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 .
REJECTIONS WITHDRAWN
All previous rejections have been withdrawn.
REJECTIONS REPEATED
There are no rejections repeated.
NEW REJECTIONS
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 1-10 and 1-8 of U.S. Patent Nos. 18/029,573, 18/261,174 and 18/272,519, respectively, in view of Pey (US 2020/0346440) and JP2016536160 (English machine translation provided previously).
Claims 1-9, 1-10 and 1-8 of U.S. Patent Nos. 18/029,573, 18/261,174 and 18/272,519, respectively, recite applicant’s invention substantially as claimed but do not recite wherein a proportion occupied by a thickness of the innermost sealant layer with respect to a thickness of the laminated body is 60% or more.
Pey discloses wherein a proportion occupied by a thickness of the innermost sealant layer with respect to a thickness of the laminated body is 60% or more in a stand-up pouch comprising linear low density polyethylene for the purpose of providing improved heat sealing and/or recyclability (paragraphs [0003-0004], [0009],[0022], [0087], [0093-0099], [0108], [0119] and Table 1).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein a proportion occupied by a thickness of the innermost sealant layer with respect to a thickness of the laminated body is 60% or more in claims 1-9, 1-10 and 1-8 of U.S. Patent Nos. 18/029,573, 18/261,174 and 18/272,519, respectively, in order to provide improved heat sealing and/or recyclability as taught or suggested by Pey.
Claims 1-9, 1-10 and 1-8 of U.S. Patent Nos. 18/029,573, 18/261,174 and 18/272,519, respectively, recite applicant’s invention substantially as claimed but do not recite the heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm.
JP2016536160 discloses a heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm (paragraphs [0053-0058], [0071]) in a stand up pouch for the purpose of providing improved heat resistance (paragraph [0056]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided a heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm in claims 1-9, 1-10 and 1-8 of U.S. Patent Nos. 18/029,573, 18/261,174 and 18/272,519, respectively, in order to provide improved heat resistance as taught or suggested by JP2016536160.
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 and 6-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pey (US 2020/0346440) in view of JP2016536160 (English machine translation provided previously).
Pey discloses a laminated body comprising an innermost sealant layer formed of a polyethylene based resin and a base material formed of a polyethylene based resin and wherein a proportion occupied by a thickness of the innermost sealant layer with respect to a thickness of the laminated body is 60% or more (paragraphs [0003-0004], [0009],[0022], [0087], [0093-0099], [0108], [0119] and Table 1).
Pey does not disclose an outermost heat-resistant layer formed on an outer surface of the base material and wherein the heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm.
JP2016536160 discloses an outermost heat-resistant layer formed on an outer surface of the base material (paragraphs [0010], [0013-0014], [0026-0029], [0035], [0041], [0050], [0054-0056], [0076-0077]) and wherein the heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm (paragraphs [0053-0058], [0071]) in a stand up pouch for the purpose of providing improved heat resistance (paragraph [0056]).
Both references are drawn to a standup pouch.
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided an outermost heat-resistant layer formed on an outer surface of the base material and wherein the heat-resistant layer is formed of an inorganic compound, an organic compound containing a metal, or a varnish containing a resin, wherein the resin is at least one selected from the group consisting of a urethane resin, an acrylic resin. an epoxy resin, a polymethylpentene resin, a cyclic olefin-based resin, an unsaturated polyester resin, an alkyd resin, a polyimide resin, a polyamide-imide resin, and a polyamide resin, and a thickness of the heat-resistant layer is 0.2 to 10 µm in Pey in order to provide improved heat resistance as taught or suggested by JP2016536160.
JP2016536160 discloses wherein the heat-resistant layer is formed of a varnish, a package body comprising a folding member folded such that outer surfaces thereof face each other along a fold line (since a stand-up pouch is disclosed), wherein at least the folding member is formed of the laminated body, wherein one or more of the folding members are provided between a pair of flat planar members (since a stand-up pouch is disclosed), wherein the planar members are laminated bodies, each including an innermost sealant layer formed of a polyethylene- based resin and an outermost base material layer formed of a polyethylene-based resin, the package body having a bottom member folded in half along a fold line, the bottom member being sandwiched between a pair of barrel members (since a stand-up pouch is disclosed), wherein the bottom member is the folding member, and the barrel members are the planar members, wherein a heat-resistant layer is locally formed in a region of an outer surface of the folding member corresponding to a portion to which an inner surface of the folding member is joined (since a stand-up pouch made from the laminate of JP2016536160 is disclosed), wherein the heat-resistant layer is omitted and the base material layers are joined together at an end portion of the folding member in a direction along the fold line (since layer C is optional) (paragraphs [0010], [0013-0014], [0026-0029], [0035], [0041], [0050], [0054-0056], [0076-0077]).
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pey (US 2020/0346440) in view of JP2016536160 (English machine translation provided previously), as applied to claims 1 and 6-11 above, and further in view of WO2019189092.
Pey does not disclose wherein the sealant layer is formed of an unstretched polyethylene-based resin, and the base material layer is formed of a stretched polyethylene-based resin, wherein a printed layer or an adhesive layer is provided between the sealant layer and the base material layer, wherein 95% by weight or more of the laminated body is formed of a polyethylene-based resin.
WO2019189092 discloses wherein the sealant layer is formed of an unstretched polyethylene-based resin, and the base material layer is formed of a stretched polyethylene-based resin, wherein a printed layer or an adhesive layer is provided between the sealant layer and the base material layer, wherein 95% by weight or more of the laminated body is formed of a polyethylene-based resin (since the entire film is polyethylene) (paragraphs [0017], [0023], [0028], [0031], [0069-0081], [0128]) in a standup pouch for the purpose of providing improved strength, heat resistance and excellent recyclability.
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein the sealant layer is formed of an unstretched polyethylene-based resin, and the base material layer is formed of a stretched polyethylene-based resin, wherein a printed layer or an adhesive layer is provided between the sealant layer and the base material layer, wherein 95% by weight or more of the laminated body is formed of a polyethylene-based resin in Pey in order to provide improved strength, heat resistance and excellent recyclability as taught or suggested by WO2019189092.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 7/13/26 have been carefully considered but are deemed unpersuasive.
Applicant argues, “Independent claim 1 requires, among other things, a laminated body including an innermost sealant layer formed of a polyethylene-based resin, a base material layer formed of a polyethylene-based resin, and an outermost heat-resistant layer formed on an outer surface of the base material layer, wherein a proportion occupied by a thickness of the innermost sealant layer with respect to a thickness of the laminated body is 60% or more. Pey discloses a multilayer film comprising an MDO substrate and a sealant, with the MDO substrate and sealant configured to provide recyclability, tensile performance, and drop-test performance in stand-up pouch applications. See Pey, 11 [0003]-[0005], [0009], [0011], [0095]-[0099], [0101]-[0102], Tables 1-3. However, Pey does not disclose the claimed outermost heat-resistant layer formed on an outer surface of the base material layer. Instead, Pey addresses sticking during heat sealing by using a PTFE coated fabric one-sided adhesive tape with liner attached to the sealing bar. See Pey, 11 [0009], [0120]. Thus, Pey's solution is not to modify the laminate itself with an outermost heat-resistant layer, but to use a particular sealing-bar interface during processing.
JP'160 does not cure this deficiency in a manner that would render claim 1 obvious. JP' 160 is directed to a different heat-weldable film architecture designed to produce fragile and firm welds depending on welding conditions. Its film structure is built around a weld layer (A), an adjacent/base layer (B), and an outermost layer (C), with the ratio of the thickness of layer (B) to layer (A) required to be 3:1 or more, preferably 3:1 to 5:1, and more preferably about 4:1 to 4.5:1. JP'160 further explains that firm weld behavior depends on layer (B) flowing or being squeezed out relative to layer (A) during welding, thereby blunting the weld edge and preventing failure initiation in layer (A).
That teaching is incompatible with the architecture of claim 1 when applied to Pey. Pey's exemplified and preferred laminate architecture is sealant-dominant. In Pey's exemplary embodiment, the thickness ratio between the substrate and the sealant is about 1:5 to about 1:6. See Pey, " [0095], [0099], claim 15. JP' 160, by contrast, requires the adjacent/base layer (B) to dominate the weld layer (A) by at least 3:1 for its weld mechanism to operate. A person of ordinary skill would not have taken only JP' 160's outermost layer concept and grafted it onto Pey while ignoring JP' 160's required B:A thickness relationship and weld mechanics. Nor would that person have replaced Pey's PTFE sealing-bar solution with a laminate-carried outer heat-resistant layer absent hindsight from Applicant's claims.”
However, the prior need not solve the same problem as applicant (MPEP 2144 (IV)). Moreover, Pey discloses outer sealant layer (paragraph [0087]) and that the multilayer film may further comprise additional layers such as polyamides etc. (paragraphs [0089-0095]). Pey is the primary reference and the thickness ratios of JP’160 are not relied upon for the rejection. Furthermore, JP’160 specifically discloses that the heat resistant layer may be added as a coating or a second film by using lamination (paragraph [0054]) which clearly suggest that the heat resistant layer (C) can be added to any multilayer structure despite layers A and B.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues, “The proposed combination is particularly deficient because Pey already identifies the specific way it avoids sealing-bar sticking: the PTFE coated fabric one-sided adhesive tape with liner attached to the sealing bar permits higher sealing temperature and helps produce smooth and flat seals. See Pey, " [0009], [0120]. Adding JP'160's outermost layer (C) to Pey's laminate would not be a predictable substitution for Pey's PTFE-tape solution. Instead, it would change the laminate structure that Pey tests and relies upon for tensile properties, drop-test performance, recyclability, and cost-effectiveness. See Pey, " [0101]-[0102], [0125]-[0127], Tables 1-3. Pey teaches that its benefits arise from the MDO substrate and polyethylene sealant design, not from a separate heat-resistant coating or outer film on the laminate. The rejection therefore does not identify a reason why the skilled artisan would have been motivated to modify Pey's laminate surface with JP'160's layer (C), especially where Pey solves the alleged processing problem externally at the sealing bar.”
However, the prior need not solve the same problem as applicant (MPEP 2144 (IV)) and Pey discloses outer sealant layer (paragraph [0087]) and that the multilayer film may further comprise additional layers such as polyamides etc. (paragraphs [0089-0095]). JP’160 specifically discloses that the outer heat resistant layer (C) offers high heat resistance (paragraph [0056]) which provides sufficient motivation to modify Pey with JP’160.
Applicant argues, “Further, JP' 160's outermost layer (C) is not a free-standing generic heat-resistant add-on divorced from the rest of the reference. JP'160 teaches layer (C) as part of its A/B/C heat-weldable structure, where layer (A) is a PBPE/LDPE weld layer, layer (B) is engineered to flow more readily than layer (A), and layer (B) must be at least three times thicker than layer (A). The reference's examples confirm that the 4:1 backing/sealant structures achieve the desired fixed-weld strengths, while lower-B configurations such as 3:2 structures provide inconsistent and materially weaker peel strength. Thus, if JP'160 is applied faithfully, it leads away from a sealant-majority laminate such as Pey's substrate sealant 1:5 to 1:6 construction and away from Applicant's claimed architecture in which the innermost sealant layer occupies 60% or more of the laminated body thickness.”
However, JP’160 specifically discloses that the heat resistant layer may be added as a coating or a second film by using lamination (paragraph [0054]) which clearly suggest that the heat resistant layer (C) can be added to any multilayer structure despite layers A and B. Moreover, Pey is the primary reference and the thickness ratios of JP’160 are not relied upon for the rejection.
Applicant argues “The rejection also fails because the asserted modification would undermine Pey's stated recyclability objective. Pey explains that conventional stand-up pouch laminates often include PET, BOPP, or BOPA substrates and that replacing such structures with a polyethylene-based MDO substrate and polyethylene sealant improves recyclability and cost effectiveness. See Pey, [0005], [0009], [0102]. JP'160's outermost layer (C), however, is broadly taught as a high-melting material such as PET, polyamide, propylene homopolymer, aluminum foil, or a high heat-resistant varnish or lacquer. The rejection does not explain why a person of ordinary skill seeking Pey's polyethylene-based recyclability would add JP'160's outermost layer to Pey's laminate, particularly where Pey expressly avoids conventional non-polyethylene substrates and solves sealing-bar sticking without such an added laminate layer. A conclusory statement that the modification would improve heat resistance or sealing does not provide the required rational underpinning where the primary reference already provides a different solution and the secondary reference's layer is tied to a different weld mechanism.”
However, Pey discloses outer sealant layer (paragraph [0087]) and that the multilayer film may further comprise additional layers such as polyamides etc. (paragraphs [0089-0095]) which clearly suggests that a polyamide layer would not destroy Pey’s recyclability objective. JP’160 specifically discloses that the outer heat resistant layer (C) offers high heat resistance (paragraph [0056]) which provides sufficient motivation to modify Pey with JP’160 and such a motivation is not a conclusory statement.
Applicant argues, “The cited combination fails to teach or suggest the amended claim 1. Pey does not disclose a laminate-carried heat-resistant layer formed of the newly recited material classes and having the claimed 0.2 to 10 µm thickness. Pey identifies a problem with sealing-bar sticking, explaining that it had been difficult to achieve smooth and flat seals made of polyethylene laminates without having the sealing bar stick to the laminate surface, even with conventional PTFE tape. Pey, paragraph [0005]. But Pey's solution to that equipment-interface problem is not to form a heat-resistant layer on the laminate. Instead, Pey states that a "polytetrafluoroethylene (PTFE) coated fabric one-sided adhesive tape with liner," when attached to the sealing bar, improves smooth and flat seals and productivity. Pey, paragraph [0009]. Pey repeats the same solution in paragraph [0120], stating that the seal is preferably formed by attaching the PTFE coated fabric one-sided adhesive tape with liner to the sealing bar. Pey's claims likewise recite that the seal is formed using a polytetrafluoroethylene coated fabric one-sided adhesive tape with liner. Thus, Pey solves sticking at the sealing equipment, not by modifying the laminated body to include an outermost heat-resistant layer. Pey therefore does not teach or suggest the amended claim's heat-resistant layer, much less a heat-resistant layer formed of an inorganic compound, a metal-containing organic compound, or a varnish containing one of the specifically recited resins and having a thickness of 0.2 to 10 µm.
JP'160's disclosure of outermost layer (C) also does not teach the specific amended heat-resistant-layer limitations. JP'160 generally describes outermost layer (C) as a material having a melting point greater than 140°C and identifies examples such as PET, polyamide, propylene homopolymer, and aluminum foil. JP'160 also states that layer (C) may be added as paint, such as high heat-resistant varnish or lacquer. But JP'160's examples use a 12 µm PET film laminated to the coextruded structure through a polyurethane adhesive layer, forming an A/B/C film structure with a total thickness of 82 µm. JP'160 further describes outermost layer (C) as having a thickness of 5 to 40 µm. These disclosures do not teach the amended combination of a sealant-majority polyethylene laminated body and a 0.2 to 10 µm heat-resistant layer formed of the particular inorganic, metal-containing organic, or listed resin-containing varnish materials now recited in claim 1.”
However, the prior need not solve the same problem as applicant (MPEP 2144 (IV)). Moreover, Pey discloses outer sealant layer (paragraph [0087]) and that the multilayer film may further comprise additional layers such as polyamides etc. (paragraphs [0089-0095]). Pey is the primary reference and the thickness ratios of JP’160 are not relied upon for the rejection. Furthermore, JP’160 specifically discloses that the heat resistant layer may be added as a coating or a second film by using lamination (paragraph [0054]) which clearly suggest that the heat resistant layer (C) can be added to any multilayer structure despite layers A and B. JP’160 discloses that the heat resistant layer (C) can by a polyamide or polypropylene or aluminum, etc., a thickness range of 5 to 40 microns which clearly overlaps applicant’s claimed range of 0.2 to 10 microns (paragraphs [0053-0058], [0071]).
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 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 MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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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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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
July 26, 2026
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