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 .
Response to Amendment
Applicant's amendments and remarks filed on August 14, 2025 have been entered and considered. Claims 10, 11, 13, 14, 16, and 20 are cancelled and claims 1, 5, 6, 12, 18, 19, 21-23, and 25 are amended and claims 1-9, 12, 15, 17-19, and 21-25 are pending. In view of Applicant’s amendments to the claims, all 35 USC 112(b) rejections have been withdrawn and 35 USC 102(a)(1) and 102(a)(2) rejection as anticipated by Utz et al (US 6,503,634) is withdrawn. The invention as currently claimed is not found to be patentable for reasons herein below.
Response to Arguments
Applicant's arguments filed August 14, 2025 have been fully considered but they are not persuasive.
Applicant argues that Hayashi fails to disclose an “intermediate layer is formed from a material (substantially comprising)/consisting essentially of at least one of: PLA, PCL and PBS, a starch, PVOH, EVOH, Pullulan, BVOH, a natural wax, a natural resin, and a microfibrous cellulose”, the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basis and novel characteristics of the claimed invention. For the purposes of searching and applying art under 35 U.S.C. 102 and 103, absent a clear indication in the specification of what the basic and novel characteristics are, “consisting essentially of” will be construed as equivalent to “comprising”. See MPEP 2111.03(III).
In the instant case, the specification does not provide a clear indication of the basic and novel characteristics of the invention are. Therefore, “consisting essentially of” is being interpreted as “comprising”. Hayashi et al. teaches that the aqueous coating dispersion equated to Applicant’s “fluid” should have polyvinyl alcohol up to about 15% by weight (column 7, lines 63 – column 8, lines 1 – 20). Specifically, Hayashi et al. teach in Examples 24 – 32 that a paper is coated with an aqueous solution of polyvinyl alcohol and then vacuum deposited with an aluminum layer (column 12, 20 – 35). Although the Examiner agrees that Hayashi et al. teach that the PHOV is added to a solution containing resin as the main component, this is not excluded from the phrase “consisting essentially of” as Applicant does not have a clear indication in the specification what the basic and novel characteristics are and how the presence of a resin would affect the basic and novel characteristics of the invention. Applicant has not met the burden so the rejection over Hayashi et al. stands.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 – 8, 12, 15, 17 – 19 and 21 – 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US 4,599,275) as evidenced by definition of paper from Hawley’s Condensed Chemical Dictionary.
Hayashi et al. is directed to a metal-deposited paper having low air and moisture
permeability suitable for packaging material for confectionery, tobacco et al. (column 1, lines 15 – 25).
As to claims 1, 2 and 22, Hayashi et al. teaches a metal-deposited paper comprising a paper substrate, a thin continuous coating of a film-forming resin having good adhesion to metals on at least one surface and a metal film deposited on the resin coating (Abstract). Hayashi et al. teaches that the paper itself exhibits high air-permeability (column 1, lines 38 – 45) implying a level of porosity which the coating fills to some extent. The Examiner equates the paper substrate to Applicant’s “substrate”, the film-forming resin coating to Applicant’s “intermediate layer” and the metal film to Applicant’s “non-polymer barrier layer”.
With respect to the limitation that the “intermediate layer is formed from a material consisting essentially of at least one of: PLA, PCL and PBS, a starch, PVOH, EVOH, Pullulan, BVOH, a natural wax, a natural resin, and a microfibrous cellulose”, the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basis and novel characteristics of the claimed invention. For the purposes of searching and applying art under 35 U.S.C. 102 and 103, absent a clear indication in the specification of what the basic and novel characteristics are, “consisting essentially of” will be construed as equivalent to “comprising”. See MPEP 2111.03(III).
In the instant case, the specification does not provide a clear indication of the basic and novel characteristics of the invention are. Therefore, “consisting essentially of” is being interpreted as “comprising”. Hayashi et al. teaches that the aqueous coating dispersion equated to Applicant’s “fluid” should have polyvinyl alcohol up to about 15% by weight (column 7, lines 63 – column 8, lines 1 – 20). Specifically, Hayashi et al. teach in Examples 24 – 32 that a paper is coated with an aqueous solution of polyvinyl alcohol and then vacuum deposited with an aluminum layer (column 12, 20 – 35).
As to claims 3 - 5, Hayashi et al. teaches that the use of paper as Applicant’s “substrate” (column 3, lines 18 – 20). According to Hawley’s Condensed Chemical Dictionary, paper is defined as “A semisynthetic product made by chemically processing cellulosic fibers. A wide variety of sources have been used for specialty papers (flax, bagasse, esparto, straw, papyrus, bamboo, jute, and others), but by far the largest quantity is made from softwoods (coniferous trees), such as spruce, hemlock, pine, etc.; some is also made from such hardwoods as poplar, oak, etc., as well as from synthetic fibers. Papermaking technology involves the following basic steps: (1) chipping or other subdivision of the logs (see Groundwood); (2) manufacture of chemical or semichemical pulp by digestion in acidic or alkaline solutions, which separates the cellulose from the lignin (see Pulp, Paper); (3) beating the pulp to break down the fibers and permit proper bonding when the sheet is formed; (4) addition of starches, resins, clays, and pigments to the liquid stock (or “furnish”); (5) formation of the sheet continuously on a fourdrinier machine, where the water is screened out and the sheet dried by passing over a series of heated drums; (6) high-speed calendaring for brightness and finish; (7) coating either by machine application or (for heavy finishes) by brushes”. It should be noted that Hawley’s Chemical dictionary notes that paper includes cellulosic fibers in the form of pulp.
As to claims 6 – 7, Hayashi et al teaches that the paper itself exhibits high air-permeability (column 1, lines 38 – 45) implying a level of porosity which the coating fills to some extent. Hayashi et al. teaches that the paper after coating substantially retains the inherent properties of paper and has a low air and moisture permeability (column 2, lines 13 – 18). Hayashi et al. teaches that the total amount of aqueous dispersion coated is not critical and can be varied according to the type of resin used (column 7, lines 25 – 35). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the average pore size of the paper substrate and the average pore of the coated substrate include the claimed range. One would have been motivated to create a paper and coated paper with the claimed average pore size to create a paper with suitable properties according to the intended end use. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
As to claim 8, Hayashi et al. teaches a thin continuous coating of a film-forming resin having good adhesion to metals on at least one surface (Abstract) which indicates that the treatment of the coating improves the adhesion of the barrier layer or metal layer.
As to claim 12, Hayashi et al. teaches the coating of a film forming resin is very thinly applied having a thickness of about 1 to 30 microns, preferably about 2 to about 20 microns (column 5, lines 5 – 20) which is completely within Applicant’s range.
As to claim 15, Hayashi et al. teaches that the aqueous coating dispersion equated to Applicant’s “fluid” should have polyvinyl alcohol up to about 15% by weight (column 7, lines 63 – column 8, lines 1 – 20).
As to claim 17, Hayashi et al. teaches that the aqueous dispersion is applied by spray coating, roller coating, etc. (column 7, lines 10 – 20).
As to claim 18, Hayashi et al. teaches that the metal is vacuum-deposited on the resin coating and can be aluminum among other metals (column 8, lines 43 – 50).
As to claim 19, Hayashi et al. teaches that the metal layer generally has a thickness of 100 – 1000 Angstrom (column 8, lines 55 – 60) which is equivalent to 10 – 100 nanometers which is within Applicant’s claimed range.
As to claim 21, Hayashi et al. teaches that the metal layer is applied using vacuum deposition (column 8, lines 43 – 50).
As to claim 23, Hayashi et al. teaches in Examples 24 – 32 that a paper is coated with an aqueous solution of polyvinyl alcohol and then vacuum deposited with an aluminum layer (column 12, 20 – 35).
As to claim 24, Hayashi et al teaches that the thickness of the metal is not limited and can be varied according to the utility of the final product (column 8, lines 40 – 60). Similarly, Hayashi et al. teaches that the total amount of aqueous dispersion coated is not critical and can be varied according to the type of resin used (column 7, lines 25 – 35). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the relative amounts by weight of the layers of the composite where the barrier layer accounts for at most 5 weight percent of the barrier material. One would have been motivated to create a paper and coated paper with the claimed average pore size to create a paper with suitable properties according to the intended end use. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
As to claim 25, Hayashi et al. teaches a metal-deposited paper having low air and moisture permeability suitable for packaging material for confectionery, tobacco et al. (column 1, lines 15 – 25).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US 4,599,275) as evidenced by definition of paper from Hawley’s Condensed Chemical Dictionary in view of Utz et al. (US 6,503,634).
Hayashi et al. teach the claimed invention as discussed above but fail to teach the treatment comprises surface activation of the intermediate layer as required by claim 9.
Utz et al. is directed to a barrier film composite with excellent barrier properties to gases and water vapor used for applications such as foodstuff packaging or technical membranes (Abstract). Utz teaches that the inventive barrier films can be applied to cardboard, paper, coated cardboard or coated paper (column 3, lines 18 – 20). For example, an ORMOCER primer may be applied first to the cardboard or paper, followed by a metal or metal oxide film (column 6, lines 38 – 45). The ORMOCER film is an inorganic-organic hybrid polymer film (column 2, lines 18 – 23). By attachment of the ORMOCER film to the substrate, at least some of the pores if not most of the pores would be at least partially filled by the process of laminating. Utz teaches that silicon oxide films are applied, e.g., by vaporization of silicon monoxide or by means of plasma CVD (chemical vapor deposition). ORMOCERs may be applied by conventional lacquering processes such as spraying, brushing, rolling or centrifuging; in the exemplary embodiments, coating may be carried out using a raster roll. The applied ORMOCER lacquers are cured preferably in-line, for example by heat or photochemical induction (column 5, lines 25 – 35). Although the plasma CVD is discussed in association with how the silicon oxide films are applied, it is submitted that the layer below specifically the ORMOCER would at least be partially “surface activated” during that process.
It would have been obvious to one of ordinary skill at the time the invention was filed to apply a coating using plasma CVD as suggested by Utz. in the barrier film composite of Hayashi et al. motivated by the desire to have barrier film composite with improved mechanical and barrier properties.
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 JENNIFER A BOYD whose telephone number is (571)272-7783. The examiner can normally be reached M-F 8 am - 5 pm with alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786