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 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 35-44, 46, 48, 50-51, 53-56 and 58-59 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 Rice et al. (US 5,156,904).
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 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.
Rice teaches polymeric films which are in-lined coated with polyethyleneimine to render the films receptive to direct extrusion coating with other polymers (Col. 2, Lines 49-58). The in-line coating methods provide improved adhesion and may be provided before or interdrawing of the polymeric films and before heat setting of the films (Col. 3, Lines 5-22).
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 to further include the adhesion promoting layers of Rice between the films and the layers of Dou such that the adhesion promoting layer is a polyethyleneimine which is coated in-line with the films in order to provide sufficient bonding between the layers.
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, in-line 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, Dou and Rice 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 Rice 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.
Regarding claim 42, Lee teaches the films as discussed above with respect to claim 35. As discussed above, the films of Lee and that of the instant invention have identical properties. These properties would include the films being industrial compostable according to ASTM D6400 and/or ASTM D5388 (2021).
Regarding claim 43, Lee teaches the films as discussed above with respect to claim 35. As discussed above, the films of Lee and that of the instant invention have identical properties. These properties would include the films being home compostable according AS 5810-10 (2010).
Regarding claim 44, Lee teaches the films as discussed above with respect to claim 35. Rice further teaches the adhesion promoting layer being an aqueous solution (Col. 4, Lines 50-51).
Regarding claim 46, Lee teaches the films as discussed above with respect to claim 35. Lee further teaches the skin layers having a surface roughness of 10 to 50 nm, overlapping with the instantly claimed range.
Regarding claim 48, Lee teaches the films as discussed above with respect to claim 35. As discussed above, the skin layers are formed from PLA resins.
Regarding claim 50, Lee teaches the films as discussed above with respect to claim 35. As discussed above, the combination of Lee, Dou and Rice teaches the structure of skin layer/core layer/skin layer/adhesion promoting layer/EVOH or PVOH layer/metal layer.
Regarding claim 51, Lee teaches the films as discussed above with respect to claim 35. Rice further teaches the adhesion promoting layer being applied in an amount ranging from 0.00000001 lbs/ft2 to 0.00002 lbs/ft2 (0.000048824 to 0.0976 g/m2) (Col. 4, Lines 50-59).
Regarding claim 53, Lee teaches the films as discussed above with respect to claim 50. Lee further teaches the skin layer receiving the metal layers are metal receiving (“non-heat sealable”) and the other skin layer is a heat sealable layer (Paragraphs [0029]-[0030]).
Regarding claim 54, Lee teaches the films as discussed above with respect to claim 53. As discussed above, the other skin layer is a heat sealable layer.
Regarding claim 55, Lee teaches the films as discussed above with respect to claim 54. The skin layers are formed from an amorphous PLA (Paragraph [0031]).
Regarding claim 56, Lee teaches the films as discussed above with respect to claim 35. Lee additionally does not teach the presence of any fibres in the core layer, teaching “the core layer is substantially free of a fiber.”
Regarding claim 58, Lee teaches the films as discussed above with respect to claim 35. The skin layers may have a thickness of less than 2 microns or more than 2 microns (Paragraph [0015]).
Regarding claim 59, Lee teaches the films as discussed above with respect to claim 35. As discussed above, the adhesion promoting layer is provided in-line and the film is then heat set allowing for other polymer layers to be extrusion coated directly (“off-line”).
Claim 45 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 Rice et al. (US 5,156,904) as applied to claim 35 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 35.
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.
Claim 47 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 Rice et al. (US 5,156,904) as applied to claim 35 above, and further in view of Cooper et al. (US 2017/0210867).
Regarding claim 47, Lee teaches the films as discussed above with respect to claim 35.
Lee is silent with respect to the thickness of the core layer being 10 to 100 microns.
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 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.
Claims 49 and 52 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 Rice et al. (US 5,156,904) as applied to claim 35 above, and further in view of Dou et al. (US 2011/0244185).
Regarding claims 49 and 52, Lee teaches the films as discussed above with respect to claim 35.
Lee is silent with respect to the core layer further comprising a petroleum-based polymeric modifier having a glass transition temperature of Tg ≤ 10°C, as required by claim 49, and that polymeric modifier being in an amount less than 5 wt%, as required by claim 52.
Dou teaches BOPLA films which have a softer feel and quieter sound (Paragraph [0002]). The films include a PLA base layer which, for the purpose of improved quietness and maintain compostability, has 1 to 10 wt% of a rubber, such as EPDM having a glass transition temperature of -54°C (Paragraph [0059]).
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 such that the core layer further includes EPDM rubber having a glass transition temperature of -54°C in an amount of 1 to 10 wt% in order to improve quietness and maintain compostability as taught by Dou.
Claim 57 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 Rice et al. (US 5,156,904) as applied to claim 53 above, and further in view of Lee (US 2009/0148715).
Regarding claim 57, Lee teaches the films as discussed above with respect to claim 53.
Lee is silent with respect to the metal receiving skin layer having a blend of a crystalline PLA and an amorphous PLA.
Lee teaches a BOPLA film which includes a core layer, a heat sealable layer and a third layer (Paragraph [0016]). The third layer may be formed form a blend of amorphous and crystalline PLA in order to make the layer more suitable for printing, metallizing, coating or laminating (Paragraph [0054]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the metal receiving layer of Lee to further include a blend of amorphous and crystalline PLA in order to make the layer more suitable for printing, metallizing, coating or laminating.
Response to Arguments
Applicant’s arguments, see pages 6-7, filed 06/04/2026, with respect to the 35 U.S.C 112 rejections of claims 10 and 39 have been fully considered and are persuasive. The rejections of 03/06/2026 has been withdrawn.
Applicant’s arguments, see pages 7-11, filed 06/04/2026, with respect to the 35 U.S.C 103 rejection of claim 35 have been fully considered and are persuasive.
On pages 7-11, applicant argues that the claimed invention is not taught nor is obvious in view of the combination of Lee, Dou and Cooper. Firstly, applicant argues that Cooper teaches a blend of polyethyleneimine and PVOH rather than a primer layer of PEI and a barrier layer of PVOH. Secondly, applicant argues that the primer layer being an in-line primer layer rather than an off-line primer layer results in the claimed MVTR and O2TR properties as evidenced in Table 6 of the instant specification.
The examiner first notes that the claimed invention requires comprising language for the in-line primer layer and, as such, may include materials other than the PEI. This includes the PVOH in the primer layer. Additionally, the combination does not rely on Cooper to teach the barrier layer of EVOH/PVOH. This feature is taught by Dou which teaches a barrier layer of EVOH/PVOH, as discussed above. Cooper is relied upon to teach the primer layer of PEI. As such, the examiner contends that the combination of Lee, Dou and Cooper teaches the structural limitations of a core layer, one or more skin layers, an in-line primer layer, a barrier layer and a metal layer as required by the claim.
The examiner recognizes the results in Table 6 of the instant specification such that examples 1-6 are formed from an off-line primer and examples 7-10 are formed from an in-line primer (PGPUB, Paragraphs [0180]-[0183]). Furthermore, the in-line primers resulted in the claimed ranges for MVTR and O2TR whereas the off-line primers resulted in values above the claimed ranges. Cooper merely teaches the primers being on-line coated or off-line coated, but fails to teach why on-line coating is preferred over the off-line coating method (See Previous Rejection, Dated 03/06/2026, Pages 9-11) . Therefore, the examiner concedes in that claim 35 overcomes the combination of Lee, Dou and Cooper and the rejection of 03/06/2026 is withdrawn. However, upon further consideration, a new ground of rejection is made view of Rice as discussed above. The current rejection is made non-final such that the primer layer being in-line coated was previously presented in claim 35.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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