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 .
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 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.
Election/Restrictions
Applicant’s election of Group I, claims 1-7, 9-13 in the reply filed on 2/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Examiner’s Comment
Claim 1 recites “the average number of hydroxyl groups” in line 6 and “the average number of moles” in line 7. It appears that the claim should recite “an average number of hydroxyl groups” in line 6 and “an average number of moles” in line 7.
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.
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.
Claims 1, 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sheskey et al. (US Patent Application No. 2014/0201872) in view of Goerlach-Doht et al. (US Patent Application No. 2014/0018531).
Regarding claim 1, Sheskey et al. teach an aqueous solution (page 7, paragraphs [0061], [0062]) comprising a thermoplastic hydroxypropyl methylcellulose (HPMC) (page 1, paragraphs [0006], [0011], page 2, paragraph [0013]) in an amount of at least 30 percent which reads on Applicant’s claimed range of 10% to 60% (w/w) (page 1, paragraph [0006], page 2, paragraph [0013], page 7, paragraph [0060]) and wherein a viscosity of said HPMC is from 1.2 mPa·s to 1000 mPa·s determined as a 2% by weight solution in water at 20°C according to Ubbelohde which reads on Applicant’s claimed range of 2 mPa·s to 100 mPa·s (page 2, paragraphs [0014], [0015]).
Sheskey et al. fail to teach wherein said HPMC has a DS(methyl) of at least 1.0 and an MS(hydroxypropyl) of at least 0.6, wherein DS is the average number of hydroxyl groups substituted by methoxyl groups per anhydroglucose unit and MS is the average number of moles of hydroxyalkoxy groups per anhydroglucose units. However, Goerlach-Doht et al. teach a hydroxypropyl methylcellulose having a DS(methyl) of from 1.2 to 2.2 which reads on Applicant’s claimed range of at least 1.0, wherein DS is the average number of hydroxyl groups substituted by methoxyl groups per anhydroglucolse unit (page 2, paragraph [0012]) and MS(hydroxypropyl) of 0.02 to 2.0 which reads on Applicant’s claimed range of at least 0.6, wherein MS is the average number of moles of hydroxyalkoxy groups per anhydroglucose units (page 2, paragraph [0012]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to provide the HPMC DS(methyl) and MS(hydroxypropyl) of Goerlach-Doht et al. in the HPMC of Sheskey et al. in order to reduce the amount of water insoluble fibers (Goerlach-Doht et al., page 1, paragraphs [0005], [0006]).
The limitation “for forming a heat-sealable coating on a paper or board surface for reducing mineral oil saturated hydrocarbon (MOSH) or mineral oil aromatic hydrocarbon (MOAH) migration" is deemed to be a statement with regard to intended use and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. The solution of Sheskey et al., as modified by Goerlach-Doht et al., is capable of being used for forming a heat-sealable coating on a paper or board surface for reducing mineral oil saturated hydrocarbon (MOSH) or mineral oil aromatic hydrocarbon (MOAH) migration in that it contains the same constituents and displays the same characteristics as claimed by Applicant.
Regarding claim 3, Sheskey et al. teach wherein said aqueous solution further comprises a plasticizer (page 3, paragraph [0029]).
Regarding claim 4, Sheskey et al. teach wherein said aqueous solution further comprises a plasticizer (page 3, paragraph [0029]), wherein said plasticizer is present in an amount from 5 to 65% by weight which read on Applicant’s claimed range of up to 30% (w/w) (page 3, paragraph [0029]).
Regarding claim 5, Sheskey et al. teach wherein said aqueous solution further comprises a plasticizer (page 3, paragraph [0029]), wherein said plasticizer is selected from the group consisting of propylene glycol and glycerol (page 3, paragraph [0029]).
Regarding claim 6, Sheskey et al. teach wherein the solution comprises water in an amount of from 60 to 95 percent which reads on Applicant’s claimed range of from 30% to 90% (w/w) (page 7, paragraphs [0061], [0062]).
Regarding claim 7, Sheskey et al. teach a coating composition (page 1, paragraph [0006]) comprising an aqueous solution (page 7, paragraphs [0061], [0062]) comprising a thermoplastic hydroxypropyl methylcellulose (HPMC) (page 1, paragraphs [0006], [0011], page 2, paragraph [0013]) in an amount of at least 30 percent (page 1, paragraph [0006], page 2, paragraph [0013], page 7, paragraph [0060]) and wherein a viscosity of said HPMC is from 1.2 mPa·s to 1000 mPa·s determined as a 2% by weight solution in water at 20°C according to Ubbelohde (page 2, paragraphs [0014], [0015]).
Sheskey et al. fail to teach wherein said HPMC has a DS(methyl) of at least 1.0 and an MS(hydroxypropyl) of at least 0.6, wherein DS is the average number of hydroxyl groups substituted by methoxyl groups per anhydroglucose unit and MS is the average number of moles of hydroxyalkoxy groups per anhydroglucose units. However, Goerlach-Doht et al. teach a hydroxypropyl methylcellulose having a DS(methyl) of from 1.2 to 2.2 (page 2, paragraph [0012]) and MS(hydroxypropyl) of 0.02 to 2.0 (page 2, paragraph [0012]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to provide the HPMC DS(methyl) and MS(hydroxypropyl) of Goerlach-Doht et al. in the HPMC of Sheskey et al. in order to reduce the amount of water insoluble fibers (Goerlach-Doht et al., page 1, paragraphs [0005], [0006]).
The limitation “for forming a heat-sealable coating on a paper or board surface" is deemed to be a statement with regard to intended use and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. The coating composition of Sheskey et al., as modified by Goerlach-Doht et al., is capable of being used for forming a heat-sealable coating on a paper or board surface in that it contains the same constituents and displays the same characteristics as claimed by Applicant.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sheskey et al. (US Patent Application No. 2014/0201872) in view of Goerlach-Doht et al. (US Patent Application No. 2014/0018531), in further view of Muller et al. (US Patent Application No. 2016/0222592).
Sheskey et al. and Goerlach-Doht et al. are relied upon as disclosed above.
Regarding claim 2, Shesky et al. fail to teach wherein a viscosity of said aqueous solution is from 200 mPa·s determined at 20°C according to Haake. However, Muller et al. teach an aqueous solution (page 4, paragraphs [0040]-[0044]) comprising hydroxypropyl methylcellulose (HPMC) (page 4, paragraphs [0040]-[0044], page 8, paragraph [0120]), wherein a viscosity of said aqueous solution is from 50-5,000 mPas at 40°C which reads on Applicant’s claimed range of from 200 to 80,000 mPa·s determined at 20°C according to Haake (page 4, paragraph [0044]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the viscosity of Shesky et al. to that of Muller et al. in order to provide adequate application weight (Muller et al., page 4, paragraph [0050]).
Claims 9, 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sheskey et al. (US Patent Application No. 2014/0201872) in view of Goerlach-Doht et al. (US Patent Application No. 2014/0018531), in further view of Salaam et al. (US Patent Application No. 2019/0376010).
Sheskey et al. and Goerlach-Doht et al. are relied upon as disclosed above.
Regarding claims 9 and 10, Shesky et al. fail to teach a paper or board surface comprising the heat sealable coating composition wherein at least a portion of said surface is subjected to heat sealing. However, Salaam et al. teach a coating composition (page 13, paragraph [0119]) for forming a heat sealing coating on a paper (page 13, paragraph [0119], page 15, paragraph [0133]), said coating comprising hydroxypropyl methylcellulose (page 11, paragraph [0091]), wherein at least a portion of said surface is subjected to heat sealing (page 15, paragraph [0133]), wherein said portion of said surface is an edge (page 15, paragraph [0133]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to provide heat sealing in Sheskey et al. as that of Salaam et al. in order to form a sealed compartment (Salaam et al., page 1, paragraph [0008]).
Regarding claim 12, Shesky et al. fail to teach wherein said paper or board surface comprises a layer of said heat sealable coating composition, wherein said layer has a weight when dried of from 3 g/m2 to 100 g/m2. However, Salaam et al. teach a coating composition (page 13, paragraph [0119]) for forming a heat sealing coating on a paper (page 13, paragraph [0119], page 15, paragraph [0133]), said coating comprising hydroxypropyl methylcellulose (page 11, paragraph [0091]), wherein at least a portion of said surface is subjected to heat sealing (page 15, paragraph [0133]).
Salaam et al. do not disclose wherein said layer has a weight when dried of from 3 g/m2 to 100 g/m2. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in weight involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the weight of the layer of Salaam et al. in order to form a sealed compartment (Salaam et al., page 1, paragraph [0008]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to provide heat sealing in Sheskey et al. as that of Salaam et al. in order to form a sealed compartment (Salaam et al., page 1, paragraph [0008]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sheskey et al. (US Patent Application No. 2014/0201872) in view of Goerlach-Doht et al. (US Patent Application No. 2014/0018531) and Salaam et al. (US Patent Application No. 2019/0376010), in further view of Misiak et al. (US Patent Application No. 2014/0255629).
Sheskey et al., Goerlach-Doht et al. and Salaam et al. are relied upon as disclosed above.
Regarding claim 11, Shesky et al. fail to teach wherein the paper or board is recycled paper or board or printed paper or board. However, Misiak et al. teach an aqueous solution for coating paper or board surface (page 1, paragraph [0013]), said aqueous solution comprising hydroxypropyl methylcellulose (page 2, paragraph [0014], page 3, paragraphs [0034], [0037]) in an amount of 1 to 50 wt% (page 3, paragraphs [0034], [0037], [0041]), wherein the paper or board is printed paper or board (page 2, paragraph [0017]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the printed paper or board of Misiak et al. as the paper or board of Shesky et al. in order to provide an image (Misiak et al., page 2, paragraph [0017]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Sheskey et al. (US Patent Application No. 2014/0201872) in view of Goerlach-Doht et al. (US Patent Application No. 2014/0018531) and Salaam et al. (US Patent Application No. 2019/0376010), in further view of Clarke (US Patent Application No. 2005/0202090).
Sheskey et al., Goerlach-Doht et al. and Salaam et al. are relied upon as disclosed above.
Regarding claim 13, Shesky et al. fail to teach wherein said paper or board surface is pre-coated with a layer of non-thermoplastic HPMC before being coated with said heat sealable coating composition. However, Clarke teaches a composition comprising a non-thermoplastic HPMC (page 7, paragraph [0081]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to coat the paper with a non-thermoplastic HPMC as that of Clarke before being coating with said heat sealable coating composition in order to create a material that behaves as if it were thermoplastic (Clarke, page 7, paragraph [0079]).
Conclusion
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/Chinessa T. Golden/Primary Examiner, Art Unit 1788 3/19/2026