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 .
Upon reconsideration of the amendment filed on 08/20/2025, the following action is set forth. In light of the new grounds of rejection set forth below, the following action is non-final.
Claim Rejections - 35 USC § 112
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 12 and 15 is 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.
Claim 12 recites “SBS board”. It is not clear what is SBS stands for. It is advised to use the full name of SBS.
Claim 15 recites “barrier film comprises at least 80 wt%, based on a total dry weight of the barrier film”. It is not clear what is required as at least 80 wt%. For examination purpose, the examiner is interpreting as “barrier film comprises at least 80 wt% MFC, based on a total dry weight of the barrier film”
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.
Claim(s) 1-2, 5-9 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saukkonen et al. (WO 2019/123238) (see US 2020/0318293) in view of Ingratta et al. (US 2018/0171189).
Regarding claims 1-2, 5 and 15-17, Saukkonen discloses a laminate comprising a paper or paperboard (0028, 0037), two polymer layers (0034) wherein the polymer layers comprise tie resins (0036), i.e. first adhesive layer and second adhesive layer, and a fiber based layer comprising 40 to 90 wt% of microfibrilated cellulose, i.e. a barrier layer, (0012, 0024), wherein a basis weight of the barrier layer is from 20 to 40 g/m2 (0020), wherein terpolymer is used as tie resin in the both adhesive layers (0036) but Saukkonen fails to disclose the glass transition temperature of first and second adhesives. Given that the paper or paperboard, first adhesive layer, second adhesive layer and the barrier of Saukkonen are in this order, it is clear that the paper or paperboard is in contact with the first adhesive layer, which is in contact with the second adhesive layer, which is in contact with a barrier film.
Ingratta discloses adhesive comprising elastomer such as ethylene propylene butylene terpolymers (0026) and a hydrocarbon resin, i.e. co-binder, (0031) wherein the adhesive is coated on paper (0033) and provides improved processability, stability, thermal properties and mechanical properties (0025). Further, the glass transition temperature of the adhesive is 10 to 150 C (claim 4).
It would have been obvious to on one of ordinary skill in the art to use the specific adhesive of Ingratta in the adhesive layers of Saukkonen to obtain improved processability, stability, thermal properties and mechanical properties.
Regarding claims 6-7 and 9, Saukkonen in view of Ingratta discloses the laminate of claim 1, wherein given that Saukkonen in view of Ingratta discloses the same barrier layer and laminate as claimed in present claims, it is clear the barrier layer and laminate of Saukkonen in view of Ingratta would have the same properties as presently claimed.
Regarding claim 8, Saukkonen in view of Ingratta discloses the laminate of claim 1, wherein Saukkonen in view of Ingratta does not disclose calendaring or supercalendering before being used in the laminate.
Although Saukkonen in view of Ingratta does not disclose calendaring or supercalendering before being used in the laminate, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Saukkonen in view of Ingratta meets the requirements of the claimed laminate, Saukkonen in view of Ingratta clearly meets the requirements of the present claims.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saukkonen et al. (WO 2019/123238) (see US 2020/0318293) in view of Ingratta et al. (US 2018/0171189) further in view of Heiskanen et al. (US 2012/0214979).
Regarding claim 12, Saukkonen in view of Ingratta discloses the laminate of claim 1, but is silent regarding PVOH.
Heiskanen discloses production of microfibrillated cellulose (title) wherein PVOH is used to modify the fiber surface to obtain surface modification and lubrication effect in addition to softened and expanded fibers (0025-0026).
It would have been obvious to one of ordinary skill in the art to use the PVOH of Heiskanen in the MFC containing layer of Saukkonen in view of Ingratta to obtain surface modification and lubrication effect in addition to softened and expanded fibers.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saukkonen et al. (WO 2019/123238) (see US 2020/0318293) in view of Ingratta et al. (US 2018/0171189) further in view of Hallgren et al. (WO 2015/036930).
Regarding claim 12, Saukkonen in view of Ingratta discloses the laminate of claim 1, but is silent regarding SBS board.
Hallgren discloses paperboard being based on SBS board for good barrier properties against light oxygen and moisture (page 1).
It would have been obvious to one of ordinary skill in the art to use the specific SBS board of Hallgren in the paperboard of Saukkonen in view of Ingratta to obtain good barrier properties against light oxygen and moisture.
Response to Arguments
Applicant's arguments with respect to present claims have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787