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 .
DETAILED ACTION
Claims Status
Receipt is acknowledged of applicant's amendment filed 12/30/2025. Claims 1-2, 4-11, and 13-24 are pending. Claims 1, 10 and 19 are independent claims. Claims 1, 10 and 19 are amended.
Response to Amendment/Arguments
Applicant's amendments and arguments with respect to the rejection of present claims 19 and 21 under 35 U.S.C. 102(a)(1) as being anticipated by Aich et al. (U.S. Patent Application No. 2013/0181382; hereinafter referred to as "Aich"), and rejection of present claims 1-6 and 8 under 35 U.S.C. 103 as being unpatentable over Schertz et al. (WO 02/10279, hereinafter referred to as "Schertz"), and rejection of present claims 1-2, 4-6, 8-11, 13-15, 17-18, 20-22 and 24 under 35 U.S.C. 103 as being unpatentable over Aich, and rejection of present claims 3, 7, 12, 16 and 22 under 35 U.S.C. 103 as being unpatentable over Aich as applied to claims 1, 10 and 19 above, further in view of Nishikawa et al. (U.S. Patent Application No. 2023/0257172) have been fully considered, and are persuasive. Therefore, the previous rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly discovered reference as discussed in details in the body of the rejection below.
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-2 and 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 02/10279 to Schertz et al. (“Schertz”, of record) in view of Mallory et al. (US 5,496,649; “Mallory”).
Regarding claims 1 and 4-5, Schertz teaches a film layer (page 1, lines 20-25, page 4, lines 1-5, page 9, line 4-5) comprising:
- polyvinyl alcohol (page 4, lines 1-5, page 5, lines 15-26, the PVOH) in amount of 1 to 99 wt % based on the total weight of the layer (page 11, lines 11-35, Schertz teaches in the film, the POVH/filler ratio is 1 to 99%), which range overlaps with the instantly claimed range of 0.1 to 5 wt% of polyvinyl alcohol of claim 1; and
- calcium carbonate (page 11, lines 11-35, the suitable filler includes calcium carbonate) in amount of 1 to 99 wt% based on the total weight of the layer (page 11, lines 11-35), which range overlaps with the instantly claimed range of 20 wt% or more of claim 1, and which range overlaps with the instantly claimed range of 50 wt% to 97 wt% of claim 4, and which range overlaps with the instantly claimed range of 70 wt% to 97 wt% of claim 5. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Schertz does not specifically teach the polyvinyl alcohol is cross-linked polyvinyl alcohol, as instantly claimed.
Mallory teaches a polymeric film having cross-linked polyvinyl alcohol coating provided thereon that offers enhanced barrier characteristics, and Mallory teaches that PVOH coatings which exhibit improved processing characteristics resulting in cross-linked PVOH coatings providing improved oxygen barriers especially at high relative humidities (col. 1, lines 5-10, col. 2, lines 50-60).
It would have been obvious to one of ordinary skill in the art to modify the film layer of Schertz in view the teachings of Mallory, to include cross-linked polyvinyl alcohol instead of the polyvinyl alcohol of its film, to provide an improved film layer with improved oxygen barriers especially at high relative humidities as taught by Mallory (col. 1, lines 5-10, col. 2, lines 50-60), which would have predictably arrived at a satisfactory film layer that is the same as instantly claimed, in claims 1, 4-5. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 2, Schertz does not teach or require that calcium carbonate must be specially treated in any manner, and thus the calcium carbonate of Schertz is considered as being untreated calcium carbonate and reads on the instantly claimed limitations.
Regarding claim 6, Schertz teaches its layer may include additional layers/films as desired, such as a protective layer on a side of the layer that protects the layer including the polyvinyl alcohol and calcium carbonate from moisture (page 1, last para, page 2, first para and page 3, last para), meeting the claimed limitations.
Regarding claim 8, Schertz teaches the suitable known polyvinyl alcohol includes those having melting point of about 200 °C (page 2, lines 14-19), and thus meeting the claimed limitation of being thermally stable at temperatures up to 150 °C.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schertz in view of Mallory as applied to claim 1 above, further in view of Wolff (US 3,532,534).
The limitations of claim 1 are taught by Schertz and Mallory as discussed above.
Regarding claim 9, modified Schertz does not specifically teach the layer with the inclusion of protein.
Wolff teaches film coating comprising polyvinyl alcohol with the inclusion of suitable additives such as protein/soy protein to provide improved flexibility, dimensional stability (col. 4, lines 36-50).
It would have been obvious to one of ordinary skill in the art to modify the modified Schertz, to select and include suitable additives as desired such as protein/ soy protein as taught by Wolff, depending on the intended end applications of the film layer, to provide a film layer with improved flexibility, dimensional stability as taught by Wolff (col. 4, lines 36-50), which would have predictably arrived at a satisfactory film layer that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Claim(s) 1-2, 4-6, 8, 10-11, 13-15, 17, 19-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Aich et al. (US 2013/0181382; “Aich”) in view of Mallory et al. (US 5,496,649; “Mallory”).
Regarding claim 1 and claims 4-5, Aich teaches a layer comprising polyvinyl alcohol (para [0013], [0022], the film layer of Aich includes polyvinyl alcohol and suitable additives including alkaline earth metal salts). Aich teaches its film layer include polyvinyl alcohol and further includes suitable additives including alkaline earth metal salts including calcium carbonate among others (para [0013], [0022] [0027]).
Aich does not specifically teach the inclusion of cross-linked polyvinyl alcohol in the specific amount as instantly claimed.
Mallory teaches a polymeric film having cross-linked polyvinyl alcohol coating provided thereon that offers enhanced barrier characteristics, and Mallory teaches that PVOH coatings which exhibit improved processing characteristics resulting in cross-linked PVOH coatings providing improved oxygen barriers especially at high relative humidities (col. 1, lines 5-10, col. 2, lines 50-60).
It would have been obvious to one of ordinary skill in the art to modify the film layer of Aich in view the teachings of Mallory, to include suitable amount of cross-linked polyvinyl alcohol, to provide an improved film layer with improved oxygen barriers especially at high relative humidities as taught by Mallory (col. 1, lines 5-10, col. 2, lines 50-60). Regarding the amount of cross-linked polyvinyl alcohol, it would have been obvious to a person of ordinary skill in the art to modify the modified Aich, to adjust the amount of cross-linked polyvinyl alcohol in the film layer through routine experimentation in order to achieve the desired properties of the layer once produced (i.e., oxygen barriers etc.), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., 0.1 to 5 wt% as in claim 1. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Aich does not specifically teach the inclusion of 20 wt% or more of calcium carbonate in the layer, as instantly claimed.
Aich teaches the amount of the suitable additive, i.e., calcium carbonate, in its film layer is a result effective variable, in that Aich teaches its PVOH sheet includes particular additive, i.e., calcium carbonate in the desired amount in order to accelerate the rate of dissolution of the film or container (para [0013], [0022] [0027]).
It would have been obvious to a person of ordinary skill in the art to modify Aich, to adjust the amount of calcium carbonate in the film layer through routine experimentation in order to achieve the desired properties of the layer once produced (i.e., the rate of dissolution of the layer), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., 20 wt% or more of calcium carbonate, based on the total weight of the layer as in claim 1, i.e., in an amount of 50 wt% to 97 wt%, based on the total weight of the layer as in claim 4, and i.e., in an amount of 70 wt% to 97 wt%, based on the total weight of the layer as in claim 5. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 2, Aich teaches the calcium carbonate comprises stearic acid treated calcium carbonate (para [0026] [0027, the inclusion of the calcium carbonate in conjunction with acid, stearic acid), meeting the claimed limitations.
Regarding claim 6, Aich teaches its container further comprising a protective layer on a side of the layer that protects the layer including the polyvinyl alcohol and calcium carbonate from oxidants, moisture, and/or acids, and/or may protect the layer including the polyvinyl alcohol and calcium carbonate from physically contacting contents of the container (para [0042] [0047], further including the top film protects the layer), meeting the claimed limitations.
Regarding claim 8, Aich teaches the layer is thermally stable at temperatures up to 150 °C (para [0047], having the sealing temperatures of 120 to 195 °C and thus thermally stable at those temperature), meeting the claimed limitations.
Regarding independent claim 10 and claims 13-14, Aich teaches a container comprising: a body that defines an internal cavity capable of holding an article (para [0001], [0013], [0022], see Fig. 1, the container with internal cavity) wherein the body comprises a layer comprising polyvinyl alcohol (para [0013], [0022], the film layer of Aich includes polyvinyl alcohol and suitable additives including alkaline earth metal salts). Aich teaches its film layer include polyvinyl alcohol and further includes suitable additives including alkaline earth metal salts including calcium carbonate among others (para [0013], [0022] [0027]).
Aich does not specifically teach the inclusion of cross-linked polyvinyl alcohol in the specific amount as instantly claimed.
Mallory teaches a polymeric film having cross-linked polyvinyl alcohol coating provided thereon that offers enhanced barrier characteristics, and Mallory teaches that PVOH coatings which exhibit improved processing characteristics resulting in cross-linked PVOH coatings providing improved oxygen barriers especially at high relative humidities (col. 1, lines 5-10, col. 2, lines 50-60).
It would have been obvious to one of ordinary skill in the art to modify the film layer of the container of Aich in view the teachings of Mallory, to include suitable amount of cross-linked polyvinyl alcohol, to provide an improved film layer with improved oxygen barriers especially at high relative humidities as taught by Mallory (col. 1, lines 5-10, col. 2, lines 50-60). Regarding the amount of cross-linked polyvinyl alcohol, it would have been obvious to a person of ordinary skill in the art to modify the modified Aich, to adjust the amount of cross-linked polyvinyl alcohol in the film layer through routine experimentation in order to achieve the desired properties of the layer once produced (i.e., oxygen barriers etc.), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., 0.1 to 5 wt% as in claim 10. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Aich does not specifically teach the inclusion of 20 wt% or more of calcium carbonate in the layer, as instantly claimed.
Aich teaches the amount of the suitable additive, i.e., calcium carbonate, in its film layer is a result effective variable, in that Aich teaches its PVOH sheet includes particular additive, i.e., calcium carbonate in the desired amount in order to accelerate the rate of dissolution of the film or container (para [0013], [0022] [0027]).
It would have been obvious to a person of ordinary skill in the art to modify Aich, to adjust the amount of calcium carbonate in the film layer of the container through routine experimentation in order to achieve the desired properties of the container once produced (i.e., the rate of dissolution of the layer of the container), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., 20 wt% or more of calcium carbonate, based on the total weight of the layer as in claim 10, i.e., in an amount of 50 wt% to 97 wt%, based on the total weight of the layer as in claim 13, and i.e., in an amount of 70 wt% to 97 wt%, based on the total weight of the layer as in claim 14. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 11, Aich teaches the calcium carbonate comprises stearic acid treated calcium carbonate (para [0026] [0027, the inclusion of the calcium carbonate in conjunction with acid, stearic acid), meeting the claimed limitations.
Regarding claim 15, Aich teaches its container further comprising a protective layer on a side of the layer that protects the layer including the polyvinyl alcohol and calcium carbonate from oxidants, moisture, and/or acids, and/or may protect the layer including the polyvinyl alcohol and calcium carbonate from physically contacting contents of the container (para [0042] [0047], further including the top film protects the layer), meeting the claimed limitations.
Regarding claim 17, Aich teaches the layer is thermally stable at temperatures up to 150 °C (para [0047], having the sealing temperatures of 120 to 195 °C and thus thermally stable at those temperature), meeting the claimed limitations.
Regarding independent claim 19, Aich teaches a container comprising a layer comprising polyvinyl alcohol (para [0001] [0013], [0022], Fig. 1, the film layer of Aich includes polyvinyl alcohol and suitable additives including alkaline earth metal salts). Aich teaches its film layer include polyvinyl alcohol and further includes suitable additives including alkaline earth metal salts including calcium carbonate among others (para [0013], [0022] [0027]).
Aich does not specifically teach the inclusion of cross-linked polyvinyl alcohol in the specific amount as instantly claimed.
Mallory teaches a polymeric film having cross-linked polyvinyl alcohol coating provided thereon that offers enhanced barrier characteristics, and Mallory teaches that PVOH coatings which exhibit improved processing characteristics resulting in cross-linked PVOH coatings providing improved oxygen barriers especially at high relative humidities (col. 1, lines 5-10, col. 2, lines 50-60).
It would have been obvious to one of ordinary skill in the art to modify the film layer of the container of Aich in view the teachings of Mallory, to include suitable amount of cross-linked polyvinyl alcohol, to provide an improved film layer with improved oxygen barriers especially at high relative humidities as taught by Mallory (col. 1, lines 5-10, col. 2, lines 50-60). Regarding the amount of cross-linked polyvinyl alcohol, it would have been obvious to a person of ordinary skill in the art to modify the modified Aich, to adjust the amount of cross-linked polyvinyl alcohol in the film layer through routine experimentation in order to achieve the desired properties of the layer once produced (i.e., oxygen barriers etc.), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., 0.1 to 5 wt% as in claim 10. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 20, Aich does not specifically teach the inclusion of 50 wt% to 97% calcium carbonate in the layer, as instantly claimed.
Aich teaches the amount of the suitable additive, i.e., calcium carbonate, in its film layer is a result effective variable, in that Aich teaches its PVOH sheet includes particular additive, i.e., calcium carbonate in the desired amount in order to accelerate the rate of dissolution of the film or container (para [0013], [0022] [0027]).
It would have been obvious to a person of ordinary skill in the art to modify Aich, to adjust the amount of calcium carbonate in the film layer through routine experimentation in order to achieve the desired properties of the container once produced (i.e., the rate of dissolution of the layer), which would have arrived at a workable amount of wt% that falls within the broad range as instantly claimed, i.e., in an amount of 50 wt% to 97 wt%, based on the total weight of the layer.
Regarding claim 21, Aich teaches its container further comprising a protective layer on a side of the layer that protects the layer including the polyvinyl alcohol and calcium carbonate from oxidants, moisture, and/or acids, and/or may protect the layer including the polyvinyl alcohol and calcium carbonate from physically contacting contents of the container (para [0042] [0047], further including the top film protects the layer), meeting the claimed limitations.
Regarding claim 23, Aich teaches the layer is thermally stable at temperatures up to 150 °C (para [0047], having the sealing temperatures of 120 to 195 °C and thus thermally stable at those temperature), meeting the claimed limitations.
Claim(s) 7, 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Aich in view of Mallory as applied to claims 1, 10 and 19 above, further in view of Nishikawa et al. (US 2023/0257172; “Nishikawa”).
The limitations of claims 1, 10 and 19 are taught by Aich and Mallory as discussed above.
Regarding Claims 7, 16 and 22, Aich does not teach the inclusion of a plasma coating.
Nishikawa teaches a laminate suitable for packaging application, and Nishikawa teaches its laminate includes polyvinyl alcohol layer (para [0036], [0038]) and further includes a plasma coating of barrier coating layer that is formed by plasma coating (para [0033], [0067]) to provide the laminate film with desired gas barrier properties (para [0032]).
It would have been obvious to a person of ordinary skill in the art at to modify Aich in view the teachings of Nishikawa, to include a plasma coating layer as a side of the layer of polyvinyl alcohol and calcium carbonate, to protect the layer and to provide improved gas barrier properties as taught by Nishikawa (para [0032] [0033], [0067]), which would have predictably arrived at a satisfactory layer and/or container comprising the layer that is the same as instantly claimed, in claims 7, 16 and 22.
Claim(s) 9, 18 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Aich in view of Mallory as applied to claims 1, 10 and 19 above, further in view of Wolff (US 3,532,534).
The limitations of claims 1, 10 and 19 are taught by Aich and Mallory as discussed above.
Regarding claim 9, 18 and 24, Aich teaches its layer may further includes various additional ingredients as desired (para [0026] [0090]). Aich does not specifically teach the layer with the inclusion of protein.
Wolff teaches film coating comprising polyvinyl alcohol with the inclusion of suitable additives such as protein/soy protein to provide improved flexibility, dimensional stability (col. 4, lines 36-50).
It would have been obvious to one of ordinary skill in the art to modify the modified Aich, to select and include suitable additives as desired such as protein/soy protein as taught by Wolff, depending on the intended end applications of the film layer, to provide a film layer with improved flexibility, dimensional stability as taught by Wolff (col. 4, lines 36-50), which would have predictably arrived at a satisfactory film layer that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782
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