DETAILED ACTION
The communication dated 10/29/2025 has been entered and fully considered. Claims 1-15 and 20 are cancelled. Claims 16-19, and 21-37 are pending. Claims 27-30, 36, and 37 are not elected. Claims 16-19, 21-26 and 31-35 are elected for prosecution.
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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 claims 16-26 and 31-35 in the reply filed on July 1, 2025 is acknowledged.
Claims 27-30, 36, and 37 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group 2, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 1, 2025.
Response to Arguments
Applicant argues that prior art WOLFF does not teach an improved barrier but instead teaches a paper with improved barrier properties.
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1. When reading the preamble in the context of the entire claim, the recitation "a process for improving the barrier properties of a barrier layer comprised in a pulp-based substrate layer having a barrier layer" is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant argues that prior art, WOLFF, does not teach drying the coating enhancing the barrier properties of the coating.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., improving the barrier properties by drying the coating) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner notes that the claim language of the instant claim does not suggest or connect drying the coating to enhance specific properties of the coating.
In response to applicant's argument that drying the coating enhances barrier properties, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that prior art, KUMAKI, does not provide reasoning or rational to “over-dry” a barrier layer to less than 2.5% moisture content.
Examiner notes that KUMAKI is not relied upon to teach the drying of the composition to less than 2.5% moisture content.
Applicant argues that prior art VINNAY does not teach remoistening within the same context of the instant claims.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., moistening as a single sheet) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that VINNAY is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, VINNAY is directed to a system that has a “Thermally isolated liquid supply for web remoistening”. The instant claim is directed to moisturizing a previously dried pulp-based substrate layer.
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.
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.
Claims 16-19, 21-25, and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over WOLFF (US 3532534 A) in view of KUMAKI (US 20170226247 A1) and VINNAY (US 2010224665 A1).
For claim 16, WOLFF teaches a method to produce a paper with a waterproof coating (barrier) [abstract]. This meets the limitation of “A process for improving the barrier properties of a barrier layer”. WOLFF teaches the PVA is coated on a paper but is silent to the paper origins. KUMAKI also teaches the formation of a paper with PVA barrier coating [abstract]. The KUMAKI substrate paper is made from chemical pulp [0056]. It would be obvious to one skilled in the arts at the time of invention to substitute the chemical pulp of KUMAKI in for the generic paper substrate of WOLFF. One would be motivated by the common use of PVA coating and the successful results of KUMAKI. This meets the limitation of “comprised in a pulp-based substrate layer having a barrier layer, comprising the steps of a) providing a pulp-based substrate layer having a layer of an aqueous barrier composition applied to the pulp-based substrate layer”. WOLFF teaches the composition is then dried to 2 to 6% moisture [column 2 line 30]. This teaches the limitation of “b) drying the pulp-based substrate layer having a layer of aqueous barrier composition applied to it to form a pulp-based substrate layer having a barrier layer, such that the moisture content of the pulp-based substrate layer having a barrier layer is below 2.5 % by weight, based on the weight of the pulp-based substrate layer having a barrier layer”. This range of 2-6% overlaps the range of the instant claim, below 2.5%. See MPEP 2144.05(I).
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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)
Regarding the remoistening of the web, neither WOLFF or KUMAKI directly teaches the use of a second moistening of the web. VINNAY teaches a process of wetting a dried paper [0039]. VINNAY teaches that excessive drying can lead to warping and wrinkling of paper [0041]. VINNAY teaches that moistening the web to a desired moisture content can prevent the wrinkling. It would be obvious to one skilled in the arts at the time of invention to modify the process of WOLFF with the remoistening of VINNAY to more easily retain the moisture content of the web within the WOLFF preferred range. One would be motivated to combine the art based on the added benefit of moisture maintenance and warping prevention as taught by VINNAY. WOLFF teaches the moisture content ideally has the range of 2 to 6% moisture [column 2 line 30]. This range overlaps the range of the instant claim. WOLFF in view of VINNAY teaches the limitation of “moisturizing the pulp-based substrate layer having a barrier layer, such that the moisture content of the pulp-based substrate layer having a barrier layer is 3.5% by weight or more, based on the weight of the pulp-based substrate layer having a barrier layer”.
For claim 17, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the paper substrate is coated [abstract]. This teaches the limitation of “wherein the pulp-based substrate layer is a paper or paperboard layer”.
For claim 18, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the use of poly vinyl alcohol as a component that creates excellent barrier properties [0011]. This makes poly vinyl alcohol as a barrier compound. This teaches the limitation of “wherein the aqueous barrier composition comprises a barrier compound”.
For claim 19, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the barrier composition is aqueous poly vinyl alcohol (PVA) [0001]. The PVA composition is used to impart water resistance and barrier property [0016]. This teaches the limitation of “wherein the aqueous barrier composition comprises a moisture vapour barrier compound, an oxygen barrier compound, or both”.
For claim 21, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches a polymer, poly vinyl alcohol, that introduces barrier properties (water resistance) [abstract]. This teaches the limitation of “wherein the aqueous barrier composition comprises a polymer barrier compound and an inorganic barrier compound”.
For claim 22, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches that after the web is coated, the web is then dried in a supercalender [column 2 line 7]. This teaches the limitation of “wherein drying the pulp-based substrate layer having a layer of aqueous barrier composition applied to it to form a pulp- based substrate layer having a barrier layer is achieved by exposing the pulp-based substrate layer having a layer of aqueous barrier composition to either heat, radiation or under pressure, or a combination of two or more thereof”.
For claim 23, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches the coated paper is heated to temperatures above 212°F (equivalent to 100°C) [column 2 line 15]. This matches the range of the instant claim of “wherein drying the pulp-based substrate layer having a layer of aqueous barrier composition applied to it to form a pulp- based substrate layer having a barrier layer is achieved by heating the pulp-based substrate layer having a layer of aqueous barrier composition to a temperature of at least 100°C”.
For claim 24, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the base paper of the invention can have surface treatments including size agent prior to coating [0056]. The examiner understands this as priming the board making the surface treatment a primer layer. This teaches the limitation of the instant claims of “wherein in step a), the pulp-based substrate layer having a layer of an aqueous barrier composition applied to it has a primer layer positioned between the pulp-based substrate layer and the layer of the aqueous barrier composition”.
For claim 25, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the addition of a release layer made of silicone (inorganic) to the top layer of the laminate [0061]. The layer is deposited as a thin-film [0082]. This teaches the limitation of “wherein the process further comprises a step of applying an inorganic barrier layer or a metal barrier layer to the barrier layer via thin-film deposition”.
For claim 31, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches the final moisture is about 2% to 6% [column 6 line 11]. This range overlaps the instant claim range. This teaches the instant claim limitation of “wherein the moisture content of the pulp- based substrate layer having a barrier layer is below 2 % by weight, based on the weight of the pulp-based substrate layer having a barrier layer”. See MPEP 2144.05(I).
In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)
For claim 32, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches the barrier compound is aqueous when used [column 6 line 3]. This teaches the limitation of “wherein the aqueous barrier composition comprises a barrier compound in the form of an aqueous dispersion of a barrier compound or an aqueous solution of a barrier compound”.
For claim 33, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. WOLFF teaches the coated paper is heated to temperatures above about 212°F (equivalent to 100°C) [column 2 line 15]. This encompasses the range of the instant claim of “wherein drying the pulp-based substrate layer having a layer of aqueous barrier composition applied to it to form a pulp- based substrate layer having a barrier layer is achieved by heating the pulp-based substrate layer having a layer of aqueous barrier composition to a temperature of at least 115°C”. One reasonably skilled in the arts at the time of invention would understand the difference of about 100°C and 115°C would be negligible. This difference would be reasonable to ascertain with minimal experimentation based on the starting range of about 100°C.
For claim 34, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. wherein drying the pulp-based substrate layer having a layer of aqueous barrier composition applied to it to form a pulp- based substrate layer having a barrier layer is achieved by heating the pulp-based substrate layer having a layer of aqueous barrier composition to a temperature of at least 130°C. One reasonably skilled in the arts at the time of invention would understand the difference of about 100°C and 130°C would be negligible. This difference would be reasonable to ascertain with minimal experimentation based on the starting range of about 100°C.
Claim 26 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over WOLFF (US 3532534 A), VINNAY (US 2010224665 A1), and KUMAKI (US 20170226247 A1) in view of OLKKONEN (US 20160194831 A1).
For claim 26, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 16, as above. KUMAKI teaches the addition of a release layer made of silicone (inorganic) to the top layer of the laminate [0061]. The layer is deposited as a thin-film [0082]. This teaches the limitation of “wherein the process further comprises a step of applying an inorganic barrier layer or a metal barrier layer to the barrier layer via thin-film deposition.”
WOLFF, KUMAKI, and VINNAY do not teach the second application of the polyvinyl coating. OLKKONEN teaches a similar process of adding a barrier to a paper substrate [abstract]. OLKKONEN further teaches that like WOLFF polyvinyl alcohol is used as a barrier coating [0035]. OLKKONEN also teaches an embodiment with two applications of barrier compound [0034]. OLKKONEN teaches this second application aids in moisture control/profiling [0033]. It would be obvious to one skilled in the arts at the time of invention to modify the process of WOLFF with the second application of OLKKONEN to more easily retain the moisture content of the web within the WOLFF preferred range. One would be motivated to combine the art based on the added benefit of moisture maintenance as taught by OLKKONEN. WOLFF teaches the moisture content ideally has the range of 2 to 6% moisture [column 2 line 30]. This range overlaps the range of the instant claim. WOLFF in view of VINNAY teaches the limitation of “ “wherein after the step of applying an inorganic barrier layer or a metal barrier layer to the barrier layer via thin-film deposition the process further comprises a subsequent step of applying a further layer of aqueous barrier composition to the inorganic barrier layer or the metal barrier layer and drying the resulting stack of layers having the further layer of aqueous barrier composition applied to it to form a further barrier layer such that the moisture content of the resulting stack of layers having a further barrier layer is below 2.5 % by weight, based on the weight of the resulting stack of layers having a further barrier layer”.
For claim 35, WOLFF, KUMAKI, and VINNAY teaches the process according to claim 26, as above. WOLFF teaches the final moisture is about 2% to 6% [column 6 line 11]. This range overlaps the instant claim range. This teaches the instant claim limitation of “wherein the moisture content of the resulting stack of layers having a further barrier layer is below 2 % by weight, based on the weight of the resulting stack of layers having a further barrier layer”.
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 STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748