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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-27, in the reply filed on 5/29/2026 is acknowledged.
Claims 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 14 is 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 or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitation “in the range of 1-100 nm”, and the claim also recites “preferably in the range of 10-100 nm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purpose of examination, the examiner considers the feature introduced by such narrower language is not required. Appropriate correction and clarification are required.
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) 1-10 and 12-27 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 2019/0270289; “Okamoto”).
Regarding claim 1, Okamoto teaches a paper or paperboard-based packaging laminate comprising (para [0001] [0028], [0056] [0059], the packaging laminate of Okamoto):
- a paper or paperboard base layer (para [0028], the paper base layer),
- a mineral coating layer (para [0040], the mineral coating layer of which the suitable material includes kaolin),
- a polyvinyl alcohol (PVOH) coating layer (para [0044], the barrier layer of suitable material of POVH), and
- a metallized film layer (para [0056], the barrier film that is of aluminum/metallized film layer),
- wherein the mineral coating layer is arranged between and in contact with the base layer and the PVOH coating layer (para [0053], the layers configuration of base layer/water barrier mineral coating layer/gas barrier PVOH layer, meeting the claimed limitation), and wherein the metallized film layer is laminated to the PVOH coating layer (para [0056]).
Okamoto does not specifically teach the oxygen transfer rate (OTR) of its packaging laminate as instantly claimed, i.e., measured according to the standard ASTM F-1927 at 90% relative humidity and 38 °C of less than 5 cc/m2/day.
Okamoto teaches the oxygen transfer rate (OTR) of its packaging laminate is a result effective variable that affect the packaging laminate’s performance, shelf life, content protection (para [0059]), in that the factors such as the barrier coating quantity and/or the pigment to polymer ratio affect the oxygen transfer rate of the packaging laminate (para [0044]-[0049]).
Absent a showing of criticality with respect to oxygen transfer rate (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust oxygen transfer rate through routine experimentation in order to achieve the desired properties (i.e., the packaging laminate’s performance, shelf life, content protection, etc.) of the packaging laminate once produced, which would have arrived at a workable amount that falls within the broad range as instantly claimed, if measured under the same conditions, i.e., according to the standard ASTM F-1927 at 90% relative humidity and 38 °C of less than 5 cc/m2/day. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 2, Okamoto teaches as in one its embodiments that the mineral coating layer comprises suitable mineral in amount of about 33% to 95% (para [0042], 5 to 200 parts resin per 100 parts pigments, which calculated as 100/105 to 100/300, which is 33% to 95%), which range overlaps with the instantly claimed range of 65-90 wt% of a particulate mineral, and suitable binder in amount of about 5 to 67% (para [0042]), which range overlaps with the instantly claimed range of 10-35 wt% of a binder. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 3, Okamoto teaches the suitable material for the particulate mineral includes kaolin, calcium carbonate, bentonite, talc, and combinations thereof (para [0040]), meeting the claimed limitations.
Regarding claim 4, Okamoto teaches as in one its embodiments that the mineral coating layer is of calcium carbonate (para [0040]), meeting the claimed limitations.
Regarding claim 5, Okamoto does not specifically teach the inclusion of a mixture as instantly claimed, i.e., of a first calcium carbonate comprising between 50 - 70 wt% of particles with a particle size of less than 2 µm and a second calcium carbonate comprising between 80 - 100 wt% of particles with a particle size of less than 2 µm.
However, Okamoto teaches that the mineral coating layer comprises calcium carbonate mixtures as desired for desired barrier properties (para [0040]), and further teaches suitable calcium carbonates having average size of 5 µm or smaller (para [0041]), which range overlaps with the instantly claimed range of less than 2 µm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
It would have been obvious to a person of ordinary skill in the art to adjust the specific wt% of the respective calcium carbonate in the calcium carbonate mixture through routine experimentation in order to achieve the desired properties (i.e., the packaging laminate’s barrier performance, etc.) of the packaging laminate once produced, which would have arrived at a workable amount that falls within the broad range as instantly claimed, i.e., a mixture of a first calcium carbonate comprising between 50 - 70 wt% of particles with a particle size of less than 2 µm and a second calcium carbonate comprising between 80 - 100 wt% of particles with a particle size of less than 2 µm. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 6, Okamoto teaches the suitable material of the binder includes latex binder (para [0007]).
Regarding claim 7, Okamoto teaches that the suitable grammage of the mineral coating layer is in the range of 3-50 g/m2(para [0043]), which range overlaps with the instantly claimed range of 4-25 g/m2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 8, Okamoto teaches the PVOH coating layer comprises the suitable PVOH in the amount of about up to 99%, up to 83%, if calculated (para [0044] [0046], pigment/polymer is about 1/100 to 1000/100, for example, 100/100+1 = 0.99, 100/100+20 = 0.83), which range overlaps with the instantly claimed range of at least 70 wt% PVOH, based on a total dry weight of the PVOH coating layer. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 9, Okamoto teaches the suitable grammage of the PVOH coating layer is in a range of 0.2-20 g/m2(para [0049]), which range overlaps with the instantly claimed range of 1-20 g/m2. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 10, Okamoto teaches the metallized film layer comprises a metallized polymer film (para [0056]), meeting the claimed limitations.
Regarding claim 12, Claim 12 contains process limitations with regards to formation process of the metallized film layer. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant film. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [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. In this case, Okamoto teaches depositing metal on the film layer (para [0056]).
Regarding claim 13, Okamoto teaches the suitable metallization layer comprises a metal, such as aluminum (para [0056]), meeting the claimed limitations.
Regarding claim 14, Okamoto teaches as in one its embodiments the inclusion of a metallization layer (para [0078]).
Absent a showing of criticality with respect to the layer thickness (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the thickness of metallization layer through routine experimentation in order to achieve the desired properties (i.e., barrier properties, etc.) of the packaging laminate once produced, which would have arrived at a workable thickness that falls within the broad range as instantly claimed, i.e., 1-100 nm. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 15, Okamoto teaches as in one its embodiments the inclusion of a metallization layer (para [0078]).
Absent a showing of criticality with respect to the grammage of the metallized film layer (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the grammage of the metallized film layer through routine experimentation in order to achieve the desired properties (i.e., barrier properties, etc.) of the packaging laminate once produced, which would have arrived at a workable grammage that falls within the broad range as instantly claimed, i.e., 10- 70 g/m2. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 16, Okamoto teaches as in one its embodiments the metallized film layer is attached to the PVOH coating layer by an adhesive tie layer (para [0054], the lamination layer is considered being adhesive tie layer meeting the claimed limitation).
Regarding claim 17, Okamoto teaches the suitable adhesive tie layer comprises a polyethylene (para [0054], the lamination layer is a polyethylene layer).
Regarding claim 18, Okamoto teaches the paper or paperboard base layer has a basis weight in a range of 20-500 g/m2 (para [0034]).
Regarding claim 19, Okamoto teaches the paper or paperboard base layer is a multiply paperboard (para [0032] [0066]).
Regarding claim 20, Okamoto teaches its paper or paperboard base layer is of recycled fibers (para [0032], de-inked pulp), meeting the claimed limitations.
Regarding claim 21, Okamoto teaches the further inclusion of suitable protective polymer layer arranged on the paper or paperboard base layer (para [0053], the PE layer).
Regarding claim 22, Okamoto teaches the further inclusion of suitable protective polymer layer arranged on the metallized film layer (para [0053], the PE layer).
Regarding claims 23-24, Okamoto does not specifically teach the oxygen transfer rate (OTR) of its packaging laminate as instantly claimed.
Okamoto teaches the oxygen transfer rate (OTR) of its packaging laminate is a result effective variable that affect the packaging laminate’s performance, shelf life, content protection (para [0059]), in that the factors such as the barrier coating quantity and/or the pigment to polymer ratio affect the oxygen transfer rate of the packaging laminate (para [0044]-[0049]).
Absent a showing of criticality with respect to oxygen transfer rate (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust oxygen transfer rate through routine experimentation in order to achieve the desired properties (i.e., the packaging laminate’s performance, shelf life, content protection, etc.) of the packaging laminate once produced, which would have arrived at a workable amount that falls within the broad range as instantly claimed, if measured under the same conditions, i.e., measured according to the standard ASTM F-1927 at 50% relative humidity and 23 of less than 5 cc/m2/day as in claim 23, and measured according to the standard ASTM F-1927 at 90% relative humidity and 38 of less than 3 cc/m2/day as in claim 24. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claims 25-26, Okamoto teaches as in one of its embodiments that the packing laminate having a water vapor transfer rate (WVTR), measured according to standard ASTM F1249 at 90% relative humidity and 40 C of 0.5 g/m2/day (para [0062], examples in Table 1), which range overlaps with the instantly claimed range of claims 25-26. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 27, Okamoto is silent as to the reject rate of its packaging laminate. However, it is expected that the paper-based packaging laminate of Okamoto would possess the same or similar reject rate as instantly claimed, if measured in the same manner, and is capable of performing in the same or similar manner as the instantly claimed paper-based packaging laminate (i.e., having a reject rate according to PTS RH 021/97 of less than 30 %), because the paper-based packaging laminate of Okamoto and the instantly paper-based packaging laminate are identical or substantially identical in composition and in the layer configuration as discussed above. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Okamoto as applied to claim 1 above, in view of WO2020/261170 to Knoos et al. (“Knoos”).
The limitations of claim 1 are taught by Okamoto as discussed above.
Regarding claim 11, Okamoto teaches as in one its embodiments the inclusion of a metallization layer (para [0078]). Okamoto does not teach a specific metallized film layer as instantly claimed.
Knoos teaches a paper-based packaging laminate includes a paper base material, mineral coating, POVH coating layer, and metallization layer (page 9, lines 1-33, page 15, lines 5-20, page 23, lines 29-30, page 18, lines 20-29). Knoos teaches the suitable metallization layer is of cellulose based layer; and Knoos teaches such metallization layer provides high oxygen barrier at a high humidity and high temperatures (page 19, lines 1-11, page 10, lines 1-30). Knoos teaches as in one of its embodiments at least 80 % by weight of the metallized film layer is cellulose based (page 21, lines 29-31), meeting the claimed limitations of having more than 95 % by weight of the metallized film layer is cellulose based.
It would have been obvious to one of ordinary skill in the art to modify the packaging laminate of Okamoto, to select and include a metallized film layer as taught by Knoos that is a metallized film layer of at least 80 % by weight is cellulose based as taught by Knoos (page 21, lines 29-31), to provide an improved packaging laminate with high oxygen barrier at a high humidity and high temperatures as taught by Knoos, which would have predictably arrived at a satisfactory packaging laminate that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Knoerzer et al. (US 2013/0101831) which teaches a paper-based composite film and method for making a paper-based composite film comprising an outer paper layer having a smooth surface, an optional primer layer on said smooth surface, a barrier layer on said smooth surface, and an optional heat-seal layer on said barrier layer (para [0007]). Cham et al. (US 2013/0101855) which teaches a multi-layer, flexible packaging comprises a paper layer (314); a filler layer (322) applied to at least one surface of the paper layer for smoothing at least one surface of the paper layer; and an optional primer layer (320) deposited on the filler layer surface, where the primer enhances the wettability of the primed surface (para [0053]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782
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