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 .
Election/Restrictions
Applicant’s election without traverse of Species B, claims 8 and 10, in the reply filed on 11/14/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/30/2023 has been considered by the examiner.
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 39 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 39 requires “wherein the film has a moisture vapour transmission rate (MVTR) about 0.027 g/m2/day to about 0.075 g/m2/day as measured according to ASTM F1249 and an oxygen transmission rate (O2TR) less than about 0.63 cc/m2/day to about 1.04 cc/m2/day as measured according to ASTM D3985.” However, it is unclear if the range for the O2TR should be less than 0.63 cc/m2/day or in the range of 0.63 to 1.04 cc/m2/day. Therefore, the claim is rejected for failing to point out and distinctly claim the subject matter that is applicant’s invention. For the purposes of examination, the O2TR is to be determined to be in the range of 0.63 to 1.04 cc/m2/day (Instant Specification, PGPUB, Paragraph [0197]).
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, which depends from claim 1, requires an MVTR of 0.1 to 0.4 cc/m2/day which is broader than the MVTR range of 5 cc/m2/day required by claim 1. 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 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, 5-6, 21 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489).
Regarding claim 1, Lee teaches metallized biaxially oriented polylactic acid base polymer films (“film” & “a biaxially oriented film”) (Paragraph [0010]). The films include a core layer (“core layer” & “one or more outer layers”) and two skin layers on each side of the core layer (Paragraph [0021]). The resins forming each of these layers is a polylactic acid wherein the content of PLA is at least 95% by weight (“a core layer comprising a first biodegradable polymeric resin composition comprising PLA resin of PHA resin in an amount at least about 70 wt% of a total weight of the polymeric resins in the core layer” & “one or more outer layers comprising a second biodegradable polymeric resin”) (Paragraph [0022]). The films may further include a metallized aluminum gas barrier layer (Paragraph [0021]).
Lee is silent with respect to the films further comprising a barrier coating layer comprising EVOH or PVOH or a combination thereof, and a metal layer comprising a metal.
Dou teaches a metallized biaxially oriented PLA film with a metal receiving layer of EVOH and/or PVOH (Paragraph [0002]). The addition of the EVOH/PVOH layer and the metal layer improve gas barrier properties of the BOPLA films (Paragraph [0016]; [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the BOPLA films of Lee to further include an EVOH/PVOH layer with a metal layer in order to further improve the gas barrier properties as taught by Dou.
Lee is further silent with respect to the films having a MVTR of about 5 cc/m2/day and an O2TR of less than about 5 cc/m2/day.
However, these properties appear to be dependent on the materials for forming the films of the instant claim and one of ordinary skill in the art would recognize that a film which is formed from identical materials would have identical properties as well. MPEP 2112.01: 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
In the instant case, the films of claim 1 are required to have the core layer, outer layer, barrier layer and metal layer with the specific materials required by the claim. The films are also required to be biaxially stretched.
The combination of Lee and Dou teaches the various layers and the materials of the films of the instant claims as discussed above. As such, one of ordinary skill in the art would recognize that the identical films of Lee in view of Dou would also have identical properties to the films of the instant claims, including, but not limited to, having a MVTR of about 5 cc/m2/day and an O2TR of less than about 5 cc/m2/day.
Regarding claim 5, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the films of Lee and Dou have an identical structure and identical properties to the films of the instant claims. This includes the films being industrial compostable according to ASTMD 6400 and/or ASTM D5388.
Regarding claim 6, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the films of Lee and Dou have an identical structure and identical properties to the films of the instant claims. This includes the films being home compostable according to AS 5810-10.
Regarding claim 21, Lee teaches the films as discussed above with respect to claim 1. Lee further teaches the skin layers having a surface roughness of 10 to 50 nm, overlapping with the instantly claimed range.
Regarding claim 28, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the skin layers are formed from PLA resins.
Regarding claim 29, Lee teaches the films as discussed above with respect to claim 1. As discussed above, the core layers can be formed from 100% of PLA, which would result in all other materials being at 0%, including a petroleum-based polymeric modifier with a glass transition temperature of Tg ≤ 10°C.
Claims 2-3, 8, 10-11, 18, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489) as applied to claim 1 above, and further in view of Cooper et al. (US 2017/0210867).
Regarding claim 2, Lee teaches the films as discussed above with respect to claim 1.
Lee is silent with respect to a primer layer being present between one of the outer layers and the EVOH/PVOH and metal layers.
Cooper teaches a primer layer suitable for polymeric substrates which are applied with metallized coatings and further improve barrier properties and adhesion of the coatings to the substrates (Paragraph [0005]). The primers are formed from a composition which includes PEI (Paragraph [0015]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Lee and Dou such that the primers of Cooper are applied to an outer layer in order to provide improved adhesion to the EVOH/PVOH and metal layers while also improving barrier properties.
Regarding claim 3, Lee teaches the films as discussed above with respect to claim 2. As discussed above, Cooper teaches the primer compositions including PEI.
Regarding claim 8, Lee teaches the films as discussed above with respect to claim 2.
Cooper further teaches the compositions being applied either in-line or off-line (Paragraph [0032]).
Regarding claim 10, Lee teaches the films as discussed above with respect to claim 8. As discussed above, the films of Lee and Dou, and further Cooper, have an identical structure and identical properties to the films of the instant claims. This includes the films having an O2TR in a range of about 1.9 to 4.5 cc/m2/day and an MVTR in the range of 0.1 to 0.4 cc/m2/day.
Regarding claim 11, Lee teaches the films as discussed above with respect to claim 3.
Cooper further teaches the primer compositions containing water and being an aqueous solution (Paragraph [0015]).
Regarding claim 18, Lee teaches the films as discussed above with respect to claim 2. As discussed above, the structure of the films includes core layer, outer/skin layer, primer layer, EVOH/PVOH layer, metal layer.
Regarding claim 23, Lee teaches the films as discussed above with respect to claim 1.
Lee is silent with respect to the thickness of the core layer being 10 to 100 microns.
Cooper teaches the primer compositions as discussed above with respect to claim 2. Cooper further teaches the films having a thickness of 10 to 100 microns and the films being PLA films (Paragraph [0030]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films to have a thickness of 10 to 100 microns as taught by Cooper.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489) and Cooper et al. (US 2017/0210867), as applied to claim 3 above, and in further view of Nagai et al. (US 2021/0115231).
Regarding claim 4, Lee teaches the films as discussed above with respect to claim 3.
Lee and Cooper are silent with respect to the primer layer comprising polyester.
Nagai teaches packaging materials which include a primer layer on a substrate wherein the primer layer may be formed from PEI or polyester resins (Paragraphs [0002]; [0098]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the primer layer as either the compositions of Cooper or a polyester resin as taught by Nagai which teaches the two resins being suitable as a primer layer in a packaging laminate.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489) as applied to claim 1 above, and further in view of Illsley et al. (US 2012/0272618).
Regarding claim 17, Lee teaches the films as discussed above with respect to claim 1.
Lee is silent with respect to the dried coat weight of the EVOH/PVOH layers being 0.15 to 0.5 gsm.
Illsley teaches gas barrier coatings which include EVOH/PVOH and being dispersed at a dried coat weight of less than 1.0 gsm when applied via a gravure or flexographic coating process (Paragraphs [0012]; [0050]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the EVOH/PVOH barrier coatings to be applied at a weight of less than 1 gsm as taught by Illsley.
Claims 35 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489) and Cooper et al. (US 2017/0210867).
Regarding claim 35, Lee teaches metallized biaxially oriented polylactic acid base polymer films (“film” & “a biaxially oriented film”) (Paragraph [0010]). The films include a core layer and two skin layers on each side of the core layer (“core layer” & “one or more outer layers”) (Paragraph [0021]). The resins forming each of these layers is a polylactic acid wherein the content of PLA is at least 95% by weight (“a core layer comprising a first biodegradable polymeric resin composition comprising PLA resin of PHA resin in an amount at least about 70 wt% of a total weight of the polymeric resins in the core layer” & “one or more outer layers comprising a second biodegradable polymeric resin”) (Paragraph [0022]). The films may further include a metallized aluminum gas barrier layer (Paragraph [0021]).
Lee additionally does not teach the presence of any fibres in the core layer, teaching “the core layer is substantially free of a fiber.”
Lee is silent with respect to the films further comprising a barrier coating layer comprising EVOH or PVOH or a combination thereof, and a metal layer comprising a metal.
Dou teaches a metallized biaxially oriented PLA film with a metal receiving layer of EVOH and/or PVOH (Paragraph [0002]). The addition of the EVOH/PVOH layer and the metal layer improve gas barrier properties of the BOPLA films (Paragraph [0016]; [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the BOPLA films of Lee to further include an EVOH/PVOH layer with a metal layer in order to further improve the gas barrier properties as taught by Dou.
Lee is silent with respect to an in-line primer layer, comprising a PEI or polyester polymer, being present between one of the outer layers and the EVOH/PVOH and metal layers.
Cooper teaches a primer layer suitable for polymeric substrates which are applied with metallized coatings and further improve barrier properties and adhesion of the coatings to the substrates (Paragraph [0005]). The primers are formed from a composition which includes PEI (Paragraph [0015]). Cooper further teaches the compositions being applied either in-line or off-line (Paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Lee and Dou such that the primers of Cooper are applied to an outer layer in order to provide improved adhesion to the EVOH/PVOH and metal layers while also improving barrier properties.
Regarding claim 39, Lee teaches the films as discussed above with respect to claim 35.
Lee is further silent with respect to the films having a MVTR of about 0.027 to 0.075 cc/m2/day and an O2TR of between 0.63 and 1.04 cc/m2/day.
However, these properties appear to be dependent on the materials for forming the films of the instant claim and one of ordinary skill in the art would recognize that a film which is formed from identical materials would have identical properties as well. MPEP 2112.01: 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
In the instant case, the films of claim 1 are required to have the core layer, outer layer, primer layer, barrier layer and metal layer with the specific materials required by the claim. The films are also required to be biaxially stretched.
The combination of Lee and Dou teaches the various layers and the materials of the films of the instant claims as discussed above. As such, one of ordinary skill in the art would recognize that the identical films of Lee in view of Dou and Cooper would also have identical properties to the films of the instant claims, including, but not limited to, having a MVTR of about 0.027 to 0.075 cc/m2/day and an O2TR of between 0.63 and 1.04 cc/m2/day.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2010/0247886) in view of Dou et al. (US 2011/0171489) and Cooper et al. (US 2017/0210867).
Regarding claim 35, Lee teaches metallized biaxially oriented polylactic acid base polymer films (“film” & “a biaxially oriented film”) (Paragraph [0010]). The films include a core layer and two skin layers on each side of the core layer (“core layer” & “one or more outer layers”) (Paragraph [0021]). The resins forming each of these layers is a polylactic acid wherein the content of PLA is at least 95% by weight (“a core layer comprising a first biodegradable polymeric resin composition comprising PLA resin of PHA resin in an amount at least about 70 wt% of a total weight of the polymeric resins in the core layer” & “one or more outer layers comprising a second biodegradable polymeric resin”) (Paragraph [0022]). The films may further include a metallized aluminum gas barrier layer (Paragraph [0021]).
Lee additionally does not teach the presence of any fibres in the core layer, teaching “the core layer is substantially free of a fiber.”
As discussed above, the core layers can be formed from 100% of PLA, which would result in all other materials being at 0%, including a petroleum-based polymeric modifier with a glass transition temperature of Tg ≤ 10°C.
Lee is silent with respect to the films further comprising a barrier coating layer comprising EVOH or PVOH or a combination thereof, and a metal layer comprising a metal.
Dou teaches a metallized biaxially oriented PLA film with a metal receiving layer of EVOH and/or PVOH (Paragraph [0002]). The addition of the EVOH/PVOH layer and the metal layer improve gas barrier properties of the BOPLA films (Paragraph [0016]; [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the BOPLA films of Lee to further include an EVOH/PVOH layer with a metal layer in order to further improve the gas barrier properties as taught by Dou.
Lee is silent with respect to an in-line primer layer, comprising a PEI or polyester polymer, being present between one of the outer layers and the EVOH/PVOH and metal layers.
Cooper teaches a primer layer suitable for polymeric substrates which are applied with metallized coatings and further improve barrier properties and adhesion of the coatings to the substrates (Paragraph [0005]). The primers are formed from a composition which includes PEI (Paragraph [0015]). Cooper further teaches the compositions being applied either in-line or off-line (Paragraph [0032]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the films of Lee and Dou such that the primers of Cooper are applied to an outer layer in order to provide improved adhesion to the EVOH/PVOH and metal layers while also improving barrier properties.
Conclusion
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783