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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 17 November 2025 is acknowledged.
Claims 32-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 November 2025.
Claim Rejections - 35 USC § 103
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 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, 6-14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Skupin et al. (US 2016/0010281) in view of Nevalainen et al. (US 2014/0147604 A1).
Regarding claims 1-2, 6-14 and 18, Skupin discloses coating a paper or cardboard substrate with a coating material applied by extrusion comprising an aliphatic-aromatic polyester, a chain extender that may be an organic polymeric chain extender, from 1 to 80% by weight of an inorganic filler such as talc and polylactide resin (i.e. a paper substrate having a first surface and an opposed second surface and a biopolymer coating applied by extrusion to at least one of the first surface and the second surface, wherein the biopolymer coating comprises an inorganic melt curtain stabilizer, a polylactide resin having a melt flow index and an organic polymeric chain extender; wherein the inorganic melt curtain stabilizer is talc; wherein the biopolymer coating comprise an adhesion promoting polymer and wherein the adhesion promoting polymer comprises at least one aliphatic-aromatic copolyester/polyester; wherein the biopolymer coating comprises aliphatic-aromatic polyester)(abstract, [0025]-[0036], [0042]-[0048], [0060], [0066], claims 16-20).
Skupin discloses that the coating may be applied to paper or cardboard for a variety of uses, for example paper/cardboard cups for coffee ([0107]-[0109]). Skupin does not specifically disclose paperboard as a substrate.
Nevalainen discloses that paper, paperboard and cardboard are equivalent and interchangeable as substrates for coffee cups ([0011], [0015], [0025]).
Skupin and Nevalainen are analogous art because they both teach about paper coffee cups. It would have been obvious to one of ordinary skill in the art to use paperboard as taught by Nevalainen as the substrate of Skupin because it is well-known that paper, paperboard and cardboard are equivalent and interchangeable for this use.
Regarding claim 2, the coating may be 10 g/m2 (calculated to be 6 pounds per 3000 ft2)(i.e. overlapping less than 22 pounds per 3000 ft2)([0092]).
Regarding claim 6, given that the coating of modified Skupin is identical to the instantly claimed coating in composition and amounts and that of the instant specification (inorganic melt curtain stabilizer that is talc, polylactide resin, organic polymeric chain extender, aliphatic-aromatic copolyester – instant specification [0038]-[0043], Tables 1-4), it is the examiner’s position that it will intrinsically be heat sealable.
Regarding claims 8-9, given that polylactide resin is a biodegradable polyester, the biopolymer coating comprises a biodegradable polymer and comprises a biodegradable polyester.
Regarding claim 12, the coating may be a single layer coating or multilayer formed by extrusion or coextrusion (i.e. monolayer blend or co-extruded multilayer blend)([0092], [0094], [0105], claims 16, 25)
Regarding claim 13, the coating may comprise 1 to 80 % by weight of the talc (i.e. overlapping about 1 % to about 25 % by weight of the biopolymer coating)([0060]).
Regarding claim 14, Skupin discloses that the composition may have a MVR from 4 to 70 cm3/10 min (i.e. overlapping melt flow index below 14 g/10 min)([0019]-[0023]). Alternatively, given that melt flow index is a measure of flowability/processability, it is the examiner’s position that it would have been obvious to adjust this parameter depending on the desired processability.
Regarding claim 18, Skupin discloses that the chain extender may be epoxide containing methacrylates and may have an equivalent weight of 150 to 3000 (i.e. wherein the organic polymeric chain extender comprises a low epoxy equivalent weight)([0041], [0045]). Given that there is no specific definition of “low epoxy equivalent weight”, it is the examiner’s position that the chain extender of Skupin is low epoxy equivalent weight.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Skupin et al. (US 2016/0010281) and Nevalainen et al. (US 2014/0147604 A1), as applied to claim 1 above, in view of Harrison et al. (US 2010/0021751 A1).
Regarding claim 2, modified Skupin discloses all of the claim limitations as set forth above. Skupin does not explicitly disclose that the coat weight of the biopolymer coating is less than 22 pounds per 3000 ft2.
Harrison discloses that a coating weight of a coating composition for paper comprising PLA of 2.6 to 11.6 lbs/3000ft2 (Table 4, [0078]-[0079]).
Skupin and Harrison are analogous art because they both teach about coating compositions comprising PLA for paper substrates. It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to use the coat weights taught by Harrison in the coated paper article of Skupin because it is well-known to do so and doing so would amount to nothing more than using a known coating weight in a known environment to accomplish an entirely expected result.
Allowable Subject Matter
Claims 19, 21, 25, 29 and 31 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
It would not appear to be obvious to incorporate a different polylactide resin having a different melt flow index.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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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.
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/JAMES C YAGER/Primary Examiner, Art Unit 1782