Detailed Office Action
The communication dated 7/21/2026 has been entered and fully considered.
Claim 29 has been amended. Claims 1, 2, 4-19, 21-23, 25, and 28-30 are pending.
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 Arguments
Applicant argues that the teaching of XING to fails to disclose the term “fully dispersed”. The applicant asserts that “even-distributed” does not mean “fully dispersed”. Applicant argues that under BRI “fully dispersed” should mean “metal oxide broken down and homogenously incorporated with the polymer matrix, a particular microstructure rather than a mere spatial arrangement”
In response the term “disperse” in chemistry terms means to “distribute” “evenly”. It is not clear where support for a particular microstructure is in the instant specification.
PNG
media_image1.png
282
790
media_image1.png
Greyscale
Applicant argues that the combination with XING is improper because the base technique does not disclose any mixing technique at all.
In response the base technique discloses ‘compounding’ and ‘blending’ which is a broad mixing technique. XING teaches a specific type of blending that “even distributes” fillers.
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.
Claims 1, 2, 4-19, 21-23, 25, 28, 29, and 30 are rejected under 35 U.S.C. 103 as obvious over WO 2007/002896 BOHME et al., hereinafter BOHME, in view of U.S. 2023/0399506 XING et al., hereinafter XING, as evidenced by Typical Density and Bulk of Some Papers by Paper on the Web
XING has a filing date of 11/11/2022 which is before the instant earliest effective filing date of 8/18/2023.
As for claims 1, 28, 29, and 30, BOHME discloses a first paper layer (105) [claim 1 and claim 10; Figure 1] and a second layer (110) comprising a polymer [claim 1] and a filler [claims 9 and 10; Figure 1]. The filler can be calcium oxide [pg. 10 line 14 and claim 10].
BOHME discloses that the polymer and oxide are blended (mixed) or compounded together [pg. 10 lines 10-15] but does not disclose the mixing type prior to extrusion [g. 19 lines 1-15]. BOHME discloses the polymer mix is extruded onto the paper surface [Example 2].
The method by which the first polymer and second polymer are combined (melt-mixing and “dried at elevated temperature”) are product by process limitation. However, the term “fully dispersed” is a structural limitation which is not suggested by BOHME.
XING discloses drying the melt oxide CaO at an elevated temperature and drying PET at an elevated temperature [0067] prior to melt-mixing to obtain a good-melt [0069] which is evenly distributed [0021]. XING discloses that the polymer is extruded [0021]. The examiner interpreters even-distributed to read on fully dispersed. The definition of “dispersed” is to spread or distribute in chemistry terms it means to distribute more or less evenly according to Meriam-Webster dictionary [definition 2 c]
PNG
media_image1.png
282
790
media_image1.png
Greyscale
At the time of the invention it would be obvious to substitute one known polymer mixing technique for another known polymer/filler mixing technique absent evidence of unexpected results. The person of ordinary skill in the art would expect success as in both BOHME and XING the polymer/filler mix can be extruded and both BOHME/XING mix PET with CaO. The person of ordinary skill in the art would be further motivated to do so as XING shows that the coating can break down in water allowing the paper to be recovered during recycling [claim 1].
As for claims 2 and 7, BOHME discloses the polymer can be PET (polyester) or LDPE (polyolefin) [pg. 9 lines 20-21 and claim 7].
As for claim 4, BOHME discloses 10 to 30% of the filler which falls within the instant claimed range [pg. 10 line 14 and pg. 11 line 9]
As for claim 5, as BOHME teaches substantially the same first layer as claimed and substantially the same second layer comprising the same polymers as claimed, the same metal oxide as claimed (CaO) and at the same claimed weight percentage. Therefore the composition would be expected to have substantially the same degradability as claimed or be an obvious variant thereof.
As for claim 6, BOHME discloses that the substrate paper layer (105) has a basis weight of 35 to 45 lbs/ream while the second layer (110) has a basis weight of 2 to 5 lbs/ream. Assuming the highest amount of basis weight of 5 lbs per ream for the second layer to be thicker (and therefore not meet the claim) than the fiber layer it would be required to have a bulk density 7-9 times smaller than the paper/board sheet. A paper or board sheet can have a bulk density of 0.47 to 0.94 g/cc [see e.g. paper on web: density]. Meanwhile, polyethylene has a density of about 0.95 with the calcium oxide filler raising the density. In the alternative it would be obvious to the person of ordinary skill in the art to change the thickness dimension absent evidence of unexpected results [MPEP 2144.04 (IV)(A)].
As for claims 8-14, BOHME teaches the features as per above including a base substrate paper with an oil-resistant coating on one side. BOHME claims “an oil resistance layer substantially overlying the substrate” [claim 1]. In patent parlance “a” or “an” means “one or more”. For there to be a second layer overlaying the substrate it must be on the other side. Therefore “an oil resistance layer substantially overlying the substrate” reads on a second layer on the other side of the base substrate paper.
In the alternative, it is prima facie obvious to duplicate parts [MPEP 2144.04 (VI)(B) to add a second identical coating on the other side of the paper. The person of ordinary skill in the art would be motivated to do so to add oil resistance to both sides of the paper substrate. This would allow for a paper with resistance on two sides that could be flipped by the user and not require them to flip the sheet to the correct side.
As for claim 15-18, 24 and 25, as BOHME teaches substantially the same first layer as claimed and substantially the same second layer comprising the same polymers as claimed, the same metal oxide as claimed (CaO) and at the same claimed weight percentage. Therefore the composition would be expected to have substantially the same degradability and recyclability as claimed or be an obvious variant thereof.
As for claim 19, BOHME discloses Calcium Oxide [pg. 10 line 14 and claim 10]. BOHME discloses the polymer can be PET (polyester) [pg. 9 lines 20-21].
As for claims 22 and 23, BOHME discloses the article of manufacturing of a paper packaging material [claim 29].
Conclusion
THIS ACTION IS MADE FINAL. 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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached at (571)270-7457. 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.
ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
Prosecution Insights