8DETAILED 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 § 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.
Claims 2-3 and 10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Regarding claims 2-3, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "such as" in line 5 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-8, 11-13, 15-16, 18-19, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny (US 20030091767 A1) in view of Butler (US 5744529).
Regarding claims 1-8, 11-13, 15, 18-19, and 23-24, Podhajny teaches an antimicrobial coating including a polymeric dispersion and antimicrobial agent that is suitable for rendering packaging materials antimicrobial (Abstract). The packaging material may be made of paper (claim 22). Podhajny teaches that suitable antimicrobial agents known in the art include inorganic ingredients such as silver salts and chlorides, suggesting that silver chloride is suitable (p. 1, [0003]). The antimicrobial agent may equally be zeolite, present in amounts ranging from 0.5-10 wt% of the dispersion (p. 2, [0012]). The zeolites release anti-bacterial metal ions such as silver, reading on the metal of claim 8 (Abstract). The polymer may be polyvinylbutyral, (meth)acrylic, nitrocellulose, and polyester, among others (p. 3, [0032]-[0033]; p. 4, [0040]). A wax may be added (p. 4, [0036]). The substrate need not be folded before the coating is applied. Podhajny teaches that further ingredients may be added to the coating dispersion to improve its utility or confer additional properties to the final product (p. 4, [0049]). No further ingredients are required, though (0 wt% optional defoaming agent, etc.). Instant claims 4-7 further limit components that are not required by claim 1 to be present.
Podhajny is silent as to the quantity of acrylic polymer that may be used, and does not limit the amount of slip agent that may be used. In the same field of endeavor, Butler teaches a coating for paper substrates, having 83 parts by weight polyacrylate and 0.5 parts by weight polysiloxane (slip agent) (Abstract; col. 6, lines 14-21). The polysiloxane may be present in amounts ranging from 0.1-2% by weight (col. 5, lines 5-10). Solvent may be added, but is not required, reading on claim 11 (col. 4, lines 43-45 and 52-53). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the coating of Podhajny with the polyacrylate and polysiloxane of Butler, in the amounts taught by Butler, to arrive at the claimed invention, and to achieve a packaging with a glossy finish, which adds to the eye appeal of the packaging, as taught by Butler (col. 5, lines 3-15). These prior art ranges overlap all claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Podhajny is silent as to use of an adhesion enhancing layer between substrate and coating. Butler further teaches use of polyacrylate coating as a protective overprint for printed matter on a clay-coated paper substrate (col. 5, line 20-24; col. 6, lines 14-22). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Podhajny in view of Butler and the clay-coated paper substrate of Butler to arrive at the claimed invention, and to enhance the eye appeal of the packaging using a gloss finish, as taught by Butler (col. 5, lines 13-15). Solvent is not required by the prior art, and solvent will not be present in the final, dry coating.
Regarding claim 16, Podhajny and Butler do not specify whether the composition may be heat-sealed. Nevertheless, the combined prior art composition includes the same ingredients in the same amounts, and will necessarily possess the heat sealable characteristic of the claimed composition. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler as applied to claim 1 above, and further in view of Kuhner (US 6858581 B2).
Regarding claim 9, Podhajny remains as applied to claim 1 above. Podhajny is silent as to use of antimicrobial peptides in the composition. In the same field of endeavor, Kuhner teaches an antimicrobial peptide suitable for use in coatings for food packaging, and further that they may be incorporated into a polymer, including polyester, polypropylene, polyacrylate, and a biopolymer (claims 1-5). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the antimicrobial peptide of Kuhner for use in the composition of Podhajny to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler as applied to claim 1 above, and further in view of Schepers (EP 3409113 A1).
Regarding claim 10, Podhajny in view of Butler remains as applied to claim 1 above. Podhajny and Butler are silent as to use of a disinfectant as the antimicrobial. In the same field of endeavor, Schepers teaches natural oil produced by plants used as a disinfectant in polymer compositions (p. 4, [0029]; p. 3, [0018]-[0019]). Schepers’ natural oil reads on the anti-microbial plant extract of instant claim 10. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Podhajny in view of Butler and the disinfectant of Schepers to arrive at the claimed invention, and to provide a coating having a longer antimicrobial effect, as taught by Schepers (p. 3, [0016]).
Regarding claim 20, Podhajny remains as applied to claim 1 above. Podhajny is silent as to injection molding of the composition. In the same field of endeavor, Schepers teaches that antimicrobial food packaging compositions may be injection molded (claim 14). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Podhajny in view of Butler with the injection molding of Schepers to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler as applied to claim 1 above, and further in view of Walker (US 2024/0010020 A1).
Regarding claim 14, Podhajny in view of Butler remains as applied to claim 1 above. Podhajny and Butler are silent as to the dry coating weight that may be used. In the same field of endeavor, Walker teaches treating paper substrate using a dry coating weight of 1.5 to 15 gsm for coatings that may involve water or solvent (claim 2; p. 15, [0175]-[0176]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the dry coating weight of Walker and the composition of Podhajny in view of Butler to arrive at the claimed invention, and to facilitate packaging that is suitable for exposure to high temperature during subsequent manufacturing, as taught by Walker (p. [0183]).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler and Schepers, and further in view of Sandford (US 7655212).
Regarding claims 21 and 22, Podhajny in view of Butler and Schepers remains as applied to claim 20 above. Podhajny, Butler, and Schepers are silent as to use of the composition as a masterbatch to be added to a polymer. In the same field of endeavor, Sandford teaches antimicrobial food packaging where the antimicrobial additive is prepared in a masterbatch and later added to a thermoplastic polymer such as polypropylene, preferably before processing such as injection molding (col. 12, lines 22-24, 30-31, 36; col. 21, lines 33-34; col. 22, line 10). Processing may also include extrusion in the form of a bicomponent fiber (coextrusion) (col. 20, lines 36-37; claim 18). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Podhajny in view of Butler and Schepers with the masterbatch process and extrusion processing of Sandford to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler as applied to claim 1 above, and further in view of Kosugi (JP 2005146070 A, attached with translation).
Regarding claims 25-27, Podhajny in view of Butler remains as applied to claim 1 above. Podhajny is silent as to use of the claimed low-adhesion agent. In the same field of endeavor, Kosugi teaches use of silicone oil (p. 4, [0021]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Podhajny and the silicone oil of Kosugi to arrive at the claimed invention, and to improve the compatibility of the composition, as taught by Kosugi (p. 4, [0021]).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Podhajny in view of Butler and Kosugi as applied to claim 25 above, and further in view of Schepers (EP 3409113 A1).
Regarding claim 28, Podhajny in view of Butler and Kosugi remain as applied to claim 25 above. Podhajny, Butler, and Kosugi are silent as to use of molding or thermoforming with the composition. In the same field of endeavor, Schepers teaches that antimicrobial compositions containing thermoplastic polymers may be molded, coated, thermoformed, and printed (p. 6, [0063]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the molding or thermoforming of Schepers for use with the composition of Podhajny in view of Butler and Kosugi to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07.
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Podhajny in view of Butler, as discussed above in regard to claims 1 and 16. The combined prior art teaches a similar composition and packaging, but fails to teach that the packaging may be sealed in tubular form with the coating on the inside. As such, the instant claim contains a limitation not found in the prior art, and is allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights