Detailed Action
The communications received 06/28/2024 have been filed and considered by the Examiner. Claims 1-7, 9-10, 12-17, and 19-23 are pending.
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.
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.
Claims 1-7, 9-10, 12-17, and 19-23 are 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 claims 1-2, 5-6, 9, 13-17, 20, and 22-23 the phrase "optionally" 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). For purposes of examination they are understood to not further limit the claimed invention. Dependent claims are similarly rejected.
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, claims 2-3, 5-7, 9-10, 12-13, 15-17, 19-20, and 22-23 recite broad recitations, and the claim also recites narrower statements of the ranges/limitations. 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 purposes of examination the broadest range claimed is considered. Dependent claims are similarly rejected.
Claim 4 recites the limitation "said one or more rosin sizing agents", “said nonionic surfactants”, said one or more microcrystalline or paraffinic waxes”, and “said one or more long chain fatty acids” in claim 2. There is insufficient antecedent basis for this limitation in the claim. Dependent claims are similarly rejected.
Claim 5 recites the limitation "said one or more rosin sizing agents", “said nonionic surfactants”, said one or more microcrystalline or paraffinic waxes”, “said one or more surfactants”, and “said one or more long chain fatty acids” in claim 2. There is insufficient antecedent basis for this limitation in the claim. Dependent claims are similarly rejected.
Claim 6 recites the limitation "said one or more rosin sizing agents", “said nonionic surfactants”, said one or more microcrystalline or paraffinic waxes”, “said one or more surfactants”, and “said one or more long chain fatty acids” in claim 2. There is insufficient antecedent basis for this limitation in the claim. Dependent claims are similarly rejected.
Claim 16 recites the limitation "said one or more rosin sizing agents", “said nonionic surfactants”, said one or more microcrystalline or paraffinic waxes”, “said one or more surfactants”, and “said one or more long chain fatty acids” in claim 15. There is insufficient antecedent basis for this limitation in the claim. Dependent claims are similarly rejected.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 7, 10, 12-13, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koenig (US 2019/0177920) hereinafter KOE.
As for claim 1, KOE teaches a barrier coating composition (size press composition) [Abstract; 0038], optionally an oil barrier coating composition for usage on paper or board substrates, said barrier coating composition comprising:
(a) one or more wax emulsions [0039];
(b) one or more polyhydroxyalkanoates [0039];
(c) one or more rheology modifiers [0097]; and
(d) one or more auxiliary additives [0097].
The wax utilized in KOE is understood to be a biowax as the phrasing is “the binder may include one or more of natural product… waxes… or a combination thereof” [0039].
As for claims 7 and 10, KOE teaches that an additive is clay [0139].
As for claim 12, KOE teaches that the total solids content can be 30% which is within the claimed range [0068].
As for claim 13, KOE teaches claim 1 and as currently claimed, the limitations pertain to method steps and the intended use of the barrier coating composition of claim 1 which do not further limit the barrier coating as an article [MPEP 2114]. As the composition of claim 1 is taught, the limitations are met.
As for claim 21, KOE teaches claim 1 and that a paperboard is produced [0016].
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) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE
As for claim 22, KOE teaches a paperboard which would have a first parallel large surface and a second parallel large surface with the coating composition of claim 1 [Abstract; 0015] which could be used for packaging.
The Examiner notes that the sheet-like product of KOE has a similar composition as claimed by applicant, (i.e. the lignocellulosic paperboard with the barrier composition) which would result in the claimed property (KIT test value of 11-12). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the sheet-like product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim(s) 2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE in view of Tobing (US 5,262,479) hereinafter TOB and Daniels et al (US 2005/0014013) hereinafter DAN as evidenced by Wikipedia (Microcrystalline wax, 2015) hereinafter WIK.
As for claim 2, KOE teaches claim 1 but fails to teach the constituents of claim 2.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as hydrogenated animal, fish, plant fats and oils, soya oil, cottonseed oil, castor oil, etc. waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22] and/or paraffinic waxes such as naphthenic hydrocarbon waxes (petroleum derived oils with naphthenic carbon atoms) [col. 3 l. 52 – col. 4 l. 6]. These constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
KOE/TOB fails to teach the surfactant however KOE does generally teach the use of surfactants and defoamers [0097]
DAN teaches that in a paper coating composition [Abstract] that a surfactant usable for stabilization of an emulsion includes alkyl ether sulfates (sodium lauryl sulfate which is listed as an ether and alkyl sulfate) glycerol esters, secondary alcohol ethoxylates [0032-34].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surfactant of DAN as the surfactant in KOE/TOB in order to allow for the stabilization of the emulsion of KOE/TOB.
As for claim 4, KOE teaches claim 1 but fails to teach the constituents of claim 2.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as castor oil waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22]. WIK evidences that microcrystalline waxes have congealing points of 60-93 which overlaps the claimed range of congealing points [paragraphs 1-3]. TOB further teaches that these constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
KOE/TOB fails to teach the surfactant however KOE does generally teach the use of surfactants and defoamers [0097].
DAN teaches that in a paper coating composition [Abstract] that a surfactant usable for stabilization of an emulsion includes secondary alcohol ethoxylates [0032-34].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surfactant of DAN as the surfactant in KOE/TOB in order to allow for the stabilization of the emulsion of KOE/TOB.
As for claim 5, KOE teaches claim 1 and KOE/TOB/DAN as applied to claim 4 does not teach the exact amounts of the constituents however TOB teaches that the exact relative amounts of the constituents of the composition are varied in accordance with use requirements and physical property demands, therefore the composition amounts that would be used in the combination of KOE/TOB/DAN are merely workable ranges required to achieve barrier and coating physical properties.
In accordance with the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed amounts in the composition as TOB teaches that the composition amounts are adjusted to achieve the desired physical properties as would be needed in the combination of KOE/TOB/DAN.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE in view of TOB as evidenced by Chemical Book (68334-00-9(TRISTEARIN) Product Description, 2014) hereinafter CHE.
As for claim 3, KOE teaches claim 1 but fails to teach the biowax of claim 3.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as hydrogenated cottonseed oil, waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22] and/or paraffinic waxes such as naphthenic hydrocarbon waxes (petroleum derived oils with naphthenic carbon atoms) [col. 3 l. 52 – col. 4 l. 6]. These constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
CHE evidences that hydrogenated cottonseed oil has a melting point of 72-75 degrees Celsius which falls within the claimed range [Melting point].
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE in view of TOB, DAN, and Borsinger et al (US 2006/0289138) hereinafter BOR.
As for claim 6, KOE teaches claim 1, KOE teaches claim 1 but fails to teach the constituents of claim 6.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as hydrogenated animal, fish, plant fats and oils, soya oil, cottonseed oil, castor oil, etc. waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22] and/or paraffinic waxes such as naphthenic hydrocarbon waxes (petroleum derived oils with naphthenic carbon atoms) [col. 3 l. 52 – col. 4 l. 6]. These constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
KOE/TOB fails to teach the surfactant however KOE does generally teach the use of surfactants and defoamers [0097]
DAN teaches that in a paper coating composition [Abstract] that a surfactant usable for stabilization of an emulsion includes alkyl ether sulfates (sodium lauryl sulfate which is listed as an ether and alkyl sulfate) glycerol esters, secondary alcohol ethoxylates [0032-34].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surfactant of DAN as the surfactant in KOE/TOB in order to allow for the stabilization of the emulsion of KOE/TOB.
KOE/TOB/DAN fail to teach how the inverse phase biowax emulsion is formed.
BOR teaches that wax emulsions based on natural waxes used in paper products/as coatings can be made utilizing a hot water charge at 70-80 degrees Celsius, combining it with the components that will form the emulsion, heating the emulsion to 70-80 degrees Celsius (understood that holding the mixture at a temperature means that it must be heated to said temperature), homogenizing in a homogenizer, and then cooling to 30-35 degrees Celsius [0068-78].
In accordance with the MPEP, the combination of prior art elements according to known methods to yield predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the method of making the emulsion of BOR in order to make the emulsion of KOE/TOB/DAN as this would have resulted in the creation of a wax emulsion based on biological waxes as required by the combination of KOE/TOB/DAN. As this amounts to the combination of prior art elements according to known methods to yield the predictable result of producing the required emulsion, it is prima facie obvious. As both KOE/TOB/Dan and BOR pertain to paper products and coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE in view of Blakey et al (US 4,048,380) hereinafter BLA.
As for claim 9, KOE teaches claim 7 but does not teach that the clay is incorporated as an aqueous slurry with a solids content of 60-80 wt.%. KOE does teach a defoamer being used [0097].
BLA teaches that the utilization of a clay slurry in paper products at a solids content of 60% which falls within the claimed range which can serve as a defoamer [Abstract; col. 9 l. 34-51].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a clay additive as taught by KOE in the manner and solids content taught by BLA in order to imbue the composition with defoaming properties. As both KOE and BLA pertain to paper products, they are analogous art and one of ordinary skill in the art expects success in the combination.
Claim(s) 14, 19, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE in view of BOR.
As for claim 14, KOE teaches the barrier coating composition according to claim 1 and it is understood that each constituent must be formed at some point in order to exist, however it does not teach exactly how the dispersing/mixing is performed.
BOR teaches that wax emulsions based on natural waxes used in paper products/as coatings can be made by homogenizing all the components in a homogenizer [0068-78].
In accordance with the MPEP, the combination of prior art elements according to known methods to yield predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the method of making the emulsion of BOR in order to make the emulsion of KOE as this would have resulted in the creation of a wax emulsion based on biological waxes as required by the combination of KOE. As this amounts to the combination of prior art elements according to known methods to yield the predictable result of producing the required emulsion, it is prima facie obvious. As both KOE and BOR pertain to paper products and coatings, they are analogous art and one of ordinary skill in the art expects success in their combination. It is understood that by homogenizing all the constituents together that the dispersing of all the elements would occur into the PHA.
As for claim 19, KOE/BOR teach claim 14 but fail to teach the exact amounts and that the biowax emulsion has a particle size.
TOB teaches a paper coating composition [col. 1 l. 1-25] and that the constituents used in the composition aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68]. TOB teaches that the exact relative amounts of the constituents of the composition are varied in accordance with use requirements and physical property demands, therefore the composition amounts that would be used TOB are merely workable ranges required to achieve barrier and coating physical properties.
In accordance with the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed amounts in the composition as TOB teaches that the composition amounts are adjusted to achieve the desired physical properties as would be needed in the combination of KOE/BOR.
KOE teaches that the final composition comprises a total solids content at 30% which is within the claimed range [0068].
As for claim 23, KOE/BOR teaches a paperboard which would have a first parallel large surface and a second parallel large surface with the coating composition of claim 14 which could be used for packaging [Abstract; 0015].
The Examiner notes that the sheet-like product of KOE/BOR has a similar composition as claimed by applicant, (i.e. the lignocellulosic paperboard with the barrier composition) which would result in the claimed property (KIT test value of 11-12). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the sheet-like product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE/BOR as applied to claim 14 in view of TOB and DAN as evidenced by WIK.
As for claim 15, KOE/BOR teach claim 14 but fails to teach the constituents of claim 15.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as hydrogenated animal, fish, plant fats and oils, soya oil, cottonseed oil, castor oil, etc. waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22] and/or paraffinic waxes such as naphthenic hydrocarbon waxes (petroleum derived oils with naphthenic carbon atoms) [col. 3 l. 52 – col. 4 l. 6]. These constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
KOE/BOR/TOB fails to teach the surfactant however KOE does generally teach the use of surfactants and defoamers [0097]
DAN teaches that in a paper coating composition [Abstract] that a surfactant usable for stabilization of an emulsion includes alkyl ether sulfates (sodium lauryl sulfate which is listed as an ether and alkyl sulfate) glycerol esters, secondary alcohol ethoxylates [0032-34].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surfactant of DAN as the surfactant in KOE/TOB in order to allow for the stabilization of the emulsion of KOE/TOB.
WIK evidences that microcrystalline waxes have congealing points of 60-93 which overlaps the claimed range of congealing points [paragraphs 1-3]
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE/BOR as applied to claim 14 in view of TOB and DAN.
As for claim 16, KOE/BOR teaches claim 14 but does not teach the constituents in the amounts.
TOB teaches that in a coating composition compatible with paper (for use in making a paper label) [col. 1 l. 5-19] and capable of serving as an oil resistant barrier [Abstract; col. 8 l. 50-68] that some useful constituents include biowaxes such as castor oil waxes [col. 4 l. 7-36], rosin sizing agents such as esterified rosins and tall oil rosins (pinene reacted to form polyterpene) [col. 3 l. 25-51], microcrystalline waxes [col. 4 l. 7-22]. WIK evidences that microcrystalline waxes have congealing points of 60-93 which overlaps the claimed range of congealing points [paragraphs 1-3]. TOB further teaches that these constituents aid in producing an adhesion while also allowing for the formation of an oil resistant barrier with good tack, peel and shear strength as required [col. 4 l. 55-68; col. 8 l. 63-68].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the biowax of KOE/BOR with the one of TOB and to have added the constituents of TOB in order to have imbued the composition of KOE/BOR with adhesive properties and oil barrier properties while maintaining good physical properties. As both TOB and KOE/BOR pertain to paper coatings, they are analogous art and one of ordinary skill in the art expects success in their combination.
KOE/BOR/TOB fails to teach the surfactant however KOE does generally teach the use of surfactants and defoamers [0097].
DAN teaches that in a paper coating composition [Abstract] that a surfactant usable for stabilization of an emulsion includes secondary alcohol ethoxylates [0032-34].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surfactant of DAN as the surfactant in KOE/BOR/TOB in order to allow for the stabilization of the emulsion of KOE/BOR/TOB.
TOB in addition teaches that the exact relative amounts of the constituents of the composition are varied in accordance with use requirements and physical property demands, therefore the composition amounts that would be used in the combination of KOE/BOR/TOB/DAN are merely workable ranges required to achieve barrier and coating physical properties.
In accordance with the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed amounts in the composition as TOB teaches that the composition amounts are adjusted to achieve the desired physical properties as would be needed in the combination of KOE/BOR/TOB/DAN.
BOR further teaches that wax emulsions based on natural waxes used in paper products/as coatings can be made utilizing a hot water charge at 70-80 degrees Celsius, combining it with the components that will form the emulsion, heating the emulsion to 70-80 degrees Celsius (understood that holding the mixture at a temperature means that it must be heated to said temperature), homogenizing in a homogenizer, and then cooling to 30-35 degrees Celsius [0068-78].
In accordance with the MPEP, the combination of prior art elements according to known methods to yield predictable results is an exemplary rationale of obviousness [MPEP 2143(I)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the method of making the emulsion of BOR in order to make the emulsion of KOE/BOR/TOB/DAN as this would have resulted in the creation of a wax emulsion based on biological waxes as required by the combination of KOE/BOR/TOB/DAN. As this amounts to the combination of prior art elements according to known methods to yield the predictable result of producing the required emulsion, it is prima facie obvious.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over KOE/BOR as applied to claim 14 in further view of Spender et al (US 2020/0095731) hereinafter SPE.
As for claim 20, KOE/BOR teach claim 14 and KOE further teaches that the coating is applied to a paperboard using a conventional paper coater (a blade) followed by heating in an oven [0143] the barrier coating composition understood to produce at least a single coat layer.
KOE/BOR fails to teach a temperature of the oven.
SPE teaches that in the application of an organic based barrier coating that one acceptable drying temperature of the oven is 105 degrees Celsius [Abstract; 0171] which falls within the claimed range. This drying temperature allows for the composition to achieve the desired barrier properties [Abstract].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the drying temperature of SPE to dry using the oven of KOE/BOR in order for the composition of KOE/BOR to achieve the desired barrier properties. As both KOE/BOR and SPE teach coatings applied to paper they are analogous art and one of ordinary skill in the art expects success in the combination.
Conclusion
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/ELISA H VERA/ Examiner, Art Unit 1748