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 .
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 4-10 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over (USPub20200071515).
Regarding claim 1: Kouno teaches a gas barrier laminated material having a vapor phase deposited inorganic layer 12 (A), a cured resin layer 2 (B) wherein the layers are laminated (0133, Figures).
The inorganic layer 12 (A) is formed from SI, Al, Mg, Ca, Zn, etc or oxides, carbides, nitrides and oxynitrides thereof (0052). Given the above language, one skilled in the art would conclude Kouno to be anticipating with sufficient specificity zinc oxide or calcium oxide, or alternatively, at the very least render the claimed materials obvious.
The cured resin layer 2 (B) can be formed form a carboxyl compound (see for instance the abstract).
Regarding claim 4: Note that the limitations that layer (A) is formed by vapor phase formation method as in claim 1 and physical vapor deposition as in claim 4 are product by process limitations and it has been held by the courts 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. Specifically, patentability of a product does not depend on its method of production and 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 may be made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the art does teach the claimed product and as such, the claims are considered met. However, it is noted for the record that ‘515 does in fact teach that their vapor phase layer above can be formed by PVD (0054).
Regarding claim 5 and 8 The carboxyl compound can be as claimed (see for instance, 0078-0097).
Regarding claim 6: The material further has a resin substrate layer (0049).
Regarding claim 7: ‘515 also teaches packaging material comprising their laminate (0002, 0040, 0155).
Regarding claim 9: The layer (A) can have a thickness of 5-100nm (0053) and layer (B) can have a thickness of 0.1-3.5micron (100-3500nm) (0130) (MPEP 2144.05).
Regarding claim 10: The layer (B) compound can be at a content as claimed (see 0123-0127).
Claim(s) 1, 4-10 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over (USPub20170341352).
Regarding claim 1: Kidokoro teaches a gas barrier laminated material having a vapor phase deposited inorganic layer 102 (A), a polycarboxylic acid layer 103 (B) wherein the layers are laminated (abstract, 0126-0127, 0134 Figure 2).
The inorganic layer 102 (A) is formed from Mg, Ca, Zn, etc or oxides, nitrides, etc. thereof (0127). Given the above language, one skilled in the art would conclude ‘352 to be anticipating with sufficient specificity zinc oxide or calcium oxide, or alternatively, at the very least render the claimed materials obvious.
Regarding claim 4: Note that the limitations that layer (A) is formed by vapor phase formation method as in claim 1 and physical vapor deposition as in claim 4 are product by process limitations and it has been held by the courts 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. Specifically, patentability of a product does not depend on its method of production and 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 may be made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the art does teach the claimed product and as such, the claims are considered met. However, it is noted for the record that ‘352 does in fact teach that their vapor phase layer above can be formed by PVD (0134).
Regarding claim 5 and 8 The carboxyl compound can be as claimed (see for instance, abstract, 0079-0084).
Regarding claim 6: The material further has a resin substrate layer (0136-0139).
Regarding claim 7: ‘’352 also teaches packaging material comprising their laminate (0162).
Regarding claim 9: The layer (A) can have a thickness of 1-500nm (0132) and layer (B) can have a thickness of 0.1-1micron (100-1000nm) (0115) (MPEP 2144.05).
Regarding claim 10: The layer (B) compound can be at a content as claimed (see 0076-0083, Examples).
Claim(s) 1, 4-10 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over (USPub20180126696).
Regarding claim 1: Suzuki teaches a gas barrier laminated material having a vapor phase deposited inorganic layer 102 (A), a polycarboxylic acid layer 103 (B) wherein the layers are laminated (abstract, 0107-0109, 0124, Figures).
The inorganic layer 102 (A) is formed from Mg, Ca, Zn, etc or oxides, nitrides, etc. thereof (0107-0109). Given the above language, one skilled in the art would conclude ‘696 to be anticipating with sufficient specificity zinc oxide or calcium oxide, or alternatively, at the very least render the claimed materials obvious.
Regarding claim 4: Note that the limitations that layer (A) is formed by vapor phase formation method as in claim 1 and physical vapor deposition as in claim 4 are product by process limitations and it has been held by the courts 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. Specifically, patentability of a product does not depend on its method of production and 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 may be made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the art does teach the claimed product and as such, the claims are considered met. However, it is noted for the record that ‘696 does in fact teach that their vapor phase layer above can be formed by PVD (012carbon4).
Regarding claim 5 and 8 The carboxyl compound can be as claimed (see for instance, abstract, 0065-0069).
Regarding claim 6: The material further has a resin substrate layer (0126-0129).
Regarding claim 7: ‘’696 also teaches packaging material comprising their laminate (0187).
Regarding claim 9: The layer (A) can have a thickness of 1-100nm (0122) and layer (B) can have a thickness of 0.01-0.45micron (10-450nm) (00033).
Regarding claim 10: The layer (B) compound can be at a content as claimed (see 0062-0064, 0082-0083 Examples).
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, 4-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamura et al. (WO2019142923 and corresponding English document USPub20200331024, note that citations in the present rejection are that of the English document) in view of any one of USPub20200071515, USPub20180126696 or USPub20170341352.
Regarding claims 1, 5 and 6: Okamura teaches the following gas barrier laminated material (see entire document).
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Okamura’s inorganic vapor deposition layer (A) provides gas barrier properties, is formed from inorganic oxides and Okamura lists examples of such oxides being aluminum oxide, silicon oxide, magnesium oxide, and tin oxide (0046).
While Okamura may not list calcium or zinc oxides in their disclosed listing, it is initially noted that Okamura’s Example listing is not taken to be limiting but instead, simply a listing of examples of possible inorganic materials that can be used. As such, it would be well within the skill in the art to look to the prior art to choose other materials used for the same purpose if desired. In the instant case, note that Okamura’s layer (A) is a vapor deposition inorganic layer providing gas barrier properties in a packing material.
As, USPub20200071515, USPub20180126696, and USPub20170341352, who each similarly teach an inorganic layer which can be vapor deposited and provide gas barrier properties in a packing material, disclose that such an inorganic layer providing the above properties can be formed with Si, Al, Mg, Ca, Zn, Sn, etc. or oxides thereof (see 0052 in ‘515; 0107-0109, 0124 in ‘696 and 0126-0127, 0134 in ‘352), it would have been obvious to one having ordinary skill at the time of invention to modify Okamura to include their inorganic vapor deposition layer (A) being formed of Si, Al, Mg, Ca, Zn, Sn, etc. or oxides thereof for gas barrier properties.
Note that substituting equivalents known for the same purpose (MPEP 2144.06, II) and the selection of a known material based on its suitability for its intended use (MPEP 2144.07) has been held by the courts to be prima facie obvious.
Regarding claim 4: Note that the limitations that layer (A) is formed by vapor phase formation method as in claim 1 and physical vapor deposition as in claim 4 are product by process limitations and it has been held by the courts 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. Specifically, patentability of a product does not depend on its method of production and 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 may be made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, Okamura does teach the claimed product and as such, the claims are considered met. However, it is noted for the record that Okamura does in fact teach that their vapor phase layer 3 above can be formed by PVD (0047).
Regarding claim 7: Okamura does teach that a packaging material can comprise their gas barrier laminated material above (see 0080).
Regarding claim 8: Okamura’s layer (B) is formed from a polycarboxylic acid (see 0018, 0049-0050, 0122).
Regarding claim 9: The layer (A) can have a thickness of 5-100nm (0046) and layer (B) can have a thickness of 0.04-1.2micron (40-1200nm) (0048) (MPEP 2144.05).
Regarding claim 10: The layer (B) is formed of a polycarboxylic acid polymer compound and a silicon-containing compound with the polycarboxylic compound to silicon compound forming a solid content wt ratio of 99.5/0.5 to 80/20 (0018).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of new grounds of rejection.
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 LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/ Primary Examiner, Art Unit 1784
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