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 .
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 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-29 in the reply filed on 9/30/2025 is acknowledged.
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 10 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.
Regarding claim 10, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear as to whether the range of 2-25 and 2-12 are part of the claimed invention.
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 1-13, 16, 17, 20, 21, 24, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568).
Regarding claims 1-4, 9, 10, 20, Catchmark et al. teach an aqueous barrier coating composition (page 2, paragraph [0025]) comprising a cationic polymer which can be a polysaccharide (dissolved first polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]) and an anionic polymer which can be a polysaccharide (dissolved second polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]).
Catchmark et al. teach wherein the polysaccharides include between 50 and 15,000 monosaccharide residues (page 7, paragraph [0060]). The specification discloses that the number of monosaccharide units in a polysaccharide is termed degree of polymerization (DP) (page 5, lines 19-22). Therefore, the polysaccharides of Catchmark et al. have a polymerization degree between 50 and 15,000 which read on Applicant’s claimed first degree of polymerization of at least 150 based on a total solids content of the aqueous barrier coating composition and a second degree of polymerization of 100 or less based on the total solids content of the aqueous barrier composition (page 7, paragraph [0060]).
Catchmark et al. do not disclose wherein the composition comprises 20-80% by weight of the first polysaccharide and 20-80% by weight of the second polysaccharide; wherein a ratio of DP1:DP2 is at least 10:1; and wherein the total solids content of the aqueous barrier coating composition is in a range of 10-90% by weight. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in amount involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the amount of polysaccharides of Catchmark et al. in order to improve the dry and mechanical strength of the substrate material (Catchmark et al., page 10, paragraph [0080]).
Regarding claim 5, Catchmark et al. teach wherein the first polysaccharide is selected from the group consisting of: a water soluble hemicellulose (page 2, paragraphs [0025], [0026]), a water soluble cellulose (page 2, paragraphs [0025], [0026]) and a water soluble starch (page 2, paragraphs [0025], [0026]).
Regarding claim 6, Catchmark et al. teach wherein the first polysaccharide is selected from a group consisting of: a water soluble hemicellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]), a water soluble cellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]) and a water soluble starch (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]).
Regarding claim 7, Catchmark et al. teach wherein the first polysaccharide is carboxymethylcellulose (page 1, paragraph [0016], page 2, paragraph [0026]).
Regarding claim 8, Catchmark et al. teach wherein the first polysaccharide is carboxymethylcellulose (page 1, paragraph [0016], page 2, paragraph [0026]).
Regarding claim 11, Catchmark et al. teach wherein the second polysaccharide is selected from a group consisting of: a water soluble hemicellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]), a water soluble cellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]) and a water soluble starch (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]).
Regarding claim 12, Catchmark et al. teach wherein the second polysaccharide is selected from a group consisting of: a water soluble hemicellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]), a water soluble cellulose (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]) and a water soluble starch (page 1, paragraph [0016], page 2, paragraphs [0025], [0026]).
Regarding claim 13, Catchmark et al. teach wherein the second polysaccharide is xylan (page 1, paragraph [0016], page 2, paragraph [0026]).
Regarding claims 16 and 17, Catchmark et al. teach wherein the composition further comprises about 1% w/w to 50% w/w of a plasticizer which reads on Applicant’s claimed range of 1-30% by weight of a plasticizer based on the total solids content of the aqueous barrier coating composition (page 4, paragraph [0036]), wherein the plasticizer is selected from the group consisting of: glycerol, sorbitol and propylene glycol (page 4, paragraph [0036]).
Regarding claim 21, Catchmark et al. teach a barrier film or coating (page 2, paragraph [0025]) comprising a cationic polymer which can be a polysaccharide (first polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]) and an anionic polymer which can be a polysaccharide (second polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]).
Catchmark et al. teach wherein the polysaccharides include between 50 and 15,000 monosaccharide residues (page 7, paragraph [0060]). The specification discloses that the number of monosaccharide units in a polysaccharide is termed degree of polymerization (DP) (page 5, lines 19-22). Therefore, the polysaccharides of Catchmark et al. have a polymerization degree between 50 and 15,000 which read on Applicant’s claimed first degree of polymerization of at least 150 based on a total solids content of the aqueous barrier coating composition and a second degree of polymerization of 100 or less based on the total solids content of the aqueous barrier composition (page 7, paragraph [0060]).
Catchmark et al. do not disclose wherein the composition comprises 20-80% by weight of the first polysaccharide and 20-80% by weight of the second polysaccharide; wherein a ratio of DP1:DP2 is at least 10:1. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in amount involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the amount of polysaccharides of Catchmark et al. in order to improve the dry and mechanical strength of the substrate material (Catchmark et al., page 10, paragraph [0080]).
Regarding claim 24, Catchmark et al. teach wherein the barrier film or coating is prepared from an aqueous barrier coating composition (page 2, paragraph [0025]).
Regarding claim 27, Catchmark et al. teach a coated substrate comprising a substrate coated (page 1, paragraph [0007], page 2, paragraphs [0025], [0026]) with an aqueous barrier coating composition (page 2, paragraph [0025]) comprising a cationic polymer which can be a polysaccharide (dissolved first polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]) and an anionic polymer which can be a polysaccharide (dissolved second polysaccharide) (page 1, paragraphs [0006], [0016], page 2, paragraph [0025], page 3, paragraph [0029]).
Catchmark et al. teach wherein the polysaccharides include between 50 and 15,000 monosaccharide residues (page 7, paragraph [0060]). The specification discloses that the number of monosaccharide units in a polysaccharide is termed degree of polymerization (DP) (page 5, lines 19-22). Therefore, the polysaccharides of Catchmark et al. have a polymerization degree between 50 and 15,000 which read on Applicant’s claimed first degree of polymerization of at least 150 based on a total solids content of the aqueous barrier coating composition and a second degree of polymerization of 100 or less based on the total solids content of the aqueous barrier composition (page 7, paragraph [0060]).
Catchmark et al. do not disclose wherein the composition comprises 20-80% by weight of the first polysaccharide and 20-80% by weight of the second polysaccharide; wherein a ratio of DP1:DP2 is at least 10:1; and wherein the total solids content of the aqueous barrier coating composition is in a range of 10-90% by weight. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in amount involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the amount of polysaccharides of Catchmark et al. in order to improve the dry and mechanical strength of the substrate material (Catchmark et al., page 10, paragraph [0080]).
Regarding claim 28, Catchmark et al. teach wherein the coated substrate is a fiber based substrate (page 1, paragraph [0007], page 2, paragraph [0026]).
Claims 14, 15, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568) in view of Ren et al. (US Patent Application No. 2013/0101865).
Catchmark et al. are relied upon as disclosed above.
Regarding claims 14 and 15, Catchmark et al. fail to teach wherein the composition further comprises 1-30% by weight of a filler based on the total solids content of the aqueous barrier coating composition. However, Ren et al. teach an aqueous barrier coating composition (page 1, paragraph [0008]) comprising a polysaccharide (page 9, paragraphs [0108]-[0111], page 11, paragraph [0129]) and up to 50% by weight of a filler which reads on Applicant’s claimed range of 1-30% by weight of a filler based on the total solids content of the aqueous barrier coating composition (page 13, paragraph [0145]). The filler is selected from the group consisting of clay and talc (page 13, paragraph [0145]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the filler of Ren et al. in the composition of Catchmark et al. in order to provide pigmentation (Ren et al., page 13, paragraph [0145]).
Regarding claim 22, Catchmark et al. fail to teach wherein a basis weight of the film or coating is in the range of 5-15 g/m2. However, Ren et al. teach a barrier coating (page 1, paragraph [0008]) comprising a polysaccharide (page 9, paragraphs [0108]-[0111], page 11, paragraph [0129]), wherein a basis weight of the coating is at least 5 g/m2 and specifically at least 5 g/m2 or in the range from 2 to 50 g/m2 and specifically 5 to 30 g/m2 which read on Applicant’s claimed range of 5-15 g/m2 (page 2, paragraph [0013]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the basis weight of the coating of Catchmark et al. to that of Ren et al. in order to achieve adequate barrier action (Ren et al., page 2, paragraph [0013]).
Regarding claim 23, Catchmark et al. fail to teach wherein the thickness of the film or coating is in the range of 1-15 µm. However, Ren et al. teach a barrier coating (page 1, paragraph [0008]) comprising a polysaccharide (page 9, paragraphs [0108]-[0111], page 11, paragraph [0129]), wherein the thickness of the coating is at least 1 µm and specifically in a range from 5 to 30 µm which read on Applicant’s claimed range of 1-15 µm (page 2, paragraph [0013]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the basis weight of the coating of Catchmark et al. to that of Ren et al. in order to achieve adequate barrier action (Ren et al., page 2, paragraph [0013]).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568) in view of Mondala et al. (US Patent Application No. 2017/0016182).
Catchmark et al. are relied upon as disclosed above.
Regarding claims 18 and 19, Catchmark et al. fail to teach wherein the composition further comprises 0.1-10% by weight of a polycationic polymer based on the total solids content of the aqueous barrier coating composition. However, Mondala et al. teach a coating composition (page 2, paragraph [0019]) comprising polysaccharide dissolved in water (page 6, paragraph [0054]) and 50-1000 g/t of polyethyleneimine which reads on Applicant’s claimed range of 0.1-10% by weight of a polycationic polymer based on the total solids content of the aqueous barrier coating composition (page 6, paragraph [0055]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the polyethyleneimine of Mondala et al. in the composition of Catchmark et al. in order to provide retention (Mondala et al., page 6, paragraph [0055]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568) in view of Jung et al. (US Patent Application No. 2020/0291580).
Catchmark et al. are relied upon as disclosed above.
Regarding claim 25, Catchmark et al. fail to teach wherein the barrier film or coating has an oxygen transmission rate (OTR), measured according to the standard ASTM D-3985 at 50% relative humidity at 23 °C, or less than 50 cc/m2/24 h/atm. However, Jung et al. teach a barrier coating (page 1, paragraphs [0006], [0022]) comprising a polysaccharide (page 2, paragraph [0053]), wherein the barrier coating has an oxygen transmission rate of 0.01 to 10 cc/m2·day which reads on Applicant’s claimed range of less than 50 cc/m2/24 h/atm, measured according to the standard ASTM D-3985 at 50% relative humidity at 23 °C (page 3, paragraph [0067]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the oxygen transmission rate of Catchmark et al. to that of Jung et al. in order to provide excellent gas barrier properties (Catchmark et al., page 3, paragraph [0067]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568) in view of Backfolk et al. (US Patent Application No. 2020/0056333).
Catchmark et al. are relied upon as disclosed above.
Regarding claim 26, Catchmark et al. fail to teach wherein the barrier film or coating has a KIT value of at least 8, as measured according to standard TAPPI T559. However, Backfolk et al. teach a barrier film or coating (page 1, paragraph [0014], page 2, paragraph [0023]) comprising a polysaccharide (page 2, paragraph [0023]), wherein the barrier film or coating has a KIT value of at least 5 which reads on Applicant’s claimed range of at least 8, as measured according to standard TAPPI T559 (page 2, paragraph [0034]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the KIT value of Catchmark et al. to that of Backfolk et al. in order to provide high solvent barrier property to the coating (Backfolk et al., page 2, paragraph [0034], page 4, paragraph [0049]).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al. (US Patent Application No. 2016/0122568) in view of Tilton (US Patent Application No. 2014/0272352).
Catchmark et al. are relied upon as disclosed above.
Regarding claim 29, Catchmark et al. fail to teach wherein said coated substrate has a repulpability having a reject rate (as determined according to the PTS RH 021/97 test method) below 20%. However, Tilton teaches a coated substrate comprising a barrier coating composition (page 2, paragraph [0056]) having a reject rate from about 10% to about 25% which reads on Applicant’s claimed repulpability having a reject rate (as determined according to the PTS RH 021/97 test method) below 20% (page 5, paragraph [0083]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to modify the reject rate of Catchmark et al. to that of Tilton in order to provide screen cleanliness during repulping (Tilton, page 5, paragraph [0083]).
Conclusion
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/Chinessa T. Golden/Primary Examiner, Art Unit 1788 11/26/2025