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 .
REJECTIONS WITHDRAWN
All previous rejections have been withdrawn.
REJECTIONS REPEATED
There are no rejections repeated.
NEW REJECTIONS
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 9 and 16 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by JPH06-270346 (English machine translation previously provided).
JPH06-270346 discloses A multilayer film having a layer configuration in which a polyolefin layer (A), an adhesive resin layer (B) and an ethylene-vinyl alcohol copolymer resin composition layer (C) are laminated in this sequence, wherein the ethylene-vinyl alcohol copolymer resin composition layer (C) comprises an ethylene-vinyl alcohol copolymer resin (c1) with an ethylene-unit content of 20 mol% or more and 60 mol% or less and a saponification degree of 90 mol% or more, and a hydrophobic plasticizer (c2); a content of the ethylene-vinyl alcohol copolymer resin (c1) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 60 % by mass or more and 99.9 % by mass or less; an average ethylene-unit content of the ethylene-vinyl alcohol copolymer resin (c1) constituting the ethylene-vinyl alcohol copolymer resin composition layer (C) is 30 mol% or more and 60 mol% or less; a content of the hydrophobic plasticizer (c2) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 3% by mass or less, or 0.1 % by mass or more and 3 % by mass or less; the ethylene-vinyl alcohol copolymer resin composition layer (C) can further comprise a phosphoric acid compound (c3) and a content of the phosphoric acid compound (c3), when being comprised in the ethylene-vinyl alcohol copolymer resin composition layer (C), is 500 ppm or less in terms of phosphoric acid radical; the ethylene-vinyl alcohol copolymer resin composition layer (C) is free from Nylon 6; and a ratio of a thickness of the ethylene-vinyl alcohol copolymer resin composition layer (C) to the total thickness of the multilayer film is 7.5 % or less (paragraphs [0007-0009], [0011], [0013-0014], [0018-0021]).
JPH06-270346 discloses wherein the hydrophobic plasticizer (c2) comprised in the ethylene-vinyl alcohol copolymer resin composition layer (C) is an aliphatic ester, wherein a ratio of a thickness of the ethylene-vinyl alcohol copolymer resin composition layer (C) to the total thickness of the multilayer film is 5 % or less, wherein a content of the hydrophobic plasticizer (c2) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 0.6 % by mass or more and 3 % by mass or less and wherein the polyolefin resin constituting the polyolefin layer (A) is at least one selected from the group consisting of a low density polyethylene, a medium density polyethylene, a high density polyethylene, a linear low density polyethylene and a polypropylene (paragraphs [0007-0009], [0011], [0013-0014], [0018-0021]).
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.
Claim(s) 5-7 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH06-270346 (English machine translation previously provided) in view of Hirose (US 2017/008.
JPH06-270346 discloses wherein the ethylene-vinyl alcohol copolymer resin composition layer excludes an alkali metal salt (paragraphs [0007-0009], [0011], [0013-0014], [0018-0021]).
JPH06-270346 discloses wherein the thermoplastic resin (c4) comprises the ethylene-vinyl alcohol copolymer resin with an ethylene-unit content of more than 60 mol% (paragraphs [0007-0009], [0011], [0013-0014], [0018-0021]).
JPH06-270346 does not disclose wherein the ethylene-vinyl alcohol copolymer resin composition layer (C) comprises a thermoplastic resin (c4) other than the ethylene-vinyl alcohol copolymer resin (c1), and a mass ratio (c4/c1) of the thermoplastic resin (c4) to the ethylene-vinyl alcohol copolymer resin (c1) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 10/90 to 40/60, wherein the thermoplastic resin (c4) comprises an acid-modified polyolefin.
Hirose discloses wherein the ethylene-vinyl alcohol copolymer resin composition layer (C) comprises a thermoplastic resin (c4) other than the ethylene-vinyl alcohol copolymer resin (c1), and a mass ratio (c4/c1) of the thermoplastic resin (c4) to the ethylene-vinyl alcohol copolymer resin (c1) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 10/90 to 40/60, wherein the thermoplastic resin (c4) comprises an acid-modified polyolefin (paragraphs [0015-0020], [0039-0040], [0061-0072]) in container for the purpose of providing improved gas barrier properties, flexibility and bending resistance, mechanical strength and/or pinhole resistance.
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein the ethylene-vinyl alcohol copolymer resin composition layer (C) comprises a thermoplastic resin (c4) other than the ethylene-vinyl alcohol copolymer resin (c1), and a mass ratio (c4/c1) of the thermoplastic resin (c4) to the ethylene-vinyl alcohol copolymer resin (c1) in the ethylene-vinyl alcohol copolymer resin composition layer (C) is 10/90 to 40/60, wherein the thermoplastic resin (c4) comprises an acid-modified polyolefin in JPH06-270346 in order to provide improved gas barrier properties, flexibility and bending resistance, mechanical strength and/or pinhole resistance as taught or suggested by Hirose.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH06-270346 (English machine translation previously provided) in view of Hirose (US 2017/008, as applied to claims 5-7 above, and further in view of Edwards et al. (US 6,316,067).
JPH06-270346 does not disclose wherein the thermoplastic resin (c4) comprises at least one selected from the group consisting of Nylon 6/12, Nylon 6/66 and Nylon 6/66/12.
Edwards discloses wherein the thermoplastic resin (c4) comprises at least one selected from the group consisting of Nylon 6/12, Nylon 6/66 and Nylon 6/66/12 in a packaging film in order to provide improved gas barrier properties (column 5, line 64 through column 6, line 55, column 9, line 59 through column 10, line 55, column 11, lines 16-47, column 15, line 31 through column 16 line 67).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein the thermoplastic resin (c4) comprises at least one selected from the group consisting of Nylon 6/12, Nylon 6/66 and Nylon 6/66/12 in JPH06-270346 in order to provide improved gas barrier properties as taught or suggested by Edwards.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH06-270346 (English machine translation previously provided) in view of Edwards et al. (US 6,316,067).
JPH06-270346 does not disclose wherein the polyolefin resin constituting the polyolefin layer (A) is a metallocene polyolefin produced by polymerization using a metallocene catalyst.
Edwards discloses wherein the polyolefin resin constituting the polyolefin layer (A) is a metallocene polyolefin produced by polymerization using a metallocene catalyst in a packaging film for the purpose of providing improved tensile strength and puncture resistance (column 5, line 64 through column 6, line 55, column 9, line 59 through column 10, line 55, column 11, lines 16-47, column 15, line 31 through column 16 line 67).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein the polyolefin resin constituting the polyolefin layer (A) is a metallocene polyolefin produced by polymerization using a metallocene catalyst in JPH06-270346 in order to provide improved tensile strength and puncture resistance as taught or suggested by Edwards.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 3/6/26 have been considered but are deemed unpersuasive.
Applicant argues, “However, as discussed during the interview, Applicant submits that Negi's disclosure does not disclose the claimed range of the content of hydrophobic plasticizer (c2) in the ethylene-vinyl alcohol copolymer resin composition layer (C) with ‘sufficient specificity’ to anticipate a claimed invention. See MPEP 2131.03. In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that ‘there is no allegation of criticality or any evidence demonstrating any difference across the range.’ ClearValue Inc. V. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012). In Atofina, the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory, even though there was a slight
overlap between the reference's preferred range (150-350 degrees C) and the claimed range. ‘[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points.’ Atofina V. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006). Patentee described claimed temperature range as ‘critical’ to enable the process to operate effectively, and showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed range. In this case, Applicant submits that Negi's content
of 0.1 to 30 parts by weight of compound (B) based on 100 parts by weight of EVOH (A) fails to disclose the claimed range of 3% by mass or less with sufficient specificity.”
However, Negi discloses a range of between 1 to 20 parts by weight (paragraphs [0011], [0013]) and 3.8% mass% of DEP or GMS (Table 1). The 3.8 mass% is very close to applicant’s endpoint of 3.0 mass%. Because Negi discloses a range of between 1 to 20 parts by weight and a specific example of 3.8 mass% which is very close to applicant’s endpoint of 3.0 mass%, it is the opinion of the examiner that Negi discloses the range with sufficient specificity.
Applicant argues, “As MPEP § 2144.05 states, ‘Applicants can rebut a prima facie case of obviousness by showing the criticality of the claimed range.’ In this case, as discussed during the interview, Applicant respectfully submits that Negi does not render the presently claimed invention obvious because the content of the hydrophobic plasticizer (c2) in the ethylene-vinyl alcohol copolymer resin composition layer (C) in the range of 3% by mass or less as set forth in claim 1 is critical to achieving an ethylene-vinyl alcohol copolymer resin composition layer (C) having good appearance while maintaining quality stability.”
However, applicant’s criticality/unexpected results are not commensurate in scope with the claims. Applicant references examples 1-22 (Table 1 of the instant specification) which have a hydrophobic plasticizer of GMS, GML, DEP etc., the specific plasticizer is not recited in claim 1. Furthermore, examples 1-22 have phosphoric acid compounds which are optional in claim 1, specific polyolefin resins, adhesive resins and thickness ratios, none of which are recited in claim 1.
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 MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm 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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
April 21, 2026
Prosecution Insights