Detailed Action
The communications received 12/02/2025 have been filed and considered by the Examinr. Claims 1-26 are pending. Claims 14-26 are withdrawn.
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
As it pertains to the improper separation of groups I and II as separate invention groupings, the Examiner agrees and has considered groups I and II as the same invention.
Claims 14-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected coated high density paper substrate, and a laminated packaging material, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/11/2026.
Applicant's election with traverse of 1-13 in the reply filed on 02/11/2026 is acknowledged. The traversal is on the ground(s) that the U.S. National Application which is substantially the same as the counterpart International Application which did not raise a unity of invention issue. This is not found persuasive because as explicitly stated in the MPEP “The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA.” [MPEP 1893.03(d)]. Therefore as the election requirement is otherwise proper without any further arguments explaining why it would not be, the lack of unity of invention is maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is unclear what statutory category a “use of” a product can fall under, when the use is not defined by process steps. It is unclear whether the claims are directed to the product or whether the claims are directed to a single step in which the product is used. For purposes of examination, this will be interpreted as being directed to the product.
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.
Claims 1-13 are 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.
As for claims 1-13, the “Use of” claim limitations are unclear as it is unclear whether this is a step in the usage of a product, whether the product is a combination of the limitations in which it is used, or whether it is solely directed to the product and the “use of” is functional language. For purposes of examination this is understood to be solely the product.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toft et al (US 2018/0311940) hereinafter TOF.
As for claim 1, TOF teaches: a high-density paper used as a gas barrier paper in a laminated packaging material [Abstract; 0026; 0035-36] with a density of greater than 800 kg/ meters cubed which overlaps the claimed range, has a grammage of 60 g/meters squared or less which overlaps the claimed range and an impregnating composition applied to a top-side surface (as a coating/pre-coating) which can be PVOH, EVOH, starch, starch derivatives, and nanocrystalline cellulose [0026, 0036; 0039-40; 0042]. The impregnating composition is applied in an amount from 1-3 g/meters squared which falls within the claimed range [0042].
As for claim 2, TOF teaches claim 1, and wherein the high density paper substrate is formed from cellulose fibres [0031] although TOF does not explicitly teach where the cellulose used in the paper substrate comes from. TOF however teaches that one source of cellulose pulp fibers are chemical pulp fibers [0076]. In accordance with the MPEP, the combination of prior art elements according to known methods to yield predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(A)].
Therefore it would have been obvious to have sourced the entirety of the paper substrate’s cellulose from chemical pulp as this would have amounted to a combination of using a cellulose source such as chemical pulp in order to form the cellulose fiber in a paper substrate and thereby achieve the predictable result of forming the paper substrate. As it is understood that the entirety of the cellulose of the paper would be chemical pulp and that there is no other significant contribution of other constituents to the paper, the chemical pulp is understood to comprise more than 50% of the paper and thereby falls within the claimed range.
As for claim 3, TOF teaches claim 1, and wherein the high density paper substrate is formed from cellulose fibres [0031] although TOF does not explicitly teach where the cellulose used in the paper substrate comes from. TOF however teaches that one source of cellulose pulp fibers used in packaging are from softwood [0082]. In accordance with the MPEP, the combination of prior art elements according to known methods to yield predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(A)].
Therefore it would have been obvious to have sourced the entirety of the paper substrate’s cellulose from chemical pulp as this would have amounted to a combination of using a cellulose source such as softwood pulp in order to form the cellulose fiber in a paper substrate and thereby achieve the predictable result of forming the paper substrate. As it is understood that the entirety of the cellulose of the paper would be softwood pulp and that there is no other significant contribution of other constituents to the paper, the softwood pulp is understood to comprise more than 100% of the cellulose component and thereby falls within the claimed ranges of 35-100% softwood, 0-65% hardwood, and optionally 0-15% CTMP.
As for claim 9, TOF teaches claim 1 and further that clay can be added as part of the impregnating composition (understood to be added to the barrier paper’s film coating as part of improving barrier properties) [0170].
As for claim 10, TOF teaches claim 1 and wherein the thickness of the high density paper substrate is less than 60 um which overlaps the claimed range [0026].
As for claim 11, TOF teaches claim 1 and wherein the high-density paepr substrate has a top ply (the coated layer) and a bottom ply (the paper part) [0164].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over TOF as applied to claim 1 and further in view of Grundl et al (US 2021/0002828) hereinafter GRU.
As for claim 4, TOF teaches claim 1 and but fails to teach any Schopper-Riegler value.
GRU teaches that in barrier papers that have improved grease resistance that a preferred Schopper-Riegler value is preferably in the range of 34-44 degrees which falls within the claimed range [Abstract; 0101; 0103].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the Schopper-Riegler value of GRU in the high-density paper substrate of TOF in order to imbue TOF with improved grease resistance.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over TOF as applied to claim 1 and further in view of Franks (US 2005/0067120) hereinafter FRA.
As for claim 5, TOF teaches claim 1 but fails to teach any fines amount after repulping.
FRA teaches that the primary barrier to utilizing recycled paper is the contaminants present such as fines [0012].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have reduced the fines content after repulping as much as possible as taught by FRA in the paper substrate of TOF in order to improve the recyclability of TOF. As FRA teaches that the lower the fines the better, one of ordinary skill in the art would have been motivated to arrive to the range of less than 40%.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over TOF as applied to claim 1 and further in view of Saukkonen et al (US 2020/0173109) hereinafter SAU.
As for claim 7, TOF teaches claim 1 and further that the paper substrate has a surface roughness of less than 200 ml/min which overlaps the claimed range [0028] however, TOF does not teach that this surface roughness is imbued via calendaring after impregnation.
SAU teaches that in manufacturing of paper layers used in packaging, that one known manner of improving the grease proofing of paper is by calendaring [Abstract; 0002].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have calendared the paper of TOF as taught by SAU to the surface roughness taught by TOF in order to imbue the paper with added grease resistance. As the surface roughness is tied to the greaseproof properties of the paper, one of ordinary skill in the art would have also performed a calendaring after applying the impregnation treatment in order to achieve the grease proofing property in the final product. As both TOF and SAU pertain to papers in packaging they are analogous art and one of ordinary skill in the art expects success in the combination.
As for claim 8, TOF/SAU teaches claim 1 and as the impregnating composition is used to improve barrier properties [0042] it would then have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the impregnating composition to the other side in order to further improve the barrier properties.
Claim(s) 6 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over TOF as applied to claim 1 and further in view of Levit et al (US 2007/0102128) hereinafter LEV.
As for claim 6, TOF teaches claim 1 but does not teach a CSF value.
LEV teaches that in barrier papers with good barrier properties in particular for providing bacterial barrier properties [Abstract] that a good CSF value is below 360 ml which overlaps the claimed range [0015]. It is understood that this would be the same CSF value no matter how it is measured. The paper of LEV has similar density as the one used in TOF (greater than 80 g/cubic centimeter which is greater than 800 kg/cubic meter) [0015].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the CSF of LEV in the paper of TOF in order to provide an added benefit of having bacterial barrier properties. As both papers are used as barrier papers and have similar densities, they are analogous art and one of ordinary skill in the art expects success in the combination.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have the CSF
As for claims 12-13, TOF teaches claim 10 but fails to teach that one ply is made of softwood while another is made of hardwood.
LEV teaches that improved barrier papers can be composed of at least two plies with one substantially of hardwood and the other substantially of softwood (thereby both plies 90% of the respective wood meeting the limitation of at least 50%) [Abstract; 0018; 0053]. The paper of LEV has similar density as the one used in TOF (greater than 80 g/cubic centimeter which is greater than 800 kg/cubic meter) [0015]. This at least two-ply paper also provides bacterial barrier properties [Abstract].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the at least two ply system of LEV with the corresponding hardwood and softwood amounts in the paper of TOF in order to provide an added benefit of having bacterial barrier properties. As both papers are used as barrier papers and have similar densities, they are analogous art and one of ordinary skill in the art expects success in the combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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