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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 January 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites the limitation “wherein the water-dispersible resin binder comprises at least one selected from the group consisting of a styrene/butadiene copolymer and an ethylene-(meth)acrylic acid copolymer, and a content of the styrene/butadiene copolymer and the ethylene-(meth)acrylic acid copolymer in the heat sealable layer is…” in lines 2-5. However, the instant claim 1, from which claim 13 depends, states that the water dispersible resin binder comprises styrene/butadiene copolymer or ethylene-acrylic acid copolymer. It is unclear then how the water dispersible resin may comprise ethylene-(meth)acrylic acid copolymer. It is unclear if the water-dispersible resin comprises multiple copolymers such as ethylene-acrylic acid copolymer and ethylene-(meth)acrylic acid copolymer, or if the ethylene-(meth)acrylic acid copolymer is meant to be an ethylene-acrylic acid copolymer. For purposes of examination, claim 13 is interpreted as instead reciting “wherein the water-dispersible resin binder comprises at least one selected from the group consisting of a styrene/butadiene copolymer and an ethylene-acrylic acid copolymer, and a content of the styrene/butadiene copolymer and the ethylene-acrylic acid copolymer in the heat sealable layer is…” as supported by Applicant’s remarks and amendments to claim 1, as well as the instant specification Par. 0036.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites the limitation “a basis weight of the paper substrate is 50 g/m2 or more and 150 g/m2 or less” in lines 1-2. However, claim 1, from which claim 10 depends, recites a basis weight range of 50-100 g/m2. Claim 10 thus includes values outside of the range of claim 1 (from above 100 to 150 g/m2). Therefore, claim 10 does not include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 6-15 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 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 50-100 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 12. 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 12. 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 claims 1 and 10. 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 9.
Melton is silent regarding the heat-sealable layer comprising a lubricant.
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).
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.
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 6, modified Melton 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.
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 9, modified 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 2 g/m2 or more and 20 g/m2 or less and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 10, modified Melton teaches a basis weight of the paper substrate is 40-300 lbs/3000ft2 (65-488 g/m2) (Melton, Par. 0030), which overlaps the claimed range of 50 g/m2 or more and 150 g/m2 or less and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
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 12, modified Melton teaches the heat-sealable layer comprises only the 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.
Regarding claim 13, modified Melton teaches the water-dispersible binder comprises a styrene/butadiene copolymer (Melton, Par. 0035 and 0044). Melton teaches the heat-sealable layer comprises only the 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.
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 21 January 2026 have been fully considered.
On pages 5-6 of the remarks, Applicant first argues that Melton does not describe the problem to be solved by the invention as Melton is drawn to cups whereas the instant invention is drawn to packaging that encloses an object. This is not found persuasive for the following reasons:
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a packaging that fully encloses an object) are not recited in the rejected claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, in regards to claim 8 which claims a packaging bag, secondary reference Meguro teaches that it would have been obvious to one of ordinary skill in the art to form a packaging bag out of the material of modified Melton as stated above. Applicant has not addressed or noted any error in regards to the combination of Melton and Meguro for the instant claim 8.
For the reasons stated above, modified Melton renders obvious the instant claim 1 and Applicant’s argument is unpersuasive.
Secondly, on pages 6-7 of the remarks, Applicant argues that Melton teaches a basis weight of 185 lbs/3000ft2 (301 g/m2) and thus does not teach the claimed basis weight. This is not found persuasive for the following reason:
Melton teaches the paper has a basis weight of 40-300 lbs/3000ft2 (65-488 g/m2) (Melton, Par. 0030), which overlaps the claimed range of 50 g/m2 or more and 100 g/m2 or less and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. While Melton teaches an example utilizing 185 lbs/3000ft2, this is a specific example. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). The specific example of 185 lbs/3000ft2 does not teach away from the broad disclosure of Melton which teaches a basis weight that renders obvious the claimed range as stated above. Therefore, Melton renders obvious the claimed basis weight and Applicant’s argument is unpersuasive.
Thirdly, on pages 7-8 of the remarks, Applicant argues that modified Melton does not teach the specific combination of water-dispersible resin and lubricant. This is not found persuasive for the following reason:
Modified Melton teaches the water-dispersible resin binder may comprise a styrene/butadiene copolymer or an ethylene-acrylic acid copolymer (Melton, Par. 0035 and 0044) and the lubricant may comprises a paraffin or carnauba wax (Triclot, Par. 0066). 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. While modified Melton teaches other water-dispersible resin binders and lubricants, this does not teach away from the broad disclosure which teaches the above stated embodiments. It is further noted that when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716, see MPEP 2131.02. Therefore, modified Melton teaches the combinations of water-dispersible resin binder and lubricant and Applicant’s argument is unpersuasive.
Fourthly, on page 8 of the remarks, Applicant argues that the claimed invention is excellent in heat sealing property and recyclability and is capable of enclosing the object even immediately after the bag making process. 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 only utilize paper with a basis weight of 70-100 g/m2 whereas the instant claims broadly recite a range of 50-100 g/m2. Furthermore, 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 does not claim an amount of water-dispersible resin binder. The inventive examples only utilize a 1-25 parts by mass of the lubricant whereas the instant claim 1 does not claim an amount of lubricant. The inventive examples only utilize an amount of heat seal layer applied of 4-12 g/m2 whereas the instant claim 1 does not claim an amount of heat seal layer in this way. Further, the data provided does not indicate the thickness of the heat seal layer whereas the instant claim 1 claims a heat seal layer 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
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/THOMAS J KESSLER/Examiner, Art Unit 1782