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 .
Withdrawn Rejections
The objections to the claims 2-6, made of record in the office action mailed on 07/07/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 10/01/2025.
The 35 U.S.C. §112, 2nd, rejection(s) of claim 2, made of record in the office action mailed on 07/07/2025, page 2 have been withdrawn due to Applicant’s amendment in the response filed on 10/01/2025.
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.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Cham et al. (WO 2014/071377) in view of Richert et al. (WO 2016/156286) and Carvagno et al. (WO 00/77300).
Regarding claim 1, 3-4, 6-7, 9-10 and 12 Cham discloses a paper-based composite packaging structure comprising a paper layer and a filler layer which may be laminated or otherwise adhered to the paper layer. In certain embodiments, the filler layer comprises a polymer or bio-based polymer. An optional barrier layer may be deposited on to one side of the paper layer or filler layer as desired to provide functional barrier characteristics. The composite paper-based film structure(s) may comprise additional layers such as one or more optional primer layers, adhesive layers, ink layers, and/or sealant layers that can be incorporated into the composite film structure as desired to enable the required functional characteristics of the composite film structure described herein (abstract). Alternative embodiments of the present invention include the application of additional optional metal, metalloid, polyethylene-vinyl alcohol (PVOH), polyglycolic acid (PGA), ethylene-vinyl alcohol (EVOH), polyvinylidene chloride (PVDC), amorphous PLA (aPLA), wax, starch and/or ink layers applied to, laminated, coated, deposited or otherwise adhered or interfaced with the composite film structure described above (para 0008). The filler layer includes PVOH (claim 3). An optional sealant layer may also be applied to one side of the paper layer for sealing capability (page 3).
Based on the teaching of Cham, it would have been obvious to one of ordinary skill in the art to form a barrier multilayer packaging structure with paper layer/filler layer (corresponds to pre-metallized layer)/metal layer/polyester layer (polymeric binder layer of present invention)/PVDC barrier layer/ink layer/adhesive layer/sealant layer.
However, the recitation in the claims that the barrier multilayer packaging structure is “for flexible or semi-rigid unitary sheet” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Cham disclose barrier packaging structure as presently claimed, it is clear that the barrier packaging structure of Cham would be capable of performing the intended use, i.e. for flexible or semi-rigid unitary sheet, presently claimed as required in the above cited portion of the MPEP.
However, Cham fails to disclose that the paper substrate having a grammage of between 40-150 g/m2, filler layer being present in an amount of 1-10 g/m2, a thin metal layer having a thickness of 7-100 nm, polyester layer being present in an amount of 0.1-10 g/m2, PVDC barrier layer being present in an amount of 4-20 g/m2 and innermost layer being present in an amount of 1-10 g/m2.
Whereas, Richert discloses paper product obtained from the method of claim 1 which is a multilayer packaging film and the paper product includes packaging material (claims 1, 18 and 19). The paper substrate has a weight of from 30-300 g/m2 and the metal layer has an aluminum metal particles produced by PVD process and the thickness of the metal particles is in the range of 8-21 nm and the optical density is in the range of 0.2-0.8 (page 19).
Whereas, Carvagno discloses a grease-resistant packaging material comprises a paper substrate coated on one or both sides with a base coating, a layer of metal, a top coating and it is used in food packaging (abstract). The coating layers 12, 14 and 18 are each applied at a coating weight within a range from 0.5-15 g/m2 (page 3-4). The metal layer 16 has a thickness of 12 nm and optical density of 2 and may be formed of aluminum (page 3).
Alternatively, with respect to physical vapor deposition limitation, Any difference imparted by product by process limitations would have been obvious to one having ordinary skill in the art at the time of the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct not the examiner to show the same process of making, see In re Brown, 173 USPQ 685, In re Fessmann, 180 USPQ 324, In re Spada, 15 USPQ2d 1655, In re Fitzgerald, 205 USPQ 594 and MPEP 2113.
It would have been obvious to one of ordinary skill in the art at the time the application was filled to form paper substrate of Cham having a weight of from 30-300 g/m2 as taught by Richert motivated by the desire to have end use applications with desired applicability and to form metal layer of Cham having an aluminum formed with PVD with an optical density of 0.2-0.8 and having a thickness of 8-21 nm as taught by Richert or to form metal layer of Cham having an aluminum with a thickness of 12 nm and optical density of 2 as taught by Carvagno motivated by the desire to have improved barrier properties and performance of the packaging film and to form filler layer, polyester layer, PVDC barrier layer, ink layer and sealant or adhesive layer of Cham in an amount of 0.5-15 g/m2 as taught by Carvagno motivated by the desire to have superior durability and resistance to cracking and improved barrier performance and improved sealing capability.
Regarding claims 2, 8 As Cham in view of Richert and Carvagno discloses paper based barrier structure as presently claimed, it therefore would be obvious that total fiber contents would intrinsically be in the range of 85-95 wt%.
Regarding claim 5, 11 Although Cham does not disclose pre-metallization layer is applied by a polymer dispersion coating process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Cham meets the requirements of the claimed product, Cham clearly meet the requirements of present claims of a polymer dispersion coating process.
Response to Arguments
Applicant’s arguments filed on 10/01/2025 have been fully considered, but they are not persuasive.
Applicant argues that the Patent Office cites Carvagno for the alleged disclosure of a coating layer with coating weight within a range from 0.5-15 g/m². However, Carvagno discloses "One preferred coating formulation comprises a water-
based emulsion or dispersion of an acrylic polymer, together with polyethylene and
polypropylene wax." In contrast, independent Claim 1 recites a number of pure (i.e. additive free) polymers for the polymeric binder. The formulation referenced in Carvagno includes waxes and thus cannot be considered as equivalent to the polymeric binder of independent Claim 1. Cham does not disclose its polymer layer is pure polymer. Even if the polymer layer in Cham is pure polymer-to which Applicant does not acquiesce-the skilled artisan would not have modified Cham to use the amount of the polymer in Carvagno.
However, Carvagno is only used as teaching reference in order to teach to form filler layer, polyester layer, PVDC barrier layer, ink layer and sealant or adhesive layer in an amount of 0.5-15 g/m2. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
With respect to the arguments that Carvagno discloses a preferred coating formulation comprises a water-based emulsion or dispersion of an acrylic polymer, together with polyethylene and polypropylene wax."
Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Applicant argues that the provision of a PVDC layer has the effect of improving barrier properties while being heat sealable and it allows PVDC layer to adhere well to the metal layer.
However, it should be noted that as prior art references disclose the PVDC layer as presently claimed as stated above, it therefore would be obvious that PVDC layer would intrinsically have the effect of improving barrier properties while being heat sealable while maintaining good adhesion.
Conclusion
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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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