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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 2, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendment of claims 1 & 26, and the addition of new claim 27.
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.
Claim(s) 1 – 3, 7, 9 – 10, 12, 16 – 22, & 26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al. (US 2015/0152256 A1).
*Luzi et al., Molecules 2020, 25, 3953
**Omnexus.com, pg. 7
***US 2013/0323513 A1
With regard to claim 1, Nakazawa et al. teach a multilayer structure comprising a barrier layer (i.e. outer layer) (Applicant’s “layer (X)”), an adhesive resin layer (Applicant’s “layer (Y)”), and a thermoplastic resin layer (Applicant’s “layer (Z)”) comprising polyolefin resin (Applicant’s “polyolefin resin (C)”), such as polyethylene polymers having high, medium or low density, as a main component (paragraphs [0144] – [0151] & [0155]). The barrier layer (Applicant’s “layer (X)”) is formed of a resin composition (Applicant’s “resin composition (A)”) that comprises two ethylene-vinyl alcohol (EVOH) copolymer resins as main components (abstract, paragraphs [0010] – [0014], example 11).
The molding processes are typically carried out at a temperature falling within the range of the melting point of EVOH or below (paragraph [0158]). Although the melting point of EVOH(A) and EVOH(B) are preferably about 150°C to 270°C (paragraph [0140]), the teachings of the reference are not limited to the preferred embodiment.
For example, synthesis example 5 (paragraph [0191]) teaches for EVOH (A) with 90 mol% degree of saponification and ethylene content of 44 mol%, the EVOH (b) has a melting point of 134°C and the modified EVOH(b) of 99.95 mol% degree of saponification and ethylene content of 44 mol% has a melting point of 106°C. The melting point of EVOH(a) is not explicitly taught for Synthesis Example 5. However, paragraph [0061] teaches the difference between the melting point of EVOH(a) and the melting point of EVOH (b) is preferably 12°C or more and 80°C or less: 106 + 12 = 118 and 134 + 12 = 146. As such, Nakazawa et al. teach an embodiment in which the melting point of EVOH (b) and EVOH(a) (Applicant’s “vinyl alcohol polymer (a)” and “vinyl alcohol polymer (a’)”) overlap with Applicant’s claimed range of less than or equal to 142°C for EVOH(a) and less than 150°C for EVOH(a’), respectively. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Shaping, such as melt molding/melt extrusion (paragraphs [0005], [0042], & [0140] – [0141]), of the multilayer sheet is preferably in the range of 50°C to 180°C, and suitably 60 – 160°C (paragraph [0165]), which is greater than the melting point of each layer within the multilayer sheet. As discussed above, it would have been obvious to one of ordinary skill in the art to form the barrier layer comprising an EVOH copolymer having a melting point lower than 150°C. Therefore, it also would have been obvious to one of ordinary skill in the art to form the adhesive resin layer (Applicant’s “layer (Y)”) and the thermoplastic resin layer (Applicant’s “layer (Z)”) of resins having a melting point lower than 150°C for melt molding the sheet in the temperature range of 60 – 150°C.
Furthermore, the resin composition that forms the barrier layer, comprises alkali-metal salts (ions) in the amount of 20 to 1,000 ppm (paragraph [0098]), which overlaps with Applicant’s claimed range of 25 to 1500 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 2, Nakazawa et al. teach EVOH (A) (Applicant’s “vinyl alcohol polymer (a)” is an ethylene-vinyl alcohol copolymer with an ethylene content of 20 mol.% or more and 50 mol% or less (abstract & paragraph [0011]), which is within Applicant’s claimed range of 15 to 85 mol.%.
With regard to claim 3, Nakazawa et al. teach the EVOH (B) may be a modified EVOH wherein the modifying group comprises a primary hydroxy group represented by formula (1) below:
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wherein R1 & R3 represents a hydrogen atom and/or an alkoxy group (i.e. alkyleneoxy) having 1 to 10 carbon atoms; R2 and R4 represents hydrogen atoms (paragraphs [0057]).
The modified EVOH(B) taught by Nakazawa et al. meets Applicant’s claim requirement that the vinyl alcohol polymer (a) has a modifying group comprising a primary hydroxy group represented by general formula (I):
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Wherein X represents a hydrogen atom, R1 represents an alkyl group (e.g. alkyleneoxy group) and/or an alkoxy group.
With regard to claim 7, Nakazawa et al. teach the EVOH(B) content of the modifying group containing a primary hydroxy group has a lower limit of preferably 0.3 mol.% and more preferably 1.5 mol% and an upper limit of 40 mol.%, more preferably 20 mol.% (paragraph [0056]), which includes Applicant’s claimed range of 2 mol% or more and less than 20 mol%.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 9, Nakazawa et al. teach the resin composition (that forms the barrier layer) comprises a metal salt (i.e. metal ions) (paragraph [0098]), such as magnesium stearate (i.e. magnesium ions) or calcium stearate (i.e. calcium ions) (paragraph [0109]). The metal in the EVOH-containing resin composition is preferably 20 to 1,000 ppm, and more preferably 50 to 500 ppm, which overlaps with Applicant’s claimed range of 10 – 300 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 10, Nakazawa et al. teach the EVOH resin composition may further comprise a metal salt of a higher carboxylic acid, such as calcium stearate or magnesium stearate (paragraphs [0099] & [0109]). Stearate contains 18 carbon atoms, which is within Applicant’s claimed range of 8 to 30 carbon atoms. Furthermore, the higher carboxylic acid is present in the amount of 0.01 to 1% by mass (100 ppm to 10,000 ppm) (paragraph [0110]), which includes Applicant’s claimed range of 100 to 4000 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 12, Nakazawa et al. teach an exemplary production of the multilayer sheet of their invention contains seven layers of four types: (PP/PP’/adhesive resin/(a)/adhesive resin/PP’/PP = 30/15/2.5/5/2.5/15/30 µm for a total thickness of 100 µm (Example 16, paragraph [0222]), wherein “(a)” corresponds to Applicant’s “layer (X)”. In this example, the EVOH resin composition (i.e. “layer (X)”) had a thickness of 5 µm, which is within Applicant’s claimed range of 0.2 µm or more and less than 20 µm. As such, the ratio of the EVOH resin composition layer is 5/100 (i.e. 5%), which is within Applicant’s claimed range of less than 25%. Therefore, it would have been obvious to one of ordinary skill in the art to form the multilayer film of the invention wherein the thickness layer (X) is 5 µm and the thickness ratio of the layer (X) based on the total thickness of the layer (X) is 5%.
With regard to claim 16, Nakazawa et al. teach the oxygen barrier property was evaluated at 20°C and 65% RH to be favorable (“A”) where the measurement was less than 0.8 mL/(m2-day-atm) (i.e. 0.8 cc/(m2-day-atm)) and unfavorable (“B”) in a case where the measurement was 0.8 mL/(m2-day-atm) or more (paragraphs [0238] – [0239]). The amount of 0.8 mL/(m2-day-atm) is significantly less than 60 cc/m2-day-atm. Both the inventive and comparative examples taught in Nakazawa’s Table 2 meet Applicant’s claimed range of less than 60 cc/m2-day-atm.
With regard to claim 17, Nakazawa et al. do not explicitly teach the multilayer film has a light transmittance at a wavelength of 600 nm is 80% or more.
However, *Luzi teach a packaging film composed of ethylene-vinyl alcohol copolymer (EVOH) has a transmittance of about 90% at 600 nm (Fig. 3a, black squares).
Furthermore, **Omnexus.com teach polypropylene (both homopolymer and copolymer) films (i.e. thermoplastic layer) have a transparency in the visible range (400 nm – 800 nm) of 85 – 90%.
Nakazawa et al. teach the adhesive layer of the working examples is a modified polypropylene resin called ADMER™ QF-500 (paragraph [0222]). ***US 2013/0323513 A1 teach a transparent film comprising a tie layer formed of ADMER™ PP-type grades of functionalized polypropylene, such as ADMER™ QF-500 (paragraphs [0029] & [0052]). Therefore, functionalized polypropylene adhesive layer taught by Nakazawa et al. inherently has a transparency of 85 – 90%.
Based on the evidentiary references cited above, the multilayer film taught by Nakazawa et al. composed of an EVOH layer, a polypropylene thermoplastic layer, and the a thermoplastic (polypropylene) adhesive layers therebetween inherently has a transparency at 600 nm of at least 80%.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
With regard to claim 18, Nakazawa et al. teach a multilayer structure which is a the multilayer film discussed above for claim 1, which may contain an additional thermoplastic resin layer such that the multilayer structure has a configuration of a thermoplastic resin layer/adhesive resin layer/barrier layer/adhesive resin layer/thermoplastic resin layer (Applicant’s “at least one resin layer (R) comprising a thermoplastic resin (D) as a main component”) (paragraph [0155]).
With regard to claim 19, as discussed above for claim 1, Nakazawa et al. suggests the thermoplastic resin layers of the multilayer film (i.a. “a thermoplastic resin (D)”) comprises a polyolefin resin having a melting point of lower than 150°C as a main component.
With regard to claim 20, Nakazawa et al. teach the thermoplastic resin layer(s) (Applicant’s “polyolefin resin (C)” of “layer (Z)” and “thermoplastic resin (D)”) may be composed of polyethylene resin as a main component (paragraph [0146]).
With regard to claim 21, as discussed above for claim 20, Nakazawa et al. teach at least one of the layer (Z) and the resin layer (R) comprises a polyethylene resin as a main component.
Nakazawa et al. teach an exemplary production of the multilayer sheet of their invention contains seven layers of four types: (PP/PP’/adhesive resin/(a)/adhesive resin/PP’/PP = 30/15/2.5/5/2.5/15/30 µm for a total thickness of 100 µm (Example 16, paragraph [0222]), wherein “(a)” corresponds to Applicant’s “layer (X)”. As such, the thermoplastic resin layers (PP’ and PP).
Nakazawa et al. teach the thermoplastic resin(s) may be composed of polypropylene resin (PP) and/or polyethylene resin (PE) (paragraph [0146] & [paragraph [0149]). Therefore, based on the teachings of Nakazawa et al., it would have been obvious to one of ordinary skill in the art to substitute any or all of the PP or PP’ resin layers of example 16 with PE resin.
As such, substitution of both PP layers and one PP’ layer with PE would result in a total PE thermoplastic layer thickness that is 0.75 of the total multilayer thickness.
With regard to claim 22, as discussed above for claim 1, Nakazawa et al. teach Shaping, such as melt molding/melt extrusion (paragraphs [0005], [0042], & [0140] – [0141]), of the multilayer sheet is preferably in the range of 50°C to 180°C, and suitably 60 – 160°C (paragraph [0165]), which is greater than the melting point of each layer within the multilayer sheet. Therefore, Nakazawa et al. do not teach a layer comprising a resin having a melting point of 240°C. Furthermore, Nakazawa et al. do not teach the presence of a metal layer. Therefore, Nakazawa et al. teach both a layer comprising a resin having a melting point of 240°C or higher as a main component and a metal layer with a thickness of 1 µm or more are absent.
With regard to claim 26, as discussed above, the modified EVOH(B) of Synthesis 5 has a saponification degree of 99.95%, which is greater than 99.9 mol%.
Claims 3 – 4 are rejected under 35 U.S.C. 103 as being obvious over Nakazawa et al., as applied to claim 1 above, and further in view of Okamoto et al. (US 2015/0210788 A1).
Nakazawa et al. teach EVOH (B) may contain a modifying group. Nakazawa et al. teach an example of the modifying group, but do not limit the chemical structure of the modifying group (paragraph [0056]). Nakazawa et al. do not explicitly teach the modifying group of Applicant’s claims 4 – 6.
Okamoto et al. teach modified EVOH copolymers that have excellent transparency, gas barrier property, flavor retention, solvent resistance, oil resistance, that are good for use in various packaging containers (paragraph [0002]). An example of a modified EVOH copolymer with these excellent properties is a modified ethylene vinyl alcohol copolymer that has the following structure (paragraph [0038]):
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wherein the modifying group contains two hydroxymethyl groups as shown below such that R1, R2, R3, R4, Y and Z taught by Okamoto et al. denote hydrogen atoms (i.e. Applicant’s recited formula (I), wherein Applicant’s recited R1 is a single bond, and Applicant’s recited X is a hydroxymethyl group as recited in claims 3 – 4):
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Therefore, based on the teachings of Okamoto et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to modify the EVOH (B) polymer with a modifying group as recited in Applicant’s claim 4 because this modification has been shown to provide excellent transparency, excellent gas barrier property, excellent flavor retention, excellent solvent resistance, and excellent oil resistance of film used for forming various packaging containers.
Claims 3 & 5 – 6 are rejected under 35 U.S.C. 103 as being obvious over Nakazawa et al., as applied to claim 1 above, and further in view of Shibutani et al. (US 2018/0016430 A1).
Nakazawa et al. teach EVOH (B) may contain a modifying group. Nakazawa et al. teach an example of the modifying group, but do not limit the chemical structure of the modifying group (paragraph [0056]). Nakazawa et al. do not explicitly teach the modifying group of Applicant’s claims 5 – 6.
Shibutani et al. teach an EVOH composition molded to form a composite container that has with excellent gas barrier properties (paragraphs [0017] – [0018]). EVOH containing the structural unit (“modifying group”) shown as General Formula (1) below reduces the crystal size of the resin and the melting point, which improves molding workability (paragraph [0051]).
General Formula (1) (paragraph [0051] – [0054]):
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,
Wherein, in one embodiment, X is a bonding chain, such as an alkylene group containing one carbon atom (i.e. methylene), and R1 – R4 & R6 are hydrogen atoms (paragraph [0054]). The modification results in Applicant’s recited general formula (I), wherein Applicant’s recited R1 is a hydroxymethylene and Applicant’s recited X is a hydrogen atom (Applicant’s claim 5).
Wherein, in a second embodiment, X is a bonding chain, such as an alkylene group containing one carbon atom (i.e. methylene), R1 – R3 & R6 are hydrogen atoms and R4 is an alkyl group containing one carbon atom (e.g. methyl) (paragraph [0054]). The modification results in Applicant’s recited general formula (I), wherein Applicant’s recited R1 is methylmethyleneoxy group and Applicant’s recited X is a hydrogen atom (Applicant’s claim 6).
Therefore, it would have been obvious to one of ordinary skill in the art to modify the EVOH (B) polymer taught by Nakazawa et al. with the modifying groups taught by Shibutani et al. for achieving an EVOH resin of reduced the crystal size and reduced melting point, which improves molding workability.
Claims 3 – 6 are rejected under 35 U.S.C. 103 as being obvious over Nakazawa et al., as applied to claim 1 above, and further in view of Suzuki (WO 2020/071513 A1, submitted with IDS filed 12/23/2022).
*US 2021/0269209 A1 is cited herein as the English language equivalent of WO 2020/071513 A1
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Nakazawa et al. teach EVOH (B) may contain a modifying group. Nakazawa et al. teach examples of the modifying group, but does not do not limit the chemical structure of the modifying group (paragraph [0056]). Nakazawa et al. do not explicitly teach the modifying group of Applicant’s claims 4 – 6.
Suzuki teaches a multilayer structure used as packaging material, wherein the multilayer structure comprises a resin composition layer composed of ethylene-vinyl alcohol (EVOH) copolymer polyvinyl alcohol polymer modified with a modifying group having a primary hydroxy represented by formula (I) shown below (paragraph [0032]):
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Wherein X represents a hydrogen atom, a methyl group or a group represented by R1-OH; R1 and R2 represents a single bond, an alkylene group having 1 – 9 carbon atoms or an alkyleneoxy group having 1 to 9 carbon atoms; and the alkylene group and the alkyleneoxy group optionally contain a hydroxy group, an alkoxy group or a halogen atom (paragraphs [0033] & [0060] – [0061]) (claim 3).
In one preferred embodiment, R1 is a single bond and X is a hydroxymethyl group, resulting in improved thermal formability and gas barrier properties (paragraph [0070) (claim 4). In a second preferred embodiment, R1 is a hydroxymethylene group and X is a hydrogen atom, resulting in improved thermal formability (paragraph [0071]) (claim 5). In a third preferred embodiment, R1 is a methylmethyleneoxy group and X is a hydrogen atom, resulting in improved thermal formability (paragraph [0072]) (claim 6).
Therefore, it would have been obvious to one of ordinary skill in the art to form a multilayer film comprising a modified EVOH copolymer with the modifying groups taught by Suzuki et al. above as the EVOH (B) polymer taught by Nakazawa et al. for imparting desired properties of improved thermal formability and gas barrier.
Claim(s) 13 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al., as applied to claim 1 above, and further in view of Kato (WO 2010/090154 A1).
With regard to claims 13 – 14, Nakazawa et al. teach the multilayer film is biaxially stretched (i.e. “at least uniaxially” and “biaxially”) (paragraph [0212]). However, Nakazawa et al. do not teach the number of times the multilayer film is stretched in the respective direction(s).
Kato teaches a multi-layer heat-shrinkable film comprising a gas barrier resin layer containing (EVOH) (pg. 3) that is stretched at a drawing ratio of 4 – 25 uniaxially and/or biaxially, wherein the drawing ratio of 4 or more is sufficient for providing good oxygen gas barrier properties and good mechanical strength (pg. 6).
Therefore, based on the teachings of Kato, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form an EVOH gas barrier layer for packaging with good gas barrier properties and good mechanical strength by stretching the film (drawings ratio) 4 – 25 times uniaxially and biaxially, which overlaps with Applicant’s claimed range of at least uniaxially by 3 times or more and less than 12 times and biaxially 3 times or more and less than 12 times in a respective direction.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al., as applied to claim 1 above, and further in view of Lorenzetti et al. (WO 2013/041469 A1; submitted with IDS filed12/23/2022).
With regard to claim 15, Nakazawa et al. do not teach a vapor deposition multilayer film comprising the multilayer film according discussed above for claim 1 having an inorganic vapor deposition layer (I) on an exposed surface side of the layer (X).
Lorenzetti et al. teach packaging laminates and packaging contains for food storage, wherein the laminate comprises an EVOH barrier surface layer provided with a vapour deposition coating. The vapour deposition coating is made of a metal or an inorganic oxide for providing barrier properties against water vapor and prevent water vapour from migrating through the multilayer film or packaging laminate (pgs. 16 – 18).
Therefore, based on the teachings of Lorenzetti et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a vapour deposition coating by depositing a metal or inorganic oxide layer onto the EVOH barrier surface taught by Nakazawa et al. using vapour deposition method in order to provide a water vapor barrier, and thus prevent water vapour from migrating through the multilayer film.
Claim(s) 1 – 3, 5, 7, 9 – 10, 12 – 15, & 26 – 27 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al. (US 2010/0136354 A1), in view of Schell et al. (US 2008/0095960 A1).
With regard to claim 1, Taniguchi et al. teach a stretched multilayer film, for the purpose of a packaging film for products such as food, medicine, industrial chemicals (paragraph [0003]), having a structure comprising a layer containing (A) vinyl alcohol-based resin having 1,2-diol unit in a side chain thereof. The melting point of the (A) side chain 1,2-diol modified vinyl-alcohol resin is in the range of 100 – 200°C (paragraph [0061]), which overlaps with Applicant’s claimed range of lower than 150°C. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Furthermore, Taniguchi et al. teach a layer (C) containing thermoplastic resin adhesive (Applicant’s layer “Y” comprising “adhesive resin (B)”) intervened between the layer containing the (A) vinyl alcohol-based resin (Applicant’s “layer (X)” comprising “resin composition (A)”) and the layer (B) (Applicant’s “layer (Z)” comprising “a comprising “polyolefin resin (C)” the thermoplastic resin (paragraph [0036]). The adhesive resin (C) (Applicant’s “layer Y” comprising “resin B”) is polyolefin-based resin), and preferably has a melting point higher than the stretching temperature by 1 – 40°C (paragraph [0029]). The stretching temperature is preferably in a range from a temperature lower than the melting point of the thermoplastic resin (B) to a temperature lower than the melting point of the thermoplastic (B) by about 40°C (paragraph [0106]). Therefore, the melting point of the adhesive layer (C) (Applicant’s “adhesive resin (B)”) is less than 150°C.
Taniguchi et al. do not teach the presence of another vinyl alcohol polymer present in the resin composition (A), and therefore, substantially absent in the resin.
The layer comprising vinyl-alcohol-based resin (A) contains alkali metal ions in the amount of 0.04 – 0.2 parts by weight based on 100 parts by weight of the vinyl alcohol-based resin (A) (paragraphs [0070] – [0071]) (i.e., approximately 400 ppm to approximately 2,000 ppm), which overlaps with Applicant’s claimed range of 25 to 1500 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Taniguchi et al. teach the layer (B) (Applicant’s “layer (Z)”) is a thermoplastic resin, such as a polyolefin-based resin (Applicant’s “polyolefin resin (C)”) (paragraph [0030]). Examples of the thermoplastic resin of layer (B) include chlorinated polyethylene and aliphatic hydrocarbon-based resins (paragraph [0081]). However, Taniguchi et al. do not teach the aliphatic hydrocarbon-based resin of the polyolefin of layer (B) is selected from the group consisting of linear low-density polyethylene, low-density polyethylene, medium-density polyethylene, and high-density polyethylene.
Schell et al. teach a multilayer packaging barrier film comprising an ethylene vinyl alcohol copolymer barrier layer, an adhesive layer and a sealant layer (paragraph [0014]). A sealant layer refers to the interior surface film layer of a package, as well as supporting layers of the interior surface of the sealant layer. The inside layer frequently also serves as a food contact layer in the packaging of foods. The sealant layer employed in packaging art includes aliphatic hydrocarbon polymers, such as polypropylene, low-density polyethylene and linear low-density polyethylene. A preferred embodiment is an ethylene copolymer of a major amount (more than 50 wt%) (paragraph [0034]).
Therefore, based on the teachings of Schell et al., it would have been obvious to one of ordinary skill in the art to use a polyolefin, such as low-density polyethylene or linear low-density polyethylene in a major amount (i.e., “main component”) of an interior layer of a food packaging film to form a sealant layer that serves as a preferred interior layer or food contact layer of the food packaging taught by Taniguchi et al.
With regard to claim 2, Taniguchi et al. teach the vinyl alcohol-based resin is an ethylene-vinyl alcohol polymer with an ethylene unit content of 20 – 60 mol.% (paragraph [0027]), which is within Applicant’s claimed range of 15 to 85 mol%.
With regard to claims 3 & 5, Taniguchi et al. teach the side-chain 1,2-diol-unit of the modified vinyl alcohol-based resin has the structural unit represented by formula 1a below (paragraph [0026]):
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This structure meets Applicant’s claim recitation of the vinyl alcohol polymer (a) represented by general formula (I):
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Wherein Applicant’s R1 is hydroxymethylene and Applicant’s X is hydrogen.
With regard to claim 7, Taniguchi et al. teach a content of the of side-chain 1,2-diol-unit of the modified vinyl alcohol-based resin is from 0.1 to 30 mol.% (paragraph [0044]), which includes Applicant’s claimed range of 2 mol% or more and less than 20 mol%. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 9, Taniguchi et al. teach alkaline earth metal, such as calcium and magnesium ions, are present in the amount of 0.04 – 0.2 parts by weight based on 100 parts by weight of the vinyl alcohol-based resin (A) (paragraphs [0070] – [0071]) (i.e., approximately 400 ppm to approximately 2,000 ppm), which overlaps with Applicant’s claimed range of 25 to 1500 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claims 10, Taniguchi et al. teach heat stabilizing additive, such as stearic acid (i.e., “higher aliphatic carboxylic acid (d)”), which has 18 carbons, is added in the amount of 0.0001 to 1 parts by weight based on 100 parts by weight of vinyl alcohol-based resin (A) (paragraphs [0070] – [0071]) (i.e., 1 – 10,000 ppm), which includes Applicant’s claimed range of 100 to 4000 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 12, Taniguchi et al. the thickness of the vinyl alcohol-based resin (A)-containing layer is selected from the range of 7 – 7500 µm (paragraph [0102]), which overlaps with Applicant’s claimed range of 0.2 µm or more and less than 20 µm.
The multilayer structure has a total thickness of 70 – 15000 µm (paragraph [0102]). The thickness of the thermoplastic resin (B)-containing layer is selected from the range of usually 70 – 13500 µm (paragraphs [0102] – [0104]). As such, the ratio of the thickness of the vinyl alcohol-based resin (A)-containing layer to the total thickness of all layers of the multilayer film is about 9% to about 50% (paragraphs [0102] – [0104]), which overlaps with Applicant’s claimed range of less than 25%.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 13, Taniguchi et al. teach both monoaxial (uniaxial) stretching and biaxial stretching may be employed (paragraph [0110]). Taniguchi et al. do not teach the number of times the multilayer film is monoaxially stretched. However, the multilayer may be subjected to biaxial stretching with 7 times in the machine direction and 7 times in the transverse direction (paragraphs [0130], [0137], & [0145]). One of ordinary skill in the art would stretch the multilayer film the same number of times monoaxially as stretched in one direction biaxially. Therefore, based on the teachings of Taniguchi et al., it would have been obvious to one of ordinary skill in the art to stretch the multilayer film monoaxially 7 times.
With regard to claim 14, Taniguchi et al. teach both monoaxial (uniaxial) stretching and biaxial stretching may be employed (paragraph [0110]). For example, the multilayer may be subjected to biaxial stretching with 7 times in the machine direction and 7 times in the transverse direction (paragraphs [0130], [0137], & [0145]), which is within Applicant’s claimed range of 3 times or more and 12 times or less in a respective direction.
With regard to claim 15, Taniguchi et al. teach the multilayer film has good gas barrier properties (paragraphs [0001] – [0007] & [0117]). The multilayer film may be laminated on a substrate, such as an inorganic material deposited film or sheet (paragraph [0016]). Taniguchi et al. do not teach the inorganic material deposited film is formed by a vapor deposition method such that a vapor deposition multilayer film is formed.
Claim 15 defines the product by how the product was made. Thus, claim 15 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having inorganic deposition layer. The reference suggests such a product.
Examiner refers applicant to MPEP § 2113 [R - 1] regarding product-by-process claims. “The patentability of a product does not depend on its method or production. If the product in the product-by-process claim is the same as or obvious from a product or the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777, F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted)
Once the examiner provides a rationale tending to show that the claimed product appears to be same or similar to that of the prior art, although produced by a different process, the burden shifts to the applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983)
With regard to claim 26, Taniguchi et al. teach the saponification degree of the vinyl alcohol-based resin (A) is preferably 99 – 100 mol% (paragraph [0060]), which is within the claimed range of ≥ 99.9 mol%. As discussed above in claim 1, the vinyl alcohol-based resin (A) has a melting point in the range of 100 – 200°C, which overlaps with Applicant’s claimed range of ≤ 142°C as a main component.
With regard to claim 27, Taniguchi et al. teach the vinyl alcohol-based resin (A0-containing layer may contain one kind of as well as a combination of two or more kinds of (A) side chain 1,2-diol-modified vinyl alcohol-based resin(s) (paragraph [0063]). In other words, Taniguchi et al. teach an embodiment in which the only polymer component in the composition (A) is the vinyl alcohol polymer (a).
Claim(s) 1 – 3, 6 – 7, 9 – 10, 12 – 15, & 26 – 27 are rejected under 35 U.S.C. 103 as being unpatentable over Isoyama et al. (US 2009/0012236 A1), in view of Taniguchi et al. (US 2010/0136354 A1) and Schell et al. (US 2008/0095960 A1).
*Trapid® “What is TPE Material” (2025)
With regard to claim 1, Isoyama et al. teach a multilayer film comprising a film (Applicant’s “layer (X)”) with excellent gas barrier properties for use in packaging and containers (paragraphs [0015] – [0016], [0038], & [0044]), wherein the film is made of a resin composition that comprises a modified EVOH (C) that has a melting point preferably less than 140°C (paragraphs [0042] & [0079]). The modified EVOH © is present in the resin composition in the amount of 50 – 95% by weight (paragraph [0066]), and as such, is a main component. The resin composition contains an alkali metal ion, such as sodium or potassium (paragraph [0041]). Working examples of the resin composition contained about 176 ppm or 218 ppm (paragraphs [0101], [0107], & [0109]).
Isoyama et al. teach the resin composition may contain a mixture two more EVOH resins (paragraphs [0031] – [0032], [0035]), but the presence of EVOH resins in addition to EVOH (C) are optional. Therefore, Isoyama et al. teach embodiments of the resin composition in which a vinyl alcohol polymer with a melting point of 150°C or higher is substantially absent in the resin composition (A).
Isoyama et al. teach the presence of an adhesive layer (Applicant’s “layer (Y)”) (paragraph [0081]), but do not teach the melting point of the main component resin of the adhesive layer.
Taniguchi et al. teach a layer (C) containing thermoplastic resin adhesive (Applicant’s layer “Y” comprising “adhesive resin (B)”) intervened between the layer containing the (A) vinyl alcohol-based resin (Applicant’s “layer (X)” comprising “resin composition (A)”) and the layer (B) (Applicant’s “layer (Z)” comprising “a comprising “polyolefin resin (C)” the thermoplastic resin (paragraph [0036]). The adhesive resin (C) (Applicant’s “layer Y” comprising “resin B”) is polyolefin-based resin), and preferably has a melting point higher than the stretching temperature by 1 – 40°C (paragraph [0029]). The stretching temperature is preferably in a range from a temperature lower than the melting point of the thermoplastic resin (B) to a temperature lower than the melting point of the thermoplastic (B) by about 40°C (paragraph [0106]). As such, the melting point of the adhesive layer (C) (Applicant’s “adhesive resin (B)”) is less than 150°C.
The adhesive resin must be softened but not melted during stretching to exert a tension force uniformly distributed during stretching, which prevents undulating streaks (paragraph [0085]). The stretching temperature must be close to the melting points of the respective layers constituting the film for ease of stretching and preventing rupture of the multilayer film (paragraph [0107]).
Therefore, based on the teachings of Taniguchi et al., it would have been obvious to one of ordinary skill in the art to form the adhesive layer at a temperature less than 150°C in order to prevent streaks during stretching and prevent rupture of the multilayer film.
Isoyama et al. teach the presence of additional layers, such as a heat-sealable resin layer (Applicant’s “layer (Z)”) joined to the resin composition layer (Applicant’s “layer (X)”) via an adhesive layer (Applicant’s “layer (Y)”) (paragraph [0081]), wherein the heat-sealable resin layer is composed of polyolefin (paragraphs [0078] & [0080]). However, Isoyama et al. do not teach the melting point of the polyolefin of the heat sealable layer, wherein the the polyolefin includes a polyethylene that has a low, middle, or high density.
Schell et al. teach a multilayer packaging barrier film comprising an ethylene vinyl alcohol copolymer barrier layer, an adhesive layer and a (heat) sealant layer (paragraph [0014]). A sealant layer refers to the interior surface film layer of a package, as well as supporting layers of the interior surface of the sealant layer. The inside layer frequently also serves as a food contact layer in the packaging of foods. The sealant layer employed in packaging art includes aliphatic hydrocarbon polymers, such as polypropylene, low-density polyethylene and linear low-density polyethylene. A preferred embodiment is an ethylene copolymer of a major amount (more than 50 wt%) (paragraph [0034]). The melting point of the sealable resin is preferably up about 150°C, more preferably up to 135°C for desired heat-sealing properties (paragraph [0035]).
Therefore, based on the teachings of Schell et al., it would have been obvious to one of ordinary skill in the art to use a polyolefin, such as low-density polyethylene or linear low-density polyethylene in a major amount (i.e., “main component”) of an interior layer of a food packaging film to form a sealant layer that serves as a preferred interior layer or food contact layer of the food packaging taught by Isoyama et al. It would have been obvious to one of ordinary skill in the art to use a polyethylene material with a melting point of up to 150°C, more preferably up to 135°C, for desired heat-sealing properties.
With regard to claim 2, Isoyama et al. teach the ethylene content of EVOH(A) for preparing the modified EVOH (C) is preferably 5 – 55 mol%, more preferably not more than 20 mol% (paragraphs [0020] & [0031]), which is within Applicant’s claimed range of 15 – 85 mol%.
With regard to claims 3 & 6, Isoyama et al. teach the EVOH (C) has a modified group comprising a hydroxy group represented by the formula Chem. 3:
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This structure meets Applicant’s claim recitation of the vinyl alcohol polymer (a) represented by general formula (I):
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Wherein Isoyama et al. teach Applicant’s X is hydrogen, wherein Isoyama’s R2 and R4 are hydrogen, and wherein Isoyama’s R1-C(O)-R3 functional group such that R1 and/R3 may be a hydroxyl group, a carboxyl group, a 1 – 10 carbon atom alkyl group or alkenyl group or combinations thereof. When R1 is a hydrogen and R3 is a methyl group (1 carbon), Applicant’s limitation that R1 is a methylmethyleneoxy group (claim 6) is met.
With regard to claim 7, Isoyama et al. teach the primary hydroxyl modified group, wherein (i) is 1, is contained in the modified EVOH (C) in the range of 0.3 to 40 mol% (paragraph [0023]), which includes Applicant’s claimed range of 2 mol% or more and less than 20 mol%. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 9, Isoyama et al. teach the resin composition comprises catalyst (D), such as zinc ion (paragraph [0098]) (Applicant’s “multivalent metal ions (c)”) (paragraph [0097]). One particular working example contained zinc ion present in the amount of 150 ppm (paragraph [0101]), which is within Applicant’s claimed range of 10 – 300 ppm.
With regard to claim 10, Isoyama et al. teach carboxylic acid or its salt may be added to the modified EVOH (C) after the modified EVOH (C) is obtained in the resin composition (paragraph [0041]). However, Isoyama et al. do not teach the carboxylic acid is a higher aliphatic carboxylic acid (d) having 8 – 30 carbon atoms in 100 – 4000 ppm.
Taniguchi et al. teach heat stabilizing additive, such as stearic acid (i.e., “higher aliphatic carboxylic acid (d)”), which has 18 carbons, for improving heat stability in melt-molding (paragraph [0070]). The acid is added in the amount of 0.0001 to 1 parts by weight based on 100 parts by weight of vinyl alcohol-based resin (A) (paragraphs [0070] – [0071]) (i.e., 1 – 10,000 ppm), which includes Applicant’s claimed range of 100 to 4000 ppm.
Therefore, based on the teachings of Taniguchi et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to improve the heat-stability during molding of the film by incorporating a high aliphatic carboxylic acid, such as stearic acid, into the resin composition in the the amount of 0.0001 to 1 parts by weight based on 100 parts by weight of vinyl alcohol-based resin (A) (paragraphs [0070] – [0071]) (i.e., 1 – 10,000 ppm), which includes Applicant’s claimed range of 100 to 4000 ppm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claim 12, Isoyama et al. teach the thickness of the film formed by the resin composition is typically in the range of 5 – 300 µm, and preferably not more than 30 µm (paragraph [0077]), which overlaps with Applicant’s claimed range of 0.2 µm or more and less than 20 µm. Isoyama et al. teach the overall thickness of the multilayer film is typically 20 – 300 µm for desired strength and flexibility (paragraph [0081]). Therefore, the ratio of thickness of the resin composition layer (X) to the total thickness of all layers of the multilayer film is 1.6% or more, which overlaps with Applicant’s claimed range of less than 25%. As set forth in MPEP 2144.05, in the case where the claimed range “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).
With regard to claims 13 – 14, Isoyama et al. et al. teach the film formed by the resin composition of their invention may be uniaxially or biaxially drawn (stretched) (paragraph [0076]), but do not explicitly teach the number of times the film is drawn (stretched) in each direction.
Taniguchi et al. teach both monoaxial (uniaxial) stretching and biaxial stretching may be employed (paragraph [0110]) for improving gas barrier property of the film (paragraph [0006]). The multilayer may be subjected to biaxial stretching with 7 times in the machine direction and 7 times in the transverse direction (paragraphs [0130], [0137], & [0145]).
Taniguchi et al. do not teach the number of times the multilayer film is monoaxially stretched. However, one of ordinary skill in the art would stretch the multilayer film the same number of times monoaxially as stretched in one direction biaxially. Therefore, based on the teachings of Taniguchi et al., it would have been obvious to one of ordinary skill in the art to stretch the multilayer film monoaxially 7 times.
Therefore, based on the teachings of Taniguchi et al., it would have been obvious to one of ordinary skill in the art to improve the gas barrier properties of the film taught by Isoyama et al. by stretching the multilayer film 7 times in each respective direction.
With regard to claim 16, Isoyoma et al. teach the modified EVOH (C) has an oxygen transmission rate at 20°C and 65% RH preferably of not more than 50 cc-20 µm/m2-day-atm to be used as a barrier material for packaging material (paragraphs [0044] & [0077]). As discussed above for claim 1, the barrier material forms a gas (i.e., oxygen) barrier film of a multilayer film. Therefore, Isoyama et al. teach a multilayer film that has an oxygen transmission rate at 20°C and 65% RH preferably of not more than 50 cc-20 µm/m2-day-atm.
With regard to claim 18, Isoyama et al. teach the presence of a thermoplastic elastomer layer (Applicant’s “at least one resin layer (R) comprising a thermoplastic resin (D) as a main component”) (paragraphs [0079] – [0081]).
With regard to claim 21, as discussed above for claim 1, Schell et al. teach a polyethylene sealing layer (i.e., “layer (Z)”).
Isoyama et al. teach the overall thickness of the multilayer film is typically 20 – 300 µm for desired strength and flexibility (paragraph [0081]), but do not teach the thickness of the heat-sealing layer comprising a polyolefin.
Schell et al. teach the heat-sealing layer is an interior layer of any suitable thickness (paragraph [0034]). The sealant layer can be 5 – 50% of the total thickness of the total structure (paragraph [0070]).
Therefore, based on the combined teachings of Isoyama et al. and Schell et al., it would have been obvious to one of ordinary skill in the art to form the polyethylene heat-sealing layer (Applicant’s “layer (Z)”) in the range of 1 – 150 µm for achieving a sealing layer intended for the interior layer of a food packaging container with the desired strength and flexibility.
With regard to claim 22, Isoyama et al. teach the melting temperature of the molded resin composition (Applicant’s “layer (X)”) is preferably from 120 – 270°C (paragraph [0076]), which overlaps with Applicant’s claimed range of 240°C or less. As discussed above for claim 1, the references cited above teach both an adhesive layer and a heat-sealable layer with melting points of less than 150°C.
As evidenced by *Trapid®, thermoplastic elastomer (TPE) typically melts between 130 and 230°C (“What is TPE?”). Furthermore, Isoyama et al. do not teach the presence of a metal layer in the multilayer. Therefore, the combined teachings of the references above fail to teach a layer comprising a resin having a melting point of 240°C or higher as a main component and a metal layer with a thickness of 1 µm or more.
With regard to claim 26, Isoyama et al. teach the degree of saponification of the vinyl ester of the EVOH(A) for preparing EVOH (C) is not less than 99% (paragraph [0032]). In other words, the degree of saponification is greater 99% or more, which includes Applicant’s claimed range of 99.9 mol% or more.
Claim(s) 15 is rejected under 35 U.S.C. 103 as being unpatentable over Isoyama et al., as applied to claim 1 above, and further in view of Lorenzetti et al. (WO 2013/041469 A1; submitted with IDS filed12/23/2022).
With regard to claim 15, Isoyama et al. do not explicitly teach the presence of an inorganic vapor deposition layer on the surface of the film formed by the resin composition to form a vapor deposition multilayer film.
Lorenzetti et al. teach packaging laminates and packaging contains for food storage, wherein the laminate comprises an EVOH barrier surface layer provided with a vapour deposition coating. The vapour deposition coating is made of a metal or an inorganic oxide for providing barrier properties against water vapor and prevent water vapour from migrating through the multilayer film or packaging laminate (pgs. 16 – 18).
Therefore, based on the teachings of Lorenzetti et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a vapour deposition coating by depositing a metal or inorganic oxide layer onto the EVOH barrier surface taught by Isoyama et al. using vapour deposition method in order to provide a water vapor barrier, and thus prevent water vapour from migrating through the multilayer film.
Response to Arguments
Applicant argues, “Claim 26 is rejected as allegedly being failing to comply with the written description requirement as set forth in paragraph 1 of the office action. With acquiescing to the merits of the rejection and solely to advance prosecution, Applicant has amended claim 26, thereby rendering the rejection moot. Accordingly, Applicant respectfully requests withdrawal of this rejection” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: In light of Applicant’s amendment of claim 26, the rejection of claim 26 under 35 U.S.C. 112(a) has been withdrawn.
Applicant argues, “Claim 26 is rejected as allegedly being indefinite as set forth in paragraph 2 of the office action, with acquiescing to the merits of the rejection and solely to advance prosecution, Applicant has amended claim 26, thereby rendering the rejection moot. Accordingly, Applicant respectfully request withdrawal of this rejection” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: In light of Applicant’s amendment of claim 26, the rejection of claim 26 under 35 U.S.C. 112(b) has been withdrawn.
Applicant argues, “Applicant respectfully disagrees, and notes that the examiner continues to misinterpret Nakazawa’s Synthesis Example 5. Nazakawa’s “Synthesis” Examples describe the synthesis of either EVOH(A) or EVOH (B) only. Specifically, Nakazawa’s Synthesis Examples 1 and 2 relate to the synthesis of EVOH (A), and Nakazawa’s Synthesis Examples 3 – 5 relate to the synthesis of EVOH (B)…Thus, Synthesise Example 5 is only related to preparing EVOH(B), and does not relate to Nakazawa’s resin composition which contain both an EVOH(A) and an EVOH(B)…” (Remarks, Pgs. 7 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The reference requires both EVOH(A) and EVOH(B) in the barrier layer. Furthermore, the Nakazawa explicitly teach the relative melting point differences of these EVOH resins be within a specific range of 12°C to 80°C. See Nakazawa’s claim 2 and paragraph [0061]. Synthesis 5 refers to the synthesis of EVOH(B) for intended use in the barrier layer with a composition comprising both EVOH(A) and EVOH(B) taught in the broader teachings of the reference. Therefore, when considering the reference in its entirety, it would have been obvious to one of ordinary skill in the art that the EVOH(B) of a preferred embodiment be combined with an EVOH(A) resin with a melting point within 12 – 80°C of the melting point of EVOH(B).
Applicant argues, “Rather, Nakazawa only shows one composition, which contains the Synthesis Example 5 ‘modified’ EVOH (B) (ethylene content of 44 mol%, a degree of saponification 99.95 mol%, and melting point of 106°C) and Synthesis Example 1 EVOH (A) (ethylene content of 32 mol%, a degree of saponification of 99.95 mol%, and a melting point of 183°C). In example 11, the EVOH (B) having a melting point of lower than 150°C is a minor component (10 parts by mass), and the EVOH(A) with a melting point 150°C or higher is a main component (90 parts by mass). See Nakazawa at paragraph [0191] and Table 1. Nakazawa also shows only one resin composition, Example 10, which contains Synthesis Example 4 EVOH (B) (ethylene content of 44 mol%, a degree of saponification of 90 mol%, and melting point of 134°C) and Syntheses Example 1 EVOH (A) (ethylene content of 32 mol%, a degree of saponification of 99.95 mol%, and a melting point of 183°C). In Example 10, the EVOH (B) having a melting point of lower than 150°C is a minor component (10 parts by mass), and the EVOH (A) with e melting point of 150°C or higher is a main component (90 parts by mass). See Nakazawa at paragraph [0191] and Table 1. As such, Applicant respectfully submits that Nakazawa fails to teach or suggest the multilayer film as set forth in claim 1 which comprises a layer (X) is made of a resin composition (A) comprising a vinyl alcohol polymer (a) having a melting point of ≤142°C as a main component. Okamoto, Shibutani, Suzuki, Kato, and Lorenzetti fail to cure the deficiencies of Nakazawa” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, it is important to note that the rejection is based on obviousness under 35 U.S.C. 103, and was not based on anticipation under 35 U.S.C. 102. Unlike a rejection under 35 U.S.C. 102, a rejection of obviousness under 35 U.S.C. 103 is not limited to every detail of a working example, but rather, is a rejection based on what would have been obvious to a person of ordinary skill in the art when the reference is considered in its entirety. For example, when a single reference teaches a composition comprising a blend of a first polymer and second polymer, it would have been obvious to a person of ordinary skill in the art to apply a detail of an example of a first polymer (e.g. EVOH(B)) disclosed in a working embodiment to be blended with a second polymer (EVOH(A)) based on the details taught in the broader teachings of the reference, to form the composition comprising a blend of the first and second polymers.
Second, Nakazawa’s teaching of an EVOH(B) resin with a melting point of 134°C or 106°C as disclosed in Synthesis 5 is not limited to use in a layer combined with EVOH(A) resin with a melting point of 180°C as disclosed in Synthesis 1. The teachings of a reference are not limited to the preferred examples. MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Therefore, contrary to Applicant’s assertion, the synthesis of the EVOH(A) or (B) resins in synthesis 1 – 3 or 4 – 5 taught by Nakazawa et al. are not limited to their use in other working examples, such as Example 11. When considering the reference of Nakazawa et al. in its entirety, it would have been obvious to a person of ordinary skill in the art to that the EVOH resins of the barrier layer are not limited to the working examples, and thus the EVOH resins of the barrier layer may have various melting points, including Applicant’s claimed range.
Applicant argues, “Finally, in the Applicant-Initiated Interview Summary of October 30, 2025, the examiner alleges that paragraph [0061] of Nakazawa teaches the difference between the melting point of the EVOH(A) and the melting point of the EVOH(B) is preferably 12 degrees Celsius or more and 80 degrees Celsius or less; for example, with regard ot the melting points of EVOH(B) in Synthesis 5: 106 + 12 = 118 and 134 + 12 = 146, which are both less than 150 degrees Celsius.
“In response, Applicant respectfully disagrees, and submits that one of ordinary skill in the art would not be motivated to modify the EVOH(A) of Nakazawa to have a melting point less than 150 degree because each and every instance of EVOH(A) disclosed in Nakazawa has a melting point of 150 degree or higher, and one of ordinary skill in the art certainly would have no reasonable expectation of success in doing so” (Remarks, Pg. 9 – 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant only points to preferred embodiments of EVOH(A) as support for their argument. Contrary to Applicant’s assertion, not every instance of EVOH(A) is 150°C or higher. Nakazawa et al. explicitly teach the only limits of the melting points of the EVOH(A) resin and the EVOH(B) resin is their relative melting points. The lower limit difference should be 12°C to and the 80°C. See Nakazawa et al., claim 2 and paragraph [0061]. Based on this explicitly teaching, Nakazawa et al. suggest embodiments in which a second EVOH resin (EVOH (A)) that have a melting point less than 150°C based on the melting points of the preferred embodiments of a first EVOH resin (EVOH(B)).
Second, the EVOH(A) resin taught by Nakazawa et al. is not limited to the melting points of preferred embodiments disclosed in the working examples (i.e., examples). See MPEP 2123 [R-6]. II. and In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994) discussed above. Therefore, one of ordinary skill in the art would conclude the teachings of the reference are not limited to the preferred embodiments, but rather, include less preferred embodiments of EVOH(A) resins that have a melting point below 150°C, as long as the melting point of EVOH(A) is within the range that meets the requirements of the reference.
Applicant argues, “In making the rejection of claim 11, it is alleged that Taniguchi teaches the thermoplastic resin (B) (Applicant’s ‘polyolefin C’) is an aliphatic hydrocarbon-based resin, such as polyethylene citing to Taniguchi at paragraph [0080] – [0081]. See Page 22 of the office action. In response, as discussed during the interview, Applicant respectfully disagrees that Taniguchi teaches or suggests polyethylene. Rather, Taniguchi appears to only disclose ‘hydrocarbon-based resins’ in which is an infinite number of possible hydrocarbon-based resins to use, and thus one of ordinary skill in the art would have no reason to choose polyethylene.
“Moreover, in the Applicant-Initiated Interview Summary of October 30, 2025, the examiner alleges that the recited polyethylene of claim 11 may include propylene-ethylene copolymers as described in paragraphs [0080] – [0081], and paragraph [0081] explicitly teaches chlorinated polyethylene. In response, Applicant respectfully submits that Taniguchi fails to teach or suggest a polyolefin resin (C) which comprises a polyethylene resin as a main component, and the polyethylene resin is at least one selected from the group consisting of linear low-density polyethylene, low-density polyethylene, medium-density polyethylene, and high-density polyethylene as set forth in claim 1. As such, Taniguchi does not teach or suggest each and every element of the claims” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Applicant’s assertion that there are an infinite number of possible hydrocarbon-based resins to use is not persuasive. Taniguchi et al. teach a genus of aliphatic hydrocarbons, which includes polyethylene, and explicitly teach exemplary species of polyethylene, such as chlorinated polyethylene and ethylene copolymers. Therefore, Taniguchi et al. explicitly teach species of polyethylene resin that met the limitation of previous claim 11.
However, in light of Applicant’s amendments cancelling claim 11 and further narrowing the limitations of claim 1 which now recites “the polyethylene resin is at least one selected from the group consisting of linear low-density polyethylene, low-density polyethylene, medium-density polyethylene, and high-density polyethylene,” Applicant’s argument that Taniguchi does not teach the recited density of the polyethylene resin is persuasive. Therefore, the current office action includes a new rejection over Taniguchi et al. in view of Schell et al. (US 2008/0095960 A1).
Conclusion
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781