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 .
Status of Claims
Applicant’s amendments dated 9/11/25 have been entered. Claims 1, 3-5, 7, 8, and 10-15 have been amended. Claim 6 has been cancelled.
This leaves claims 1-5 and 7-15 currently active and pending.
The rejection below has been updated to reflect the amendments to the claims.
Claim Objections
Claim 15 is objected to because of the following informalities: there appears to be a missing ‘the’ before ‘sheet’ in line 1. Appropriate correction is required.
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 1-5, 8-12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Soane et al. (US 2008/0281042) in view of Ueda (US2008/0088065).
Regarding claims 1, 2, 4, 9, 12, and 15, Soane teaches a sheet substrate (see 112b rejection above for how ‘-like’ is being interpreted) (Soane para 19) which may be formed into a foodservice package (Soane para 3, 8, 15) comprising a sheet cellulosic material as the substrate which intrinsically has a first and second major surface that are parallel due to being a sheet, such as a paper (Soane para 10) with a coating applied to at least one major surface of the substrate (Soane para 56). Soane teaches the coating comprises a water-soluble cellulose derivative, such as methyl cellulose or (hydroxylpropyl)methyl cellulose (Soane para 11, 29) which is used to form the first and second coating layers, where the first layer is in direct contact with the second layer as no intervening layers are taught (Soane para 56, 60-63), and may thus both be considered barrier coating layers. Further, Soane teaches the coating composition may comprise a plasticizer (Soane para 32). Soane further teaches that the water soluble cellulose derivative should be present in an amount of at least 50 wt% as other polymers should not be included in an amount of more than 50 wt% (Soane para 34). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03. Finally, Soane teaches that inorganic fillers, such as kaolin pigment particles may be included (Soane para 37, 53).
Soane does not explicitly teach that the plasticizer is a polyol of one of sorbitol, mannitol, ethylene glycol, diethylene glycol, tritheylene glycol, tetraethylene glycol, propylene glycol, or polyethylene glycol.
Soane and Ueda are related in the field of cellulose films utilizing a polyol plasticizer. Uedea teaches using polyethylene glycol and/or other polyalkylene glycols as a plasticizer for cellulose because they are highly compatible with each other and provide a thermoplasticization effect. It would be obvious to one of ordinary skill in the art to modify the polyol plasticizer of Soane to be a polyethylene glycol as taught by Ueda because this would provide for a plasticizer with a high level of compatibility with the cellulose and provide the film with thermoplastic effects.
Regarding claim 3, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1.
Soane further teaches that the water soluble cellulose derivative should be present in an amount of at least 50 wt% as other polymers should not be included in an amount of more than 50 wt% (Soane para 34). Further, one of ordinary skill in the art would have considered the invention to have been obvious because the amount of water soluble cellulose derivative taught by Soane overlaps with the instantly claimed amount of water soluble cellulose derivative and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Regarding claim 5, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1. Soane further teaches the amount of plasticizer should be from 5-20 wt% relative to total solids (Soane para 32). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Regarding claim 8, Soane in view of Ueda teaches a coated sheet substrate, where the water-soluble cellulose derivative is a hydroxyalkyl alkyl cellulose ((hydroxypropyl)methyl cellulose) as above for claim 1. Soane further teaches that the kaolin pigment particles (Soane para 53, 62) may be included in an amount of 30 wt% relative to the total dry solids content (calculated from Example 3, para 62). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Regarding claim 10, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1. Per the method of paragraph 56, and the Examples 1, 2, and 4, two even layers of coating solution were applied. As these totaled 6.4 g/m2, 6.3 g/m2, and 13.4 g/m2 (Soane para 60, 61, 63), it follows that the individual coats were 3.2 g/m2, 3.15 g/m2, and 6.7 g/m2, all of which are wholly within the claimed ranges for both the first and second coating layers. Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Regarding claim 11, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1. Soane further teaches that the coating structure provides grease resistance to the coated paper material (Soane abs, para 6, 7, 60-74).
Regarding claim 14, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1. Soane further teaches that the coated products are tested according to ANSI TAPPI T559 (Soane para 58), which Applicant equates to the claimed KIT test at page 11, lines 28-32 of the instant as-filed Specification, with values of 12 for the double-coated Examples 1, 2, and 4 (Soane para 60, 61, 63). This exceeds the claimed requirement of ‘at least 8.’ Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Soane in view of Ueda as applied to claim 1 above, and further in view of Sawa et al. (US 2013/0165555).
Regarding claim 7, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1. Soane further teaches that the water soluble cellulose derivative may be methyl cellulose (Soane para 11, 29) and that there may be inorganic pigments, such as kaolin, present (Soane para 53).
Soane in view of Ueda is silent with respect to the range of inorganic pigment that may be included.
Soane in view of Ueda and Sawa are related in the field of aqueous coating solutions comprising cellulosic materials and pigments (Sawa abs, para 12-13). Sawa teaches inorganic pigments in a water soluble cellulosic coating in an amount of 1-40 wt%, noting that too little pigment may result in an undesirably light coloring effect, but that too much can increase viscosity about desired levels (Sawa para 14). It would be obvious to one of ordinary skill in the art to modify the coating of Soane to include 1-40 wt% of the inorganic pigment as taught by Sawa because this provides for a coating with coloring effects while not excessively increasing the coating viscosity.
Further, one of ordinary skill in the art would have considered the invention to have been obvious because the amount of pigment taught by Soane in view of Ueda in further view of Sawa overlaps with the instantly claimed amount of pigment and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Soane in view of Ueda as applied to claim 1 above, and further in view of Turkki et al. (US 2018/0355204).
Regarding claim 13, Soane in view of Ueda teaches a coated sheet substrate as above for claim 1.
Soane in view of Ueda is silent with respect to the weight/grammage of the cellulosic paper being coated.
Soane in view of Ueda and Turkki are related in the field of coating compositions for grease barrier coating paper and paperboard. Turkki teaches a basis weight of paperboard, called linerboard, is 130 g/m2 (Turkki para 75-76; Table 2). It would be obvious to one of ordinary skill in the art to use a linerboard with a basis weight (grammage) of 130 g/m2 as the paperboard of Soane as taught by Turkki because this is an exemplary, standard, paperboard weight. Further, one of ordinary skill in the art would have considered the invention to have been obvious because the grammage taught by Soane in view of Turkki overlaps with the instantly claimed grammage and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Response to Arguments
Applicant’s arguments, see Remarks page 9, filed 9/11/25, with respect to the 112(b) rejections have been fully considered and are persuasive. The 112(b) rejections of claims 1-15 have been withdrawn.
Applicant's arguments filed 9/11/25 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claims 1-15 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/L.B.F/Examiner, Art Unit 1781 1/26/2026
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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