DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed on December 15, 2025 has been entered in the above-identified application. Claims 9 and 10 are canceled. Claim 1 is amended. New claims 26 and 27 have been added. Claims 1-8 and 11-27 are now pending and under consideration.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 1-4, 9-12, and 15-25 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(1) as being anticipated by Mongrain et al. (US 2021/0025114 A1).
Mongrain et al. disclose a heat sealable paper-based substrate (equivalent to the cellulosic substrate of the claimed invention) is provided with at least the first surface covered with at least one primer coat and at least one topcoat over the primer coat, wherein: the primer coat (equivalent to the non-polyolefin aqueous polymer dispersion coating layer of the claimed invention) is formed from a substantially wax-free aqueous dispersion of at least one polymer or copolymer and the topcoat (equivalent to the polyolefin aqueous polymer dispersion barrier layer of the claimed invention) has a different composition than the primer coat and is formed from an aqueous dispersion of at least one thermoplastic polymer or copolymer. The heat sealable paper-based substrate can be used to make packages (meeting the limitations of claim 25) to contain goods such as cold or hot beverages or food products. The “paper-based substrate” refers to any type of cellulosic fiber-based product. In further implementations, the paper-based substrate can be a recycled liner, a virgin liner, a medium, a fine paper, a newspaper, a chipboard, a Kraft paper, a paperboard, or molded pulp. The heat sealable paper-based substrate as described herein is primarily covered on one of its surface with a primer coat, which can be used as a basecoat for the topcoat applied thereon. The primer coat is formed from a first coating including an aqueous dispersion of at least one polymer or copolymer. In some embodiments, the polymer or copolymer in the primer coat can be crosslinked polymer and the aqueous dispersion used for making the primer coat is substantially wax-free, meaning that it does not contain any wax component (e.g. paraffins) or only traces of wax component. In one embodiment, the primer coat is wax-free. The polymers or copolymers, which can be used for the primer coat and are applied to the paper-based substrate as aqueous dispersions, can include a variety of polymers or copolymers. If the primer coat can include one type of polymer or copolymer, in other embodiments, the primer coat can include more than one polymer or copolymer. Hence, mixtures of polymers or copolymer, present in the same aqueous dispersion or resulting from the combination of two or more aqueous dispersions, can also be used to make the primer coat. In some embodiments, the aqueous dispersion applied to the paper-based to form the primer coat can include a polymer or copolymer selected from an acrylic acid polymer, an acrylate polymer, a methylacrylate polymer, an ethylacrylate polymer, a propylacrylate polymer, a butylacrylate polymer, a styrene/butadiene copolymer, a styrene/acrylate copolymer, a styrene/butylacrylate copolymer, a styrene/acrylonitrile copolymer, a butadiene/acrylonitrile copolymer, a styrene/acrylonitrile/acrylate copolymer, a polylactic acid, a polybutylene succinate, a polyhydroxyalkanoate, a polyolefin, and any mixture thereof. In other embodiments, the polymer or copolymer present in the aqueous dispersion used to make the primer coat can include a styrene/butadiene copolymer, a styrene/butylacrylate copolymer, a butadiene/acrylonitrile copolymer, a styrene/acrylonitrile/acrylate copolymer, and any mixture thereof. In further embodiments, the primer coating aqueous dispersion, in addition to the polymer(s) or copolymer(s) and water, can contain some additives such as a clay and calcium carbonate (meeting the limitations of claims 11 and 12). In addition to serve as a basecoat for the topcoat and to provide adhesion of the final coating to the paper-based substrate, the primer coat can also provide some barrier properties, such as moisture and/or grease or oil barriers to the heat sealable paper-based substrate. The primer coat can also provide some flexibility to the coated heat sealable paper-based substrate, which can be resistant to cracks upon folding. The paper-based substrate is also coated with a second coat, which covers the primer coat, and which can provide some heat sealable properties to the final paper-based coated substrate. The topcoat can also provide some barrier properties to heat sealable paper-based substrate, such as water-resistance, grease or oil resistance, heat resistance, odor barriers, and/or moisture resistance. The topcoat can present a variety of barriers, such as water and/or moisture barrier, a barrier to oil and/or grease, an odour barrier etc., which can be provided by the polymers or copolymers present in the aqueous dispersions used for making the topcoat. The polymers or copolymers in the aqueous dispersions used to make the topcoat can be thermoplastic polymers or copolymers and can include acrylic acid-based polymer dispersions, acrylate-based polymer dispersions, polyolefin dispersions (meeting the limitations of claim 2), polylactic acids, polybutylene succinates, polyhydroxyalkanoates, polyvinylidene chloride (PVDC), polyvinylalcohol, polyvinylacetate, or any mixture thereof. In further implementations, the topcoat aqueous dispersion, in addition to the polymer(s) or copolymer(s) and water, can contain some clay and calcium carbonate (meeting the limitations of claims 3, 4, and 6). In some embodiments, the aqueous dispersion of the primer coat can be applied on both surfaces of the paper substrate. In such embodiments, the coatings on both surfaces can be dried and chilled before application of the topcoat on at least one of the surfaces. If the aqueous dispersion of the topcoat is applied on only one surface, the heat sealable paper-based substrate will thus have a first surface coated with the primer coat and the topcoat thereon and the second surface coated with the primer coat only. In other embodiments, the aqueous dispersion of the primer coat can be applied on one of the surfaces of the paper substrate, dried and chilled, and then the aqueous dispersion of the topcoat can be applied on both surfaces of the paper-substrate. Thus, the final heat sealable paper-based substrate will have a first surface coated with the primer coat and the topcoat thereon and the second surface coated with the topcoat only (meeting the limitations of claims 16-19). In some embodiments, the aqueous dispersion of the primer coat can be applied to the paper substrate to have a primer coat weight, i.e. a dried coat weight, ranging from about 3 to about 20 g/m2 (meeting the limitations of claim 15). (See Abstract and paragraphs 0019, 0038, 0057, 0063, 0064-0068, 0073-0077, and 0095-0097). With regards to the limitation that the non-polyolefin binder comprises a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C, the cellulosic structure has a 30-minute-water-Cobb rating of at most about 20 g/m2, the cellulosic structure has a water vapor transmission rate of less than 500 grams per square meter per day at 38 °C/ 90%RH, the cellulosic structure has a 3M kit test value is at least 7, a blocking rating of 2.0 or less, and the cellulosic structure is repulpable to an extent that after repulping a percentage of accepts is at least 50%, the Examiner takes the position that such property limitations are inherent in the cellulosic structure taught by Mongrain et al. given that the structure and chemical composition as taught by Mongrain et al. and that of the claimed invention are identical.
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.
4. Claims 26 and 27 rejected under 35 U.S.C. 103 as being unpatentable over Mongrain et al. (US 2021/0025114 A1).
With regards to the binder to pigment ratio of the polyolefin barrier layer and the non-polyolefin basecoat layer, the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties.
5. Claims 1-8 and 11-27 are rejected under 35 U.S.C. 103 as being unpatentable over Mongrain et al. (US 2021/0025114 A1) in view of Pang et al. (US 2019/0257034 A1).
Mongrain et al., as discussed above, do not specifically state that the non-polyolefin binder comprises a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C.
However, Pang et al. teach a paperboard structure that includes a paperboard substrate which includes a first major side and a second major side along with at least one barrier coating layer on the first major side. The barrier coating layer(s) may include a binder and a pigment, wherein the binder has a glass transition temperature of at least 20° C., wherein a ratio of the binder to the pigment is at least about 1:2 by weight. Referring to FIG. 1, one aspect of the disclosed paperboard structure, generally designated 10, includes a paperboard substrate 100, an optional base coat 120, and a barrier coating layer 110. The optional base coat 120 may be applied to the first major side 102 of the paperboard substrate 100. The optional base coat 120 may include of the same (or similar) ingredients as the barrier coating layer 110, namely a binder and a pigment. However, the ratios may be differently, namely, a ratio of the binder to the pigment in the optional base coat 120 may be about 25:100 to about 45:100 by weight. The binders of the barrier coating layer and the basecoat layer may be an aqueous binder. Examples include styrene-acrylate (SA) (i.e., the binder “consists of” or “consists essentially of” styrene-acrylate (SA)). As another general, non-limiting example, the binder may be a mixture of binders that includes styrene-acrylate (SA). Several specific, non-limiting examples of suitable binders are presented in Table 2. Other aqueous binders are also contemplated, such as styrene-butadiene rubber (SBR), ethylene acrylic acid (EAA), polyvinyl acetate (PVAC), polyester dispersion, and combinations thereof. Pang et al. specifically state that the appropriate selection of the aqueous binders used in the coatings, specifically the glass transition temperature of the binder, can yield a significant reduction in blocking of the resulting paperboard structure 10. In various embodiments, the binder can have a glass transition temperature of at least 20° C and all the way up to a glass transition temperature of at least 25° C. to at most 45° C. (See Abstract and paragraphs 0019-0020, 0025-0036).
Accordingly, it would have been obvious to one having ordinary skill in the art to use a non-polyolefin binder comprising a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C in the basecoat taught by Mongrain et al. given that Pang et al. specifically teach that the appropriate selection of the aqueous binders used in the coatings, specifically the glass transition temperature of the binder, can yield a significant reduction in blocking of the resulting paperboard structure. With regards to the concentration of the pigments, the coat weight of the polyolefin aqueous polymer dispersion barrier layer, and the number of non-polyolefin aqueous polymer dispersion coating layers, the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-8 and 11-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-28 of copending Application No. 18/189,508 (now-allowed) over Pang et al. (US 2019/0257034 A1).
The claims of copending Application No. 18/189,508 (now-allowed) do not state that the non-polyolefin binder comprises a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C.
However, Pang et al. teach a paperboard structure that includes a paperboard substrate which includes a first major side and a second major side along with at least one barrier coating layer on the first major side. The barrier coating layer(s) may include a binder and a pigment, wherein the binder has a glass transition temperature of at least 20° C., wherein a ratio of the binder to the pigment is at least about 1:2 by weight. Referring to FIG. 1, one aspect of the disclosed paperboard structure, generally designated 10, includes a paperboard substrate 100, an optional base coat 120, and a barrier coating layer 110. The optional base coat 120 may be applied to the first major side 102 of the paperboard substrate 100. The optional base coat 120 may include of the same (or similar) ingredients as the barrier coating layer 110, namely a binder and a pigment. However, the ratios may be differently, namely, a ratio of the binder to the pigment in the optional base coat 120 may be about 25:100 to about 45:100 by weight. The binders of the barrier coating layer and the basecoat layer may be an aqueous binder. Examples include styrene-acrylate (SA) (i.e., the binder “consists of” or “consists essentially of” styrene-acrylate (SA)). As another general, non-limiting example, the binder may be a mixture of binders that includes styrene-acrylate (SA). Several specific, non-limiting examples of suitable binders are presented in Table 2. Other aqueous binders are also contemplated, such as styrene-butadiene rubber (SBR), ethylene acrylic acid (EAA), polyvinyl acetate (PVAC), polyester dispersion, and combinations thereof. Pang et al. specifically state that the appropriate selection of the aqueous binders used in the coatings, specifically the glass transition temperature of the binder, can yield a significant reduction in blocking of the resulting paperboard structure 10. In various embodiments, the binder can have a glass transition temperature of at least 20° C and all the way up to a glass transition temperature of at least 25° C. to at most 45° C. (See Abstract and paragraphs 0019-0020, 0025-0036).
Accordingly, it would have been obvious to one having ordinary skill in the art to use a non-polyolefin binder comprising a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C in the non-polyolefin layer recited in claims 1-8 and 11-27 of copending Application No. 18/189,508 given that Pang et al. specifically teach that the appropriate selection of the aqueous binders used in the coatings, specifically the glass transition temperature of the binder, can yield a significant reduction in blocking of the resulting paperboard structure.
Response to Arguments
7. Applicant's arguments filed on December 15, 2025 have been fully considered but they are not persuasive. Applicants traverse the rejection of claims 1-4, 9-12, and 15-25 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(1) as being anticipated by Mongrain et al. (US 2021/0025114 A1) and state that claim 1 now recites that the binder may be a blend of soft (glass transition temperature of less than 25 °C) and hard (glass transition temperature of more than 25 °C) binders for improved non-blocking functionality and allege that Mongrain fails to describe, expressly or inherently, the combination of features of Claim 1.
However, the Examiner disagrees. Mongrain specifically teach that the polymers or copolymers, which can be used for the primer coat and are applied to the paper-based substrate as aqueous dispersions, can include a variety of polymers or copolymers and mixtures of polymers or copolymer, from the combination of two or more aqueous dispersions, can also be used to make the primer coat. In some embodiments, the aqueous dispersion applied to the paper-based to form the primer coat can include a polymer or copolymer selected from an acrylic acid polymer, an acrylate polymer, a methylacrylate polymer, an ethylacrylate polymer, a propylacrylate polymer, a butylacrylate polymer, a styrene/butadiene copolymer, a styrene/acrylate copolymer, a styrene/butylacrylate copolymer, a styrene/acrylonitrile copolymer, a butadiene/acrylonitrile copolymer, a styrene/acrylonitrile/acrylate copolymer, a polylactic acid, a polybutylene succinate, a polyhydroxyalkanoate, a polyolefin, and any mixture thereof. In other embodiments, the polymer or copolymer present in the aqueous dispersion used to make the primer coat can include a styrene/butadiene copolymer, a styrene/butylacrylate copolymer, a butadiene/acrylonitrile copolymer, a styrene/acrylonitrile/acrylate copolymer, and any mixture thereof. And hence, with regards to the limitation that the non-polyolefin binder comprises a blend of soft binder having a glass transition temperature of less than 25 °C and hard binder having a glass transition temperature of more than 25 °C, the Examiner has taken the position that such property limitations are inherent in the cellulosic structure taught by Mongrain et al. given that the structure and chemical composition as taught by Mongrain et al. and that of the claimed invention are identical. Once a product appearing to be substantially identical is found and a 35 USC 102 or 103 rejection has been made, the burden shifts to the Applicant to show an unobvious difference.
Conclusion
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787
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