DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/23/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 8-9, 22-23, and 26-28 are rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Re Claims 8-19, 22-23 and 26-68: they are not further limiting due to Applicant’s amended “consisting of” language in amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. The extra features which should not be included are as follows (list not exhaustive): "more than one water-soluble polymeric sublayer" of claim 9 and "orderly spaced hydrophilic nanoplateltes" of claim 23 and the like. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”). A claim which depends from a claim which “consists of” the recited elements or steps e.g. in the instant application, claims 8-19 cannot add an element or step e.g. " more than one water-soluble polymeric sublayer " of claim 9, and " orderly spaced hydrophilic nanoplateltes " of claims 23 and the like. When the phrase “consists of” appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45 (Fed. Cir. 1986). See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) The primary reference applied below contains (23) FIG. 3 and associated text shows a cross-section of a water-dispersible barrier layer 30 having a first surface 32 and a second surface 34 opposite the first surface 32, and a thickness 316 between the first surface 32 and the second surface 34, applied to substantially cover at least one of the first surface 22 or the second surface 24 of the water-soluble polymeric layer 20. Because Boswell teaches nothing but those layers and materials included in the body, the claims are met. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-6, 11-17 and 20 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Boswell (US 20220034040 A1).
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Re claims 1, 3-6, and 20, Boswell discloses See (23), Boswell [0001], and FIG. 3 and associated text shows a cross-section of a water-dispersible barrier layer 30 having a first surface 32 and a second surface 34 opposite the first surface 32, and a thickness 316 between the first surface 32 and the second surface 34, applied to substantially cover at least one of the first surface 22 or the second surface 24 of the water-soluble polymeric layer 20. Claims 3-6 and 20 are inherent given the same material and structure used. Re claims 11-17, Boswell teaches water-soluble biodegradable polymers [72-74] hydroxypropyl methylcellulose of exact range disclosed in published claim 26, methylcellulose of exact range of average molecular weight (10,000 Da – 100,000 Da), polyethylene oxide, sodium alginate for biodegradability [73-74] of exact range of 10,000 Da – 240,000 Da, [0075] PVA of the exact range of 70%-100%, published claims 20-23 of exact range of average molecular weight (20,000 Da – 150,000 Da). The same overlapping rationale applies here for reasons set forth above. The claims are anticipated.
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.
Claims 7-9, 18-21, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Boswell (US 20220034040 A1).
Boswell is relied upon above.
Re Claims 7, 21 to thickness and claims 24-25 to the aspect ratio, they are optimizable dimensions wherein such features of the laminate is within the skilled artisan to have modified it would have been obvious to one of ordinary skill in the art to use nanolayers with thickness and aspect ratios, including that presently claimed, in order to produce barrier layers with effective functionality. Re claims 7-9, given that Boswell is identical to laminate claimed, it is clear that the packaging material would necessarily inherently meet the recycling properties as claimed. Re claims 18-19, Boswell disclosed [70] the plasticizer claimed.
Further re claim 20, Although no explicit disclosure to an optical observation process, note: Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Further Re claims 9 and 22, it would have been obvious to one of ordinary skill in the art at the time of the invention to use additional nanoclay barrier layers in order to further increase safety and quality of packaged foods (114). The duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. Providing additional nanoclay barrier layers would have achieved expected results such as increasing food safety and quality. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04 (VI) B. In re Harza, 124 USPQ 378,380 (CCPA 1960).
Further re claim 23, Although no explicit disclosure to a measured spacing processes, note: Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Claims 23-28 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220033158 A1 Boswell et al.
Re claims 23-28, Boswell teaches [39] barrier 30 contains hydrophilic nanoplatelets such as sodium hectorite in paper recycling [40] oriented and having overlapping aspect ratio of 100 or greater as claimed (overlapping 100 or more) and [85-86] for benefits of at least rheological modifiers including clay [48, 63, 86] for aiding in biodegradability.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of aspect ratio of claimed nanoplatelets for rheological modifiers and clay for fillers for aiding in biodegradability taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Response to Arguments
Applicant’s arguments are considered but are not convincing and are moot in view of the new ground of rejection using a new reference as primary.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787