DETAILED ACTION
Response to Amendments
In response to the amendment received on 05/29/2025:
• Claims 16-18 and 20-36 are currently pending. Claims 1-15 and 19 are canceled. Claims 17, 21, and 23-36 are withdrawn for being directed to a non-elected invention(s).
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuwata et al. (US-20090053542-A1) (hereinafter referred to as “Kuwata”).
Regarding claims 16 and 18, Kuwata teaches a kit (see Kuwata at para. 0029, teaching a gas barrier laminate comprising a plastic substrate (I), a gas barrier layer (II) formed from a gas barrier layer-forming coating material (C), and an overcoat layer (III) formed from an overcoat layer-forming coating material (F); the gas barrier layer-forming coating material (C) and the overcoat layer-forming coating material (F) collectively correspond to the claimed “kit”), comprising:
• a) a composition for preparing an oxygen barrier coating comprising a polymer having reactive hydroxyl groups, wherein said polymer in the composition a) is polyvinyl alcohol (see Kuwata at para. 0032, teaching a gas barrier layer-forming coating material (C) containing a polyalcohol-based polymer (A) and a polycarboxylic acid-based polymer (B); also see Kuwata at para. 0051, teaching the polyalcohol-based polymer (A) to be an alcohol-based polymer containing two or more hydroxyl groups, and that polyvinyl alcohol is a suitable polymer);
• b) a composition for preparing a layer selected from the group consisting of an ink layer and an overprint varnish layer (see Kuwata at para. 0101, teaching an overcoat-layer forming coating material (F) that contains a monovalent metal compound (D) and/or a bivalent or higher metal compound (E); also see Kuwata at para. 0142, teaching the overcoat layer-forming material (F) may include a pigment; thus, the overcoat layer-forming material (F) reads on the claimed “ink layer”); wherein
• composition b) comprises a component that is capable of crosslinking with the polymer of composition a) when compositions a) and b) are applied one after another onto an uncoated or coated substrate such that composition b) that comprises said component that is capable of crosslinking with the polymer of composition a) is applied adjacent to composition a), and wherein said component that is capable of crosslinking with the polymer of composition a) comprises at least one functional group that is selected from the group consisting of isocyanate, isocyanurate, carbodiimide, aziridine, epoxide, styrene maleic anhydride, silane and polyethylene imine (see Kuwata at para. 0137, teaching their overcoat layer (III) may also contain a crosslinking agent, such as an isocyanate compound, which is the same crosslinking agent taught by Applicants (see instant claim 16); moreover, Kuwata teaches the same resin in the gas barrier as that claimed, polyvinyl alcohol (see Kuwata at para. 0051 and instant claim 18); thus, since the isocyanate crosslinking agent is the same as that claimed, and since the polyvinyl alcohol resin in the gas barrier layer is the same as that claimed, it necessarily follows that upon contact with one another, the isocyanate crosslinking agent in the overcoat layer (III) is capable of crosslinking with the polyvinyl alcohol in the gas barrier layer (II), as claimed; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)).
Regarding claim 20, Kuwata teaches the kit according to claim 16 outlined above, wherein said composition b) is a 2K composition (see Kuwata at para. 0101; it necessarily follows that the composition of Kuwata is a “2K” (i.e., two-component) composition, as the composition may be imaginatively split into two components in its formation (e.g., when the components are being added sequentially, the first mixed half may be labeled as the “first component”, while the second half mixed may be labeled as the “second component”); alternatively, it is noted that the limitation “wherein said composition b) is a 2K composition" is considered a product-by-process limitation; it is the examiner's position that the recited limitation does not impart any distinct structural characteristics to the claimed composition; in other words, the notion that composition b) is formed by combining two separate components together does not affect the final structural characteristics of the composition; consequently, the cited prior art teaches all of the positively recited structure of the claimed apparatus or product, see In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), see MPEP § 2113).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwata, as applied to claim 16 above, and further in view of Mikami et al. (JP-2007290268-A), with reference to the previously included machine translation (hereinafter referred to as “Mikami”).
Regarding claim 22, while Kuwata teaches the kit according to claim 16 outlined above, Kuwata fails to explicitly teach the composition b) as being a composition for preparing a white ink layer.
However, Mikami teaches a laminate for a packaging material having a base material layer, a printing layer, and a gas barrier layer (see Mikami at pg. 3, para. 2-4). Moreover, Mikami teaches the printing ink layer may include a white pigment (see Mikami at pg. 10, para. 1).
Kuwata teaches their gas barrier laminate as being used on a packaging material (see Kuwata at para. 0031), and further teaches the overcoat layer-forming material (F) may include a pigment (see Kuwata at para. 0142).
In this case, white pigments are known materials suitable for use as colorants in a printing layer in a gas barrier laminate (as exemplified by Mikami at pg. 3, para. 2-4 and pg. 10, para. 1), and thus its use in the ink of Kuwata would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use a white pigment as the pigment in the overcoat layer-forming material (F) of Kuwata, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Response to Arguments
Applicant's arguments filed 05/29/2025 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Kuwata as providing an internal cross-linked coating, rather than an external cross-linked coating (see Applicant’s Remarks at pg. 9, para. 1). Applicants further argue their present invention as having strong covalent bonds formed from crosslinking, which Kuwata does not teach with their crosslinking agent, and that there is no disclosure in Kuwata that remaining reaction partners may form external cross-linking with an adjacent layer via covalent bonds (see Applicant’s Remarks at pg. 9-10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The specific crosslinking agent relied upon by the Examiner in the current grounds of rejection is the isocyanate crosslinking agent present in the overcoat layer composition of Kuawata (see Kuwata at para. 0137; also see rejections above). In other words, the metal compound (D) taught by Kuwata no longer corresponds to the claimed crosslinking agent. The Examiner agrees that the teachings of Kuwata suggest such an isocyanate crosslinking agent as being primary used to crosslink internally with the resin in the overcoat layer, rather than with the polyvinyl alcohol in the adjacent layer (see Kuwata at para. 0139 and Examples). However, such a teaching does not preclude the teachings of Kuwata from reading on the claim, as explained below.
As the claim currently stands, the claim reads: “wherein composition b) comprises a component that is capable of crosslinking with the polymer of composition a) when compositions a) and b) are applied one after another onto an uncoated or coated substrate such that composition b) that comprises said component that is capable of crosslinking with the polymer of composition a) is applied adjacent to composition a), and wherein said component…” (emphasis added by Examiner).
Such a limitation can be read as a property limitation, where in the case that the two compositions are placed adjacent to one another, the crosslinking agent is capable of crosslinking with the polymer in the undercoat layer. Such a property is met by Kuwata. In the case of Kuwata, two compositions in the kit are taught: the gas barrier layer composition (C), which contains a polyvinyl alcohol, and the overcoat layer composition (F), which contains an isocyanate crosslinking agent. It necessarily follows that in the event that the two compositions are overlaid adjacent to one another (prior to any curing or heating step), the isocyanate crosslinking agent is capable of crosslinking with at least some of the many free-floating hydroxyl groups of the polyvinyl polymer. Nothing precludes the isocyanate from crosslinking internally with the resin AND externally with the polyvinyl polymer in such a scenario. This is further supported by the fact that the polymer and crosslinking agent of Kuwata are identical to those claimed, namely, polyvinyl alcohol and isocyanate, respectively, and thus would be expected to meet the claimed property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
In summary, even though Kuwata may teach their isocyanate crosslinking agent as primarily crosslinking internally with the resin (presumably following curing/heating steps, which consume a large portion of the free-floating hydroxyl groups in the polyvinyl alcohol), this does not necessarily preclude the compositions of Kuwata from reading on the claim.
Moreover, neither the claims nor the specification define the specific crosslinking to be “weak” or “strong”, or “covalent” or “hydrogen-bonding”-based. Consequently, any kind of crosslinking suitably reads on the claims.
Next, Applicants argue the OTR (oxygen transmission rates) in the examples of Kuwata, including examples with an isocyanate crosslinking agent, as being much higher than the instant examples, suggesting crosslinking as occurring internally rather than externally (see Applicant’s Remarks at pg. 10-11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The compositions of Kuwata read on the claimed kit, regardless of whether external crosslinking actually occurs (i.e., the compositions are capable of crosslinking, see analysis above). Consequently, the OTR values present in Kuwata do not detract from the analysis as presented.
Lastly, with respect to potential arguments surrounding unexpected OTR results, such arguments are not relevant with respect to a 102 anticipation rejection. See MPEP § 2131.04.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./
Examiner, Art Unit 1731
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731