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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 7-8, 11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Melton et al. (US 20190329929 A1) (previously cited) in view of Triclot et al. (US 20200131708 A1) (previously cited), and Meguro et al. (JP 6580291 B1; herein English machine translation used for all citations) (previously cited).
Regarding claim 1, Melton teaches a heat-sealable paper comprising at least one heat-sealable layer on at least one surface of a paper substrate, wherein the heat-sealable layer (heat-sealable barrier coating) comprises a water-dispersible resin binder such as a styrene/butadiene copolymer or an ethylene acrylic acid copolymer (Melton, Abstract, Par. 0002, 0008-0010, 0034-0035, and 0044). Melton teaches the heat-sealable layer comprises only a pigment and the binder in a 1:2 to 9:1 ratio (Melton, Par. 0044), and thus teaches embodiments wherein a content of the water-dispersible resin binder in the heat-sealable layer is 50 mass%, which lies within the claimed range of 30 mass% or more and 99 mass% or less. Therefore, Melton teaches a content of the binder in the heat seal layer that renders obvious the claimed range, see MPEP 2144.05, I. Melton teaches a coating amount of the heat-sealable layer is 2-20 lbs/3000ft2 (3.2-32.5 g/m2) including 8 to 12 lbs/3000ft2 (13.0-19.5 g/m2) (Melton, Par. 0043), which lies within the claimed range of 4 g/m2 or more and 15 g/m2 or less and therefore satisfies the claimed range, see MPEP 2131.03. Melton teaches the paper substrate has a basis weight of 40 to 300 pounds per 3000 ft2 (65-488 g/m2) (Melton, Par. 0030), which overlaps the claimed range of 70-100 g/m2 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Melton teaches the paper substrate has a thickness of 0.004 inches to 0.030 inches (101.6-762 µm) (Melton, Par. 0031), which overlaps the claimed range of 20-160 µm and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Melton teaches the heat-sealable paper has a pulp recovery rate after re-disintegration (See repulpability) of 85% or more (Melton, Par. 0063), which is the same as the claimed range and therefore satisfies the claimed range, see MPEP 2131.03.
Melton teaches the binder is a styrene/butadiene copolymer or an ethylene acrylic acid copolymer (Melton, Par. 0034-0035 and 0044), which is the same as the instant invention per the instant claims 1. Melton teaches examples of the binder with a glass transition temperature of 30°C (Melton, Table 2), which lies within the range of the instant invention of 5-100°C per the instant claim 2. While this teaching is a specific example, in the absence of a general teaching of glass transition temperature, it would have been obvious to one of ordinary skill in the art to look towards the examples as guidance and utilize a binder with a glass transition temperature within the claimed range. Melton teaches the heat-sealable layer comprises a pigment that can be calcium carbonate (Melton, Par. 0038 and 0044), which is the same as the instant invention per the instant specification Par. 0053. Melton teaches the pigment has an aspect ratio of at least 40 (Melton, Par. 0037), which lies within the range of the instant invention of 20 or more to 10,000 or less per the instant specification Par. 0048-0049. Melton teaches the pigment can have an average size of less than 2 microns (Melton, Par. 0038), which overlaps the range of the instant invention per the instant specification Par. 0049-0052. Melton teaches the pigment is present in a weight ratio of binder to pigment of 1:2 to 9:1, which includes a 1:1 ratio (Melton, Par. 0044), which would result in an amount of pigment of 100 parts per mass with respect to 100 parts by mass of binder, which lies within the range of the instant invention per the instant specification Par. 0057. This further results in a heat-sealable layer that comprises only pigment and binder in a 1:1 weight ratio, and thus comprises 50 wt.% binder, which lies within the range of the instant invention per the instant claim 1. Therefore, Melton teaches an amount of pigment and binder that render obvious the range of the instant invention per the instant specification Par. 0057 and the instant claim 1. Melton teaches the paper has a basis weight of 40-300 lbs/3000ft2 (65-488 g/m2) (Melton, Par. 0030), which overlaps the range of the instant invention per the instant claim 1. Melton teaches the heat-seal layer is coated in an amount of 2-20 lbs/3000ft2 (3.2-32.5 g/m2) including 8 to 12 lbs/3000ft2 (13.0-19.5 g/m2) (Melton, Par. 0043), which lies within the range of the instant invention per the instant claim 1.
Melton is silent regarding the heat-sealable layer comprising a lubricant wherein a content of the lubricant in the heat-sealable layer is 0.5 mass% or more and 30 mass% or less, and a content of the lubricant is 1 parts by mass or more and 25 parts by mass or less, with respect to 100 parts by mass of the water-dispersible resin binder.
Triclot teaches a heat-sealable paper comprising a paper substrate and a heat-sealable layer wherein the heat-sealable layer comprises a lubricant that is a paraffin or carnauba wax (Triclot, Abstract, Par. 0002, 0032-0035, 0038, and 0066). Triclot teaches a content of the lubricant is from 2 to 25 wt.% (Triclot, Par. 0068), which lies within the claimed range of 0.5 mass% or more and 30 mass% or less and therefore satisfies the claimed range, see MPEP 2131.03.
Melton and Triclot are analogous art as they both teach heat-sealable papers comprising a paper substrate with a heat-sealable layer coated thereon. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the wax of Triclot in the heat-sealable layer of Melton. This would allow for improved heat-sealing and barrier properties (Triclot, Par. 0063 and 0066).
Furthermore, this results in embodiments wherein the water-dispersible resin binder comprises styrene/butadiene copolymer and the lubricant comprises paraffin wax, and embodiments wherein the water-dispersible resin binder comprises ethylene-acrylic acid copolymer and the lubricant comprises carnauba wax, satisfying the claimed limitation. Further, using an amount of lubricant of 2-25 wt.% and an amount of water-dispersible resin binder of 50 wt.% as stated above, this results in a content of lubricant that is 4-50 parts by mass with respect to 100 parts by mass of the water-dispersible resin binder, which overlaps the claimed range of 1 part by mass or more and 25 parts by mass or less and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Melton is silent regarding a hot tack peeling distance of 150 mm or less and a heat sealing peel strength of 2 N/15 mm or more when two such heat-sealable layers are heat-sealed to each other under conditions of 150°C, 0.2 MPa, and one second.
Meguro teaches a heat-sealable paper comprising a paper substrate and a heat-sealable layer comprising an ethylene acrylic acid copolymer and a pigment, wherein the heat-sealable paper is super-calendared (Meguro, Par. 0001-0002, 0004, 0006-0010, and 0021-0022).
Modified Melton and Meguro are analogous art as they both teach heat-sealable papers comprising a paper substrate and a heat-sealable layer comprising an ethylene acrylic acid and a pigment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have super-calendared the heat-sealable paper of modified Melton. This would allow for a smooth paper substrate (Meguro, Par. 0022).
Regarding the peeling distance and seal peel strength, modified Melton teaches a heat-sealable paper that is identical or substantially identical to the claimed invention. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Modified Melton teaches a paper substrate with the same basis weight as the instant invention as stated above. Modified Melton teaches a heat-seal layer in the same coating amount as the instant invention as stated above. Modified Melton teaches the heat-seal layer comprises the same lubricant and same binder with the same glass transition temperature in the same amount as the instant invention as stated above. Modified Melton teaches the heat-seal layer comprises a pigment that is the same as the instant invention, with the same size, aspect ratio, and amount as stated above. Modified Melton teaches the heat-sealable paper is super calendared as stated above. Meanwhile, the instant specification Par. 0035-0036, 0039, 0057-0058, 0062, and 0085 state that the hot tack peeling distance is affected by the binder used, the glass transition temperature of the binder, the content of the pigment, and from super calendaring. Further, the instant specification Par. 0040, 0048, 0052, 0061, and 0085 states that the heat sealing peel strength is affected by the content of the binder, the pigment aspect ratio, the pigment size, the glass transition temperature of the pigment, and from super calendaring. Modified Melton thus teaches a heat-sealable paper that is identical or substantially identical to the claimed invention. Therefore, absent objective evidence to the contrary, the heat-sealable paper of modified Melton would have inherently exhibited the claimed hot tack peeling distance and seal peel strength, see MPEP 2112.01.
Regarding claim 2, modified Melton teaches examples of the binder with a glass transition temperature of 30°C (Melton, Table 2), which lies within the claimed range of 5-100°C, and therefore satisfies the claimed range, see MPEP 2131.03. While this teaching is a specific example, in the absence of a general teaching of glass transition temperature, it would have been obvious to one of ordinary skill in the art to look towards the examples as guidance and utilize a binder with a glass transition temperature within the claimed range.
Regarding claim 7, modified Melton teaches a heat-sealable paper that is identical or substantially identical to the claimed heat-sealable paper as stated above for claim 1. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Modified Melton teaches the heat seal layer is identical to the claimed heat seal layer, with the same pigment aspect ratio and that has been subject to super calendaring as stated above for claim 1. Meanwhile, the instant specification Par. 0048 and 0067 indicates that the Oken smoothness occurs from the pigment aspect ratio and from super calendaring. Modified Melton thus teaches a heat-sealable paper that is identical or substantially identical to the claimed invention. Therefore, absent objective evidence to the contrary, the heat-sealable paper of modified Melton would have inherently exhibited the claimed Oken smoothness, see MPEP 2112.01.
Regarding claim 8, modified Melton teaches a packaging material formed from the heat-sealable paper (Melton, Par. 0003). Modified Melton is silent regarding a packaging bag.
Meguro teaches a packaging bag formed from a heat-sealable paper that comprises a paper substrate and a heat-seal layer comprising an ethylene acrylic acid copolymer and a pigment (Meguro, Par. 0001-0002, 0004, 0006-0010, and 0014).
Modified Melton and Meguro are analogous art as they both teach packaging materials formed from a heat-sealable paper that comprises a paper substrate and a heat-seal layer comprising an ethylene acrylic acid copolymer and a pigment. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed a bag using the packaging material of modified Melton. This would allow for a flexible packaging material with heat sealability and barrier properties (Meguro, Par. 0002, 0004, 0014; Melton, Abstract and Par. 0022).
Regarding claim 11, modified Melton teaches the heat-sealable paper according to claim 8 that is formed into a flexible packaging such as a bag. A paper substrate formed into a flexible packaging such as a bag would be flexible and thus be extensible to at least some extent, thus satisfying the claimed limitation.
Regarding claim 14, modified Melton teaches the water-dispersible resin binder comprises a styrene/butadiene copolymer (Melton, Par. 0035 and 0044) and the lubricant comprises a paraffin wax (Triclot, Par. 0066).
Regarding claim 15, modified Melton teaches the water-dispersible resin binder comprises an ethylene-acrylic acid copolymer (Melton, Par. 0035 and 0044) and the lubricant comprises a carnauba wax (Triclot, Par. 0066).
Response to Arguments
Applicant’s remarks and amendments filed 06 May 2026 have been fully considered.
Applicant requests withdrawal of the rejections under 35 USC § 112 set forth in the previous office action.
The rejections under 35 USC § 112 set forth in the previous office action have been withdrawn due to the present claim amendments.
Regarding arguments directed to the rejections over prior art, on page 6 of the remarks, Applicant first argues that there is not motivation to combine Melton with Triclot. This is not found persuasive for the following reason:
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Triclot provides motivation for the combination such as allowing for improved heat-sealing and barrier properties (Triclot, Par. 0063 and 0066). Therefore, Triclot provides motivation for the combination and Applicant’s argument is unpersuasive.
Secondly, on page 7 of the remarks, Applicant argues that hot tack peeling distance is affected by multiple factors and thus one of ordinary skill in the art would not have predicted or achieved the hot tack peeing distance and peel strength of claim 1. This is not found persuasive for the following reasons:
Modified Melton teaches a heat sealable paper that is identical or substantially identical to the claimed invention as stated above for claim 1. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Modified Melton teaches an identical or substantially identical paper substrate and heat seal layer comprising the same materials in the same amounts as the instant invention as stated above for claim 1. While Applicant states that multiple factors affect the properties, modified Melton teaches the same invention including the multiple factors discussed above for claim 1. Therefore, absent objective evidence to the contrary, the heat sealable paper of modified Melton would have inherently exhibited the claimed properties. Applicant has not provided any objective evidence showing that the heat sealable layer of modified Melton would not exhibit the claimed hot tack peeling distance. Therefore, Applicant’s argument is unpersuasive.
Thirdly, on page 7 of the remarks, Applicant argues that the prior art references are directed to materially different coating systems. This is not found persuasive for the following reasons:
Melton, Triclot, and Meguro are all analogous art as they all teach heat-sealable papers comprising a paper substrate with a heat-sealable layer coated thereon as discussed above for claim 1. Triclot renders obvious including a wax in the heat seal layer, motivated by allowing for improved heat-sealing and barrier properties as discussed above for claim 1 (Triclot, Par. 0063 and 0066). Meguro renders obvious super-calendaring the heat-sealable paper, motivated by allowing for a smooth paper substrate (Meguro, Par. 0022). Nothing in Melton, Triclot, or Meguro indicate that the modifications could not be made to Melton, or would have rendered Melton unsuitable for its intended purpose. Therefore, Melton in view of Triclot and Meguro render obvious the instant claim 1 and Applicant’s argument is unpersuasive.
Fourthly, on page 8 of the remarks, Applicant argues that the heat-sealable paper of the present invention is excellent in heat sealing property and recyclability and is capable of enclosing an object. This is not found persuasive for the following reasons:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d). The nonobviousness of a broader claimed range [or genus] can be supported by evidence based on unexpected results from testing a narrower range [or species] if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979). See MPEP 716.02(d), I. One of ordinary skill in the art would be unable to determine a trend based upon this limited data to reasonably extend the probative data to the much more broadly claimed features as discussed above. Therefore, the inventive and comparative examples are not commensurate in scope with the claimed invention in view of MPEP 716.02(d), I.
Also, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d), II.
Applying the required analysis noted above, it is clear that the data provided in the examples is not commensurate with the scope of the claims and does not show criticality in establishing unexpected results as follows. The inventive examples utilize paper with a basis weight of 70-100 g/m2, however the data does not provide any comparative examples outside of the claimed range. The inventive examples only utilize 42.85-98 parts by mass of the water-dispersible resin binder, whereas the instant claim 1 broadly recites a range of 30 mass% or more to 99 mass% or less. The inventive examples only utilize an amount of heat seal layer applied of 4-12 g/m2 whereas the instant claim 1 recites an amount of heat-sealable layer of 4-15 g/m2. Further, the data provided does not indicate the thickness of the paper substrate whereas the instant claim 1 claims a paper substrate thickness of 20-160 µm. One of ordinary skill in the art would not be able to reasonably conclude that all possible claimed ranges/ratios would necessarily yield the asserted superior and unexpected results.
In view of the foregoing, the data provided is not commensurate in scope with the instant claims as required by MPEP 716.02(d).
Furthermore, the data provided must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979), see MPEP 716.02(e). Applicant provides 2 comparative examples, one that utilizes ethylene-vinyl acetate as the water dispersible resin and one that utilizes styrene-acrylic as the water dispersible resin. However, the closest prior art of record is Melton which may utilize ethylene-acrylic acid copolymer or styrene/butadiene copolymer as the water dispersible resin as stated above for claim 1. The data thus does not compare the claimed invention to the closest prior art of record.
When all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. As such, Applicant’s argument that the instant invention has superior and unexpected results in unconvincing.
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 THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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