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 § 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2011/0223401 A1 (“Harlin”) as evidenced by U.S. 2022/0112663 A1 (“Boswell”), U.S. 2008/0107912 A1 (“Barcock), and U.S. 2018/0142418 A1 (“Sundholm”) and further in view of Boswell and as evidenced by U.S. 2019/0270288 A1 (“Dabadie”).
Claims 1-5 is alternatively rejected over Boswell in view of Harlin.
Considering claim 1, Harlin discloses a coated paper comprising a paper substrate, a precoating, and a layer of biodegradable or bio-derived polymer such as polyester and polyurethane, wherein the layer of biodegradable or bio-derived polymer forms a barrier layer upon which inorganic material is deposited and is applied at a coverage level of 1-60 g/m2. (Harlin ¶¶ 0039-0043). Harlin is analogous art, for it is directed to the same field of endeavor as that of the instant application (coated paper).
Harlin discloses usage of poly(hydroxyalkaonates) (“PHA”) and polylactic acid (a biodegradable polyester) as preferred materials. (Id. ¶¶ 0023 and 0067). Such material is known to be a water-suspendable polymer. (See Boswell ¶ 0101). Harlin discloses that the layer of biodegradable or bio-derived polymer is applied at a coverage level of 1-60 g/m2. (Harlin ¶ 0047). The coverage level of the barrier layer overlaps the claimed range of 0.1 to 5 g/m2. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Although Harlin does not expressly disclose the presence of a clay coat layer, it is noted that Harlin discloses that its precoating is applied to increase smoothness and possibly reduce thickness of the barrier layer, and that Harlin further states the precoating layer is widely known. In the art of coated paper, it is noted that it is well-known to use a clay-containing layer to effect greater smoothness, and this is taught in, inter alia, Boswell, Barcock, and Sundholm. (See, e.g. Boswell ¶ 0085, Barcock ¶¶ 0034-0037 and 0067, and Sundholm ¶¶ 0027 and 0050). The usage of a clay-containing precoating is thus considered to have been inherently disclosed or alternatively obvious. Harlin differs from the claimed invention, as it is silent regarding properties associated with its barrier layer.
However, it is known in the art of coated papers that the outermost layer of a coated paper on which an inorganic material is deposited should have 1) sufficiently low surface roughness and 2) sufficiently high surface energy in order to respectively improve quality of an inorganic film deposited thereupon and improve adhesion of deposited inorganic material to the outermost layer of the coated paper. (Boswell ¶¶ 0088, 0114, 0145, and 0435). Specifically, Boswell notes that its biodegradable primer layer, which is the layer onto which an inorganic material such as alumina is applied should be as flat as possible (in terms of low roughness) and have a high surface tension (effected via corona treatment) as to improve adhesion between the biodegradable primer layer and the inorganic material. (Id. ¶¶ 0114, 0145, and 0435). In particular, usage of corona treatment to increase surface tension as to aid adherence is a well-known technique in increasing adherence of a coating applied onto a polymeric film/coat, and this technique is not just limited to the specifics described in Boswell. (See e.g. Dabadie ¶ 0032). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have made the layer of biodegradable or bio-derived polymer as to possess low roughness and high surface tension, for improve adhesion to deposited inorganic material and improved quality of inorganic coating material.
Although specific values of roughness and surface tension are not taught in Boswell, it is noted that the general aims taught in Boswell for decreasing roughness and increasing surface tension are substantially similar to the reasons disclosed in the Instant Application. (Compare to Spec. ¶¶ 0009 and 0010). Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”; MPEP 2144.05 II.A.
Lastly, on the limitation of Cobb water absorption, Harlin’s polyester and polyurethane being similar to the polymers used in the Instant Application, in particular with the usage of polylactic acid. (Harlin ¶ 0067). The Instant Application also states that the water absorption value is adjusted by amount of coating applied and type of coating used. (Spec. ¶ 0060). Given the type of polyester used (polylactic acid) and its amount of usage are both substantially similar to what are used in the Instant Application, the water absorption property is considered to naturally flow from the reference as inherent or alternatively obvious.
Alternatively, Boswell as discussed above comprises a recycle paper layer 10 (that can receive a sizing treatment in the form of a clay-containing coating to reduce roughness), a biodegradable primer layer 30, and an inorganic barrier layer 40. (Boswell ¶¶ 0022, 0085, 0088, 0101, 0114, and 0145). The various properties such as low roughness, high surface tension, and water absorption are as discussed in ¶¶ 7-9 above. Although Boswell discloses application of primer in terms of thickness as opposed to areal mass, it is noted that application in the amount of 1-60 g/m2 is taught in Harlin, with Harlin further teaching that usage of a precoating (role of the sizing treatment in Boswell) allows the usage of less thick biopolymer coating. As such, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have applied biodegradable primer layer at the low range of 1-60 g/m2, in view of the teachings of Harlin. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular application parameter is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
Harlin in view of Boswell or alternatively Boswell in view of Harlin renders obvious claim1.
Considering claims 2 and 3, with Harlin’s polyester (PHA and PLA) being similar to the polymers used in the Instant Application, claims 2 and 3 are deemed obvious.
Considering claims 4 and 5, Harlin discloses that the entirety of coated substrate is fully recyclable and biodegradable. (Harlin ¶ 0031). The same is true of Boswell.
Claim 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Harlin and Boswell, as applied to claim 1 above, and further in view of U.S. 2019/0308786 A1 (“Okamoto”). Claims 9 and 10 are rejected further in view of Sundholm.
Considering claims 7 and 8, although Boswell teaches that kaolin is a well-known form of clay, it does not disclose size and aspect ratio of the kaolin particle used. (Boswell ¶ 0126). However, in the art of paper coatings that contain plate-shaped particles such as kaolin, it is known to use particles having aspect ratio of 10 or greater and average size of 5 µm or smaller, for the purpose of improved barrier properties. (Okamoto ¶ 0059). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have included kaolin of such dimensions for improved barrier properties.
Considering claims 9 and 10, precoating containing a clay and a styrene butadiene latex (by definition dispersed in water) is taught in Barcock and Sundholm. (Sundholm ¶ 0027).
Response to Arguments
In view of amendments to claim 1, all previously instated rejections have been withdrawn. New rejections have been instated above.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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