DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support for the particles having an average particle size of 1 nm to less than 10 nm. There is support for 10 nm to 10 µm, but not 1 nm to less than 10 nm.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13: The term “type” in claim 13 line 5 is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is suggested to delete the word.
A Markush group denotes possible alternatives and has the format “selected from the group consisting of A, B, and C”. For component (E), however, there are three instances of the word “and”, which makes the claim unclear in terms of what is in the list of possible silane coupling agents.
The silane coupling agents “3-glycidoxypropylmethyldimethoxysilane” and “3-glycidoxypropyltrimethoxysilane” are repeated in the list.
Regarding claim 17: A Markush group denotes possible alternatives and has the format “selected from the group consisting of A, B, and C”. For component (E), however, there are three instances of the word “and”, which makes the claim unclear in terms of what is in the list of possible silane coupling agents.
The silane coupling agents “3-glycidoxypropylmethyldimethoxysilane” and “3-glycidoxypropyltrimethoxysilane” are repeated in the list.
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.
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 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Inaba et al. (JP 2005-126528) in view of Tokuda et al. (JP 2016-199722) using the English language machine translations for the citations below.
Regarding claims 13 and 14: Inaba et al. teaches a coating liquid for producing a film having excellent gas barrier properties (abstract) consisting of a carboxyl group containing polymer (abstract), a polyvalent metal compound particles (abstract), a surfactant (abstract) such as a phosphate ester anionic surfactant (bottom of page 8), and an organic solvent (abstract) such as ethanol (bottom of page 9). Inaba et al. teaches the water content can be less than 1,000 ppm (abstract), which overlaps with zero water. All other components are optional.
Inaba et al. does not teach 0.5 or more, or 2-7 parts of a silane coupling agent selected from the claimed group. However, Tokuda et al. teaches a similar coating liquid having 1-60 parts by mass with respect to 100 parts of component A (pg. 10) of a silane such as γ-glycidyloxypropyltrimethoxysilane (bottom of page 6). Inaba et al. and Tokuda et al. are analogous art since they are both concerned with the same field of endeavor, namely gas barrier liquid coating compositions with carboxyl group containing polymers, polyvalent metal particles, surfactants, and organic solvents. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to add the γ-glycidyloxypropyltrimethoxysilane of Tokuda et al. in an overlapping amount to the coating of Inaba et al. and would have been motivated to do so to achieve a coating having high resistance to hot water, temperature and humidity and less delamination in the final product, as evidenced by Tokuda et al. (pg. 10).
Regarding claim 15: Inaba et al. teaches a divalent metal (third paragraph of pg. 8).
Regarding claim 16: Inaba et al. teaches the polyvalent metal particles have an average particle diameter of 10 nm to 10 µm (fourth paragraph of page 8).
Regarding claim 17: Inaba et al. teaches a coating liquid for producing a film having excellent gas barrier properties (abstract) consisting of a carboxyl group containing polymer (abstract) such as polyacrylic acid (fourth paragraph of page 6), a polyvalent metal compound particles (abstract) such as zinc oxide particles (third paragraph of page 8), a surfactant (abstract) such as a polyether/polyoxyethylene alkyl ether phosphate ester anionic surfactant (bottom of page 8, top of page 9), and an organic solvent (abstract) such as ethanol (bottom of page 9). Inaba et al. teaches the water content can be less than 1,000 ppm (abstract), which overlaps with zero water. All other components are optional.
Inaba et al. does not teach 2-7 parts of a silane coupling agent selected from the claimed group. However, Tokuda et al. teaches a similar coating liquid having 1-60 parts by mass with respect to 100 parts of component A (pg. 10) of a silane such as γ-glycidyloxypropyltrimethoxysilane (bottom of page 6). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to add the γ-glycidyloxypropyltrimethoxysilane of Tokuda et al. in an overlapping amount to the coating of Inaba et al. and would have been motivated to do so to achieve a coating having high resistance to hot water, temperature and humidity and less delamination in the final product, as evidenced by Tokuda et al. (pg. 10).
Regarding claim 18: Inaba et al. teaches forming a coating layer from the coating solution (abstract).
Regarding claim 19: Inaba et al. teaches the coated film has excellent gas barrier properties (abstract).
Regarding claims 20-22: Inaba et al. teaches using the composition to package materials (second to last paragraph of pg. 15).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The motivation statement to add the silane coupling agents from Tokuda et al. does not mention the necessity of the unclaimed compounds in Tokuda et al. in order to achieve the desired properties of the silane coupling agents.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767