considered but they are not found persuasive for at least the following reasons.
Applicant contends (1) Gerard in view of Quijano does not teach the instantly claimed sheet like element having a coating layer that is a coating on the substrate (remarks, page 12 last para, page 13, first para), and (2) does not teach a coating layer having total intruded specific pore volume and the fluid receptivity in the specific manner as instantly claimed in amended claim 1 (remarks, page 13, first para).
In response to contention (1), Applicant's arguments have been carefully studied and fully considered but they are not persuasive. Gerard clearly teaching a sheet like element with the inclusion of a coating layer, and Gerard teaches the coating layer is a coating on the substrate layer (page 42, lines 13-16, Gerard teaches embodiment of which its composition is used in paper coating applications, i.e., as coating applied to paper substrate, also see page 63, lines 13-15, Examples of Table 5 of which coating applied to substrate, also see page 65, lines 1-3, a coating layer applied on paper substrate layer).
In response to contention (2), Applicant's arguments have been carefully studied and fully considered but they are not persuasive for at least the following reasons.
There is no dispute that modify Gerard does not specifically state its coating’s total intruded specific pore volume and the fluid receptivity in the specific manner as instantly claimed, in claim 1.
However, modify Gerard teaches a coating layer on the substrate layer, of which the coating is of the same composition (i.e., having the same particulate filler comprising the same surface-reacted calcium carbonate with the same specific surface area, same dispersant, and same polymeric binder (taught by Quijano), and each in the same parts by weight ranges as instantly claimed, respectively). The substrate of Gerard is of the same material as that of the instant application (page 44, lines 19-25, Gerard teaches suitable substrate includes paper layers, cardboard layers, wood layers, etc., same as that of the instant application, see instant claim 7). Gerard also teaches the coating is applied to the substrate in the same amount of coating wt% as that of the instant application, in that Gerard teaches as in various of its embodiments that its coating is present on the substrate layer in an amount of 4.4 to 14.5 g/m2 (see Table 5, E6 to E10, page 63, lines 1-15), which amount overlaps with the instantly claimed amount of from 1 to 70 g/m2 (see instant claim 23).
In addition, Gerard teaches its surface-reacted calcium carbonate of the coating has a total intra particle intruded specific pore volume in the range from 0.1 to 2.3 cm3/g, as measured by mercury intrusion porosimetry (page 10, lines 5-6), which range overlaps with that of the instant application for the surface-reacted calcium carbonate of the instantly claimed coating, i.e., from 0.1 to 2.5 cm3/g, as measured by mercury intrusion porosimetry (see instant claim 4). 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.
In view of the above, it is expected that the coating of the modify Gerard would possess a total intruded specific pore volume and a fluid receptivity property that is the same or similar as the instantly claimed coating, i.e., having (i) a total intruded specific pore volume in the range from 0.25 to 2 cm3/g, as measured by mercury intrusion porosimetry; and (ii) a fluid receptivity in the range from 1 to 50 wt.-%, based on the total weight of the coating layer, because the coating of the modify Gerard and the instantly claimed coating are identical or substantially identical in composition, and the substrate of which the coating is applied to are identical or substantially identical in composition, and the amount of coating applied is of the same or similar amount. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
The rejections below are updated to address the present claims. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-10, 20-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/019699 to Gerard et al. (“Gerard”) in view of Diaz Quijano et al. (US 2018/0327604; “Quijano”).
Regarding claims 1 and 7, 21, Gerard teaches a sheet-like element (page 1, lines 5-6, page 6, lines 15-21, page 7, lines 1-2, page 44, lines 5-25, Gerard teaches its composition for various applications including as coating compositions coated onto suitable substrate includes paper layers, cardboard layers, wood layers, and such coated substrate is considered being a sheet-like element) comprising:
- a coating layer (page 42, lines 13-16, page 44, lines 5-24, Gerard teaches its composition is used in paper coating applications, i.e., as coating film/layer applied to paper substrate, also see page 63, lines 13-15, Examples of Table 5 of which coating applied to substrate, page 65, lines 1-3, a coating layer) comprising
- a.1) 100 parts by weight of a particulate filler comprising a surface-reacted calcium carbonate (page 5, lines 5-20, lines 24-30, the surface-reacted calcium carbonate material) in an amount of at least 50 wt.-%, based on the total amount of the particulate filler (page 10, lines 16-20, i.e., in an amount of at least 50 wt.-% meeting the claimed limitations), wherein the surface-reacted calcium carbonate is a reaction product of natural ground calcium carbonate or precipitated calcium carbonate with carbon dioxide and one or more H3O+ ion donors, wherein the carbon dioxide is formed in situ by the H3O+ ion donors treatment and/or is supplied from an external source (page 5, lines 24-30), and wherein the surface-reacted calcium carbonate has a specific surface area in the range from 15 to 200 m2/g, as measured by the BET method (page 9, lines 23-30), which range overlaps with the instantly claimed range of 20 to 200 m2/g, as measured by the BET method,
- a.2) a dispersant (page 21, lines 11-13, Gerard teaches inclusion of suitable dispersant); Gerard teaches as in one of its embodiments its coating includes 0.7 parts by weight of a dispersant (see Table 4, page 62, DA is the dispersing agent), which lies inside the instantly claimed range of 0.1 to 10 parts by weight of a dispersant; (as stated in MPEP 2144.05, 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)),
- a.3) a polymeric binder (page 63, Table 5, the polymeric binder is of Styronic D628); and
- a substrate layer (page 44, lines 19-25, Gerard teaches suitable substrate includes paper layers, cardboard layers, wood layers, etc., meeting the claimed limitations of instant claim 7),
- wherein the coating layer is a coating on the substrate layer (page 42, lines 13-16, Gerard teaches embodiment of which its composition is used in paper coating applications, i.e., as coating applied to paper substrate, also see page 63, lines 13-15, Examples of Table 5 of which coating applied to substrate, also see page 65, lines 1-3, a coating layer applied on paper substrate layer).
It should be noted that the recitation “suitable for use in a food packaging” of claim 1 is considered as merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the structure of a sheet-like element of Gerard is capable of performing the intended use. It is noted Gerard teaches its coating and substrate coated with its coating is suitable for food and for packaging application (page 6, lines 15-21, page 71, lines 9-24).
Gerard teaches the inclusion of polymeric binder, but does not specifically teach the amount of the polymeric binder in the manner as instantly claimed.
Quijano relates to a surface-reacted calcium carbonate material, and Quijano teaches its surface-reacted calcium carbonate material being loaded with an active ingredient has reduced binder demand and provides improved stability (para [0016] [0036]). Quijano teaches its surface-reacted calcium carbonate includes the suitable additives of polymeric binder, such as polyacrylates, i.e., which is a polyacrylic acid derivative (para [0037] [0156], swellable/able to swelling), which is the same polymeric binder meeting the claimed limitations of instant claim 21 (instant specification at para [0152] describes preferred alkali-swellable binder is polyacrylic acid, or a salt or derivative thereof). Quijano teaches the suitable amount of polymeric binder is about 0.5 to 10 wt% (para [0038]), which range overlaps with the instantly claimed range of 8 to 30 parts by weight of a polymeric binder. 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.
It would have been obvious to one of ordinary skill in the art to modify Gerard in view the teachings of Quijano, to select and include in the surface-reacted calcium carbonate containing coating of Gerard with suitable polymeric binder in the desired wt% amount as taught by Quijano (as discussed above) (para [0037] [0038]), which would have predictably arrived at a satisfactory sheet-like element with good stability that is the same as instantly claimed, in claims 1, 7 and 21. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Modify Gerard does not specifically state the coating’s total intruded specific pore volume and the fluid receptivity in the specific manner as instantly claimed, in claim 1.
However, modify Gerard as discussed above teaches a coating layer on the substrate layer, of which the coating is of the same composition (i.e., having the same particulate filler comprising the same surface-reacted calcium carbonate with the same specific surface area, same dispersant, and same polymeric binder (taught by Quijano), and each in the same parts by weight ranges as instantly claimed, respectively). The substrate of Gerard is of the same material as that of the instant application (page 44, lines 19-25, Gerard teaches suitable substrate includes paper layers, cardboard layers, wood layers, etc., same as that of the instant application, see instant claim 7). Gerard teaches the coating is applied to the substrate in the same amount of coating wt% as that of the instant application, in that Gerard teaches as in various of its embodiments that its coating is present on the substrate layer in an amount of 4.4 to 14.5 g/m2 (see Table 5, E6 to E10, page 63, lines 1-15), which amount overlaps with the instantly claimed amount of from 1 to 70 g/m2 (see instant claim 23).
In addition, Gerard teaches its surface-reacted calcium carbonate of the coating has a total intra particle intruded specific pore volume in the range from 0.1 to 2.3 cm3/g, as measured by mercury intrusion porosimetry (page 10, lines 5-6), which range overlaps with that of the instant application for the surface-reacted calcium carbonate of the instantly claimed coating, i.e., from 0.1 to 2.5 cm3/g, as measured by mercury intrusion porosimetry (see instant claim 4). 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.
In view of the above, it is expected that the coating of the modify Gerard would possess a total intruded specific pore volume and a fluid receptivity property that is the same or similar as the instantly claimed coating, i.e., having (i) a total intruded specific pore volume in the range from 0.25 to 2 cm3/g, as measured by mercury intrusion porosimetry; and (ii) a fluid receptivity in the range from 1 to 50 wt.-%, based on the total weight of the coating layer, because the coating of the modify Gerard and the instantly claimed coating are identical or substantially identical in composition, and the substrate of which the coating is applied to are identical or substantially identical in composition, and the amount of coating applied is of the same or similar amount. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Regarding claim 2, modify Gerard does not specifically state the coating’s total intruded specific pore volume in the specific manner as instantly claimed.
However, it is expected that the coating of the modify Gerard would possess a total intruded specific pore volume that is the same or similar as the instantly claimed coating, i.e., having (i) a total intruded specific pore volume in the range from 0.4 to 1.5 cm3/g, as measured by mercury intrusion porosimetry, because coating of the modify Gerard and the instantly claimed coating are identical or substantially identical in composition, and the substrate of which the coating is applied to are identical or substantially identical in composition, and the amount of coating applied is of the same or similar amount (i.e., as discussed above in rejection to claim 1 in details). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Regarding claim 3, Gerard teaches the particulate filler comprising a surface-reacted calcium carbonate (page 5, lines 5-20, lines 24-30, the surface-reacted calcium carbonate material) in an amount of at least 75 wt.% based on the total amount of the particulate filler (page 10, lines 16-20), which range overlaps with the instantly claimed range of in an amount of at least 70 wt.%. 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.
Regarding claim 4, Gerard teaches its surface-reacted calcium carbonate has a total intra particle intruded specific pore volume in the range from 0.1 to 2.3 cm3/g, as measured by mercury intrusion porosimetry (page 10, lines 5-6), which range overlaps with the instantly claimed range of from 0.1 to 2.5 cm3/g, as measured by mercury intrusion porosimetry. 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.
Regarding claim 5, Gerard teaches the inclusion of dispersant and teaches suitable dispersant includes sodium-neutralized polyacrylate, having MW of 3500g/mol (see Table 4, page 62, and page 63, lines 1), meeting the claimed limitations.
Regarding claim 6, Gerard teaches the inclusion of suitable polymer binder includes styrene butadiene latices (page 63, Table 5, the polymeric binder is of Styronic D628, i.e., styrene butadiene latex), meeting the claimed limitations.
Regarding claim 8, Gerard does not specifically teach the inclusion of additional layers in the specific manner as instantly claimed. However, it is noted that Gerard teaches its surface-reacted calcium carbonate is suitable for use in paper coating applications, and to coat paper substrate (page 44, lines 19-25, page 71, lines 9-15). Gerard teaches its surface-reacted calcium carbonate containing coating provide antimicrobial activity (page 41, lines 14-20).
It would have been obvious to one of ordinary skill in the art to modify the sheet-like element Gerard, to also include the coating on the other side of the paper substrate, i.e., the opposite side of the paper substrate, to provide a sheet-like element with improved antimicrobial activity on both side the substrate, and such coating layer on the other side of the paper substrate is considered as to read on the instantly claimed adhesive layer, and meeting the claimed limitations.
Regarding claims 9-10, Gerard does not specifically teach the inclusion of the specific antimicrobial active composition in the manner as instantly claimed.
Quijano relates to a surface-reacted calcium carbonate material, and Quijano teaches its surface-reacted calcium carbonate material being loaded with an active ingredient has reduced biner demand and provides improved stability (para [0016] [0036]). Quijano teaches its surface-reacted calcium carbonate includes the suitable active ingredient to impart desired properties, suitable examples include antimicrobial active ingredient (para [0107] [0113] [0139]), essential oil (para [0107]), herbal extracts and/or fruit extracts include Echinacea, Goldenseal, Calendula, Rosemary oil, Thyme oil, Ginseng oil, Guarana, Cranberry, Ginko Biloba (para [0109]), which are the same antimicrobial active ingredient as that of the instant application and meeting the claimed material limitations of claims 9-10. Quijano teaches in various embodiments the inclusion of suitable amount of active ingredient in the amount of 10 to 30 wt% (see Table 3, examples 3-6, para [0226]-[0228]), which wt% range overlaps with the instantly claimed range of from 1 to 50 wt.-% of instant claim 9 . 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.
It would have been obvious to one of ordinary skill in the art to modify Gerard in view the teachings of Quijano, to include in the surface-reacted calcium carbonate containing coating of Gerard with desired suitable active ingredient/additive in the desired wt% amount as taught by Quijano (as discussed above), such as to includes suitable antimicrobial active ingredient, i.e., essential oil as taught by Quijano (para [0113], [0107]), to provide an improved sheet-like element with improved coating having enhanced antimicrobial properties, which would have predictably arrived at a satisfactory sheet-like element that is the same as instantly claimed in claims 9-10. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 20, Gerard teaches using surface-reacted calcium carbonate as filler in its coating (page 5, lines 5-20, providing a surface-reacted calcium carbonate material). Gerard does not teach or require that the other fillers must be included in its coating in addition to surface-reacted calcium carbonate, and thus is considered meeting the claimed limitation that the particulate filler consists of the surface-reacted calcium carbonate and the optionally present further particulate filler material.
Regarding claim 23, Gerard teaches as in various of its embodiments that its coating is present on the substrate layer in an amount of 4.4 to 14.5 g/m2 (see Table 5, E6 to E10, page 63, lines 1-15), which amount overlaps with the instantly claimed amount of from 1 to 70 g/m2. 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.
Conclusion
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/YAN LAN/Primary Examiner, Art Unit 1782