DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 02/17/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-3 and 11-14 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a polydimethylsiloxane-based active food-grade emulsion”. While there is support for a specific polydimethylsiloxane-based active food-grade emulsion such as TE-352 FG used in examples (see page 14, Table 1 of present specification), there is no support for broad disclosure of any polydimethylsiloxane-based active food-grade emulsion as presently claimed. This rejection affects all the dependent claims.
Claim 12 recites “a hydrophobically modified polyethylene oxide urethane”. While there appears to be support for a specific hydrophobically modified polyethylene oxide urethane such as ACRYSOL 2020E (see page 14, Table 1 of present specification), there is no support for broad disclosure of any hydrophobically modified polyethylene oxide urethane as presently claimed.
Claim 13 recites “an antifoaming agent”. While there is support for a specific anti-foaming agent such as TEGO Antifoam 4-94 (see page 14, Table 1 of present specification), there is no support for broad disclosure of any anti-foaming agent as presently claimed.
Claim 14 recites “butanol”. While there is support for a specific coating composition comprising butanol in a specific amount (see page 15, Table II of present specification), there is no support for broad disclosure of the coating composition comprising butanol as presently claimed.
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 1-3 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al. (US 2018/0079880 A1 cited in IDS) in view of Qu et al. (CN 105061665 A cited in IDS) and Dow I (Xiameter MEM-0024 Emulsion, 2017), taken in view of evidence by Dow II (Acrysol RM-8W, 2026). It is noted that the disclosures of Qu et al. are based on a machine translation of the reference (cited in IDS).
Regarding claims 1-3, Miyake et al. disclose a coated film and a package formed from the coated film, i.e. a coated film for packaging articles such as food packages (see Abstract and paragraph 0001). The coated film comprises a monolayer (film layer) comprising 70 to 100 wt% of polyethylene (recyclable polyolefin) and a coating (coating layer) comprising polyurethane on an outer surface of the monolayer (see Abstract). The polyurethane is prepared from polyol and isocyanate (see paragraph 0093). The coating can be a water-based coating (waterborne coating) and/or solvent-based coating (see paragraph 0097). The coating can contain additives such as lubricants, slip agents, etc. (see paragraph 0082). The coated film is thermally resistant under the sealing conditions over a temperature range of 80 to 180 °C and/or has a gloss of at least 70 units at 60° (see Abstract). Given that the coated film has gloss and given that polyethylene of the film layer is identical to the recyclable polyolefin utilized in the present invention, the coated film reads on a glossy coated film having recyclable properties for packaging articles.
Miyake et al. do not disclose the coating layer having a thermal seal resistance, an abrasion resistance, a glossy property and a recyclability property as presently claimed.
Qu et al. disclose a polyurethane coating prepared from the hydroxypolyacrylate emulsion (waterborne acrylic coating formulated with hydroxyl functionalized emulsion) and an aqueous polyisocyanate such as alkoxy-modified hexamethylene diisocyanate (water-dispersible aliphatic polyisocyanate or crosslinker) (see Abstract and paragraphs 0025, 0031). The polyurethane coating comprises a water, a defoamer (anti-foaming agent) and a urethane-based thickener (see paragraphs 0027, 0028, 0049). The polyurethane coating does not include additives such as inorganic pigment materials (see paragraphs 0025-0031). The polyurethane coating comprising hydroxypolyacrylate emulsion is cured by the polyisocyanate (see paragraph 0049). Therefore, the polyurethane coating reads on a waterborne acrylic coating cured with a water-dispersible aliphatic polyisocyanate. The polyurethane coating provides high gloss, high transparency, excellent water and chemical resistance, high crosslinking density, high hardness, scratch resistance and abrasion resistance (see paragraph 0032).
In light of motivation for using polyurethane coating disclosed by Qu et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the polyurethane coating of Qu et al. as the polyurethane coating in Miyake et al. in order to provide high gloss, high transparency, excellent water and chemical resistance, high crosslinking density, high hardness, scratch resistance and abrasion resistance to the coating layer, and thereby arrive at the claimed invention.
While Miyake et al. disclose that polyurethane coating can contain additives such as lubricants or slip agents, Miyake et al. in view of Qu et al. do not disclose polydimethylsiloxane-based active food-grade emulsion as slip agent.
Dow I discloses Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion as a mold release agent for food contact applications (food grade) (see page 1, Features and Benefits). Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion produces a slippery film upon water evaporation of the product (see page 1, Description). That is, Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion is a slip agent or a release agent. Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion contains 35% dimethylsiloxane fluid, i.e. 35% active food grade emulsion (see page 1, Composition).
In light of motivation for using Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion disclosed by Dow I as described above, it therefore would have been obvious to one of the ordinary skill in the art to use Xiameter MEM-0024 polydimethylsiloxane aqueous emulsion in the polyurethane coating of Miyake et al. in view of Qu et al. in order to impart a slip property or releasability, and thereby arrive at the claimed invention.
Accordingly, Miyake et al. in view of Qu et al. and Dow I disclose the glossy coated film having recyclability properties for packaging articles, wherein the glossy coated film comprises a film layer of a recyclable polyolefin (polyethylene) and a coating layer (polyurethane coating) as set forth above. Given that the polyurethane coating comprises hydroxyl functionalized emulsion, aliphatic polyisocyanate, water, urethane-based thickener and Xiameter MEM-0024 polydimethylsiloxane food grade emulsion as presently claimed, the polyurethane coating is identical to the polyurethane coating of the present invention. Therefore, the polyurethane coating of Miyake et al. in view of Qu et al. and Dow I would necessarily inherently have a thermal seal resistance, an abrasion resistance, a glossy property and a recyclability property as presently claimed.
Regarding claim 11, Miyake et al. in view of Qu et al. and Dow I disclose the glossy coated film as set forth above. Qu et al. disclose that the polyurethane coating does not include additives such as inorganic pigment materials (see paragraphs 0025-0031).
Regarding claim 12, Miyake et al. in view of Qu et al. and Dow I disclose the glossy coated film as set forth above. Qu et al. disclose that the polyurethane coating comprises the urethane thickener (see paragraph 0049). An example of the urethane thickener includes RM-8W (see paragraph 0028). As evidenced by Dow II, RM-8W is hydrophobically modified polyethylene oxide urethane (HEUR) rheology modifier (see page 1, Overview).
Regarding claim 13, Miyake et al. in view of Qu et al. and Dow I disclose the glossy coated film as set forth above. Qu et al. disclose the polyurethane coating comprises a defoamer (anti-foaming agent) (see paragraph 0027).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al. (US 2018/0079880 A1 cited in IDS) in view of Qu et al. (CN 105061665 A cited in IDS) and Dow I (Xiameter MEM-0024 Emulsion, 2017), taken in view of evidence by Dow II (Acrysol RM-8W, 2026) as applied to claim 13 above, further in view of Vogt-Birnbrich et al. (5,760,123).
Regarding claim 14, Miyake et al. in view of Qu et al. and Dow I disclose the glossy coated film as set forth above. While Miyake et al. disclose using water and/or solvent based polyurethane coating, Miyake et al. in view of Qu et al. and Dow I do not disclose water-based coating comprises butanol.
Vogt-Birnbrich et al. disclose an aqueous dispersion comprising polyurethane resin and water that is suitable as a coating composition (see Abstract). The coating composition can comprise solvents such as butanol (see col. 15, lines 59-63). The flow-out and viscosity of the coating composition can be influenced by the selection of solvent (see col. 16, lines 5-6).
In light of motivation for using butanol in the coating composition comprising aqueous dispersion of polyurethane resin disclosed by Vogt-Birnbrich et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use solvent including butanol in the water-based polyurethane coating of Miyake et al. in view of Qu et al. and Dow I depending on desired flow-out and viscosity of coating composition, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejection is withdrawn.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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