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 .
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 36 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 36, the claim does not recite what in the barrier packaging film is capable of forming a wave structure, such as any of the layers or the entire barrier packaging film. Thus, one of ordinary skill in the art would be uncertain of the metes and bounds of the claim which renders the claim indefinite.
For purposes of examination, any of the layers or the entire barrier packaging film can be capable of forming the wave structure.
Claim Rejections - 35 USC § 103
Claims 1, 5, 11-16, and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al. (US 5,942,320 A) in view of Forloni et al. (US 2011/0039098 A1).
Regarding Claim 1, Miyake teaches a barrier packaging film (Abstract; Field of Invention) comprising a polyolefin substrate, (Column 5, Lines 24-30, Column 23, Lines 10-15), an inorganic layer having a thickness of 0.01 to 0.5 microns (Column 10-11), which overlaps the claimed range, an polymeric buffer layer, anchor coat layer, positioned between and in direct contact with the polyolefin substrate and the inorganic coating layer having a thickness of 0.01 to 5 microns, which overlaps the claimed range, (Column 6, 10), and a polyolefin sealing layer (Column 15-16).
Miyake teaches the thickness of the inorganic layer is 0.01 to 0.5 microns and the polymeric buffer layer has a thickness of 0.01 to 5 microns. (Column 6, 10-11). This creates a ratio of the thickness of polymeric buffer layer to inorganic coating layer that overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Miyake does not specifically teach the free shrink of the polyolefin substrate.
Forloni teaches a multilayer gas barrier packaging film comprising multiple polymer layers, including a polyolefin layer (Abstract). Forloni teaches the layers of the film should have a heat shrink of at least 5% at 95 degrees C measured under ASTM D2732 (Paragraph 0031, 0098). Forloni teaches this allows the gas barrier film to be considered heat-shrinkable and be used in various heat shrinkable applications, such as lid packaging. (Paragraph 0031, 0098, 0105). Thus, it would have been obvious to one with ordinary skill in the art to ensure the polyolefin substrate of Miyake to have the claimed free shrink as taught by Forloni to allow the barrier packaging film to be used in heat-shrinkable applications, such as lid packaging.
Miyake teaches the polymeric buffer layer, anchor coat layer, has an elastic/Young’s modulus of 0.1×101 to 1×103 N/mm2 (MPa). (Column 4, Lines 14-25). This overlaps the claimed range of 0.1 to 100 MPa. However, Miyake does not specifically teach the Young’s modulus is determined at 95 degrees C using the claimed ASTM method. Miyake does teach this packaging can be used in high temperatures, such as retort packaging which can go above 120 degrees C. (Column 15). Miyake teaches this soft, low Young’s modulus range, anchor layer improves the blocking properties of the anchor coat. (Column 6). Thus, as Miyake teaches this softer Young’s modulus range provides blocking advantages and the composite can be used at temperatures to 120 degrees C and above, it would have been obvious to one with ordinary skill in the art to set the Young’s modulus of the anchor layer to overlap the claimed range at the 95 degrees C for good blocking properties. Furthermore, one of ordinary skill in the art would reasonably expect the Young’s modulus range to apply to all types of measuring, including ASTM E2546-15 Annex X.4, to get the soft and desired properties in Miyake.
Regarding Claim 5, Miyake teaches the polyolefin oriented can be oriented polypropylene (Column 5, Lines 24-55) and the polyolefin sealing layer is a propylene sealing layer. (Column 15, Lines 48-67, Column 16, Lines 1-15).
Regarding Claim 11, Miyake teaches the polyolefin substrate can have a thickness of 3 to 200 microns. (Column 5, Lines 40-50). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 12, Miyake teaches the polymeric buffer layer, anchor coat layer, having a thickness of 0.01 to 5 microns, which overlaps the claimed range, (Column 6, 10). This overlaps the claimed range. This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 13, Miyake teaches the inorganic layer comprises a metal layer or oxide coating layer and having a thickness of 0.01 to 0.5 microns (Column 10-11), which overlaps the claimed range (Column 10-11). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 14, Miyake teaches the thickness of the inorganic layer is 0.01 to 0.5 microns and the polymeric buffer layer has a thickness of 0.01 to 5 microns. (Column 6, 10-11). This creates a ratio of the thickness of polymeric buffer layer to inorganic coating layer that overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 15, Forloni teaches the layers of the film should have a heat shrink of at least 5% at 95 degrees C measured under ASTM D2732 (Paragraph 0031, 0098). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 16, Miyake teaches the polymeric buffer layer comprises a polyurethane-based resin (Column 6-7).
Regarding Claim 36, Miyake and Forloni do not specifically teach the barrier packaging film is capable of forming the wave structure. However, Applicant teaches this capability is due to the polymeric buffer layer thickness, elastic modulus of the polymeric buffer material and the thickness of the inorganic layer. (Response to Non-Final Rejection 07/29/2026, Page 7). Thus, as Miyake and Forloni teach overlapping ranges for these features to the claimed invention, then it would have been obvious to one with ordinary skill in the art to reasonably expect the film of Miyake and Forloni would also be capable of forming such wave patterns at heat treatment above 95 degrees C.
Regarding Claim 37, Miyake teaches the barrier packaging film should have, after heat treatment at 120 degrees C, an oxygen gas permeability at 25 degrees of no more than 2 cc/m2*24 hours, (Claim 24 of Miyake; Column 15, Lines 18-35). While Miyake does not specifically teach the permeability is measured at 1 atm, 23 degrees C, and 50 RH using ASTM F1927, given that Miyake teaches desire for low oxygen gas permeability, it would have be reasonable to one with ordinary skill in the art to expect the oxygen gas permeability range taught by Miyake at 25 degrees would overlap the claimed oxygen gas permeability range at 1 atm, 23 degrees C and 50 RH using ASTM F1927.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake and Forloni and in view of Tanaka et al. (US 2022/0153006 A1)
Regarding Claim 2, Miyake teaches the polyolefin substrate is a first exterior layer and the polyolefin sealing layer is a second exterior layer.
Miyake does not specifically teach an adhesive layer is located between the polyolefin sealing layer and the inorganic coating layer.
Tanaka teaches a barrier packaging film comprising polyolefin substrate, inorganic coating layer, anchor coat, and a polyolefin sealing layer, where both the polyolefin substrate and polyolefin sealing layer are exterior layers (Abstract; Claim 1 of Tanaka; Paragraph 0032; Fig. 1). Tanaka teaches using an adhesive layer between the polyolefin sealing layer and the inorganic coating layer (Item S). Tanaka teaches applying the adhesive layer to the sealant layer to be applied to the rest of the film ensures proper bonding at high temperatures for retort treatment. (Paragraph 0082-0083). Thus, it would have been obvious to one with ordinary skill in the art to place an adhesive layer between the polyolefin sealing layer and the inorganic layer of Miyake for better adhesion of the sealant layer at high temperatures.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake and Forloni, in further view of Nagai et al. (US 6,106,933 A).
Regarding Claim 6, Miyake does not specifically teach the oriented polypropylene film comprises a homopolymer polypropylene.
Nagai teaches a gas barrier film, where the biaxially oriented substrate can be either homopolymer polypropylene or polypropylene copolymer. (Abstract; Column 3, Lines 20-40). Nagai teaches polypropylene homopolymer, crystalline isotactic, offers better thermal stability. Column 3, Lines 20-40). Thus, it would have been obvious to one with ordinary skill in the art to use a polypropylene homopolymer in Miyake for improved thermal stability.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake and Forloni, in further view of Yamada et al. (US 2021/0023828 A1).
Regarding Claim 10, Miyake does not specifically teach the barrier packaging film has a total composition greater than 80% by weight of polyolefin.
Yamada teaches a gas barrier packaging film (Abstract; Paragraph 0119), where the polyolefin comprises 90 mass% or greater of the film. (Paragraph 0049). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Yamada teaches this range enhances the recyclability of the film. (Paragraph 0049). Thus it would have been obvious to one with ordinary skill in the art to set the polyethylene/polyolefin mass% of Miyake to the claimed range to enhance recyclability as taught by Yamada.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14, 16, 17, 19, and 22 of copending Application No. 18,022,308 in view of Miyake and Forloni.
Regarding Claim 1, 5, 11-16, copending teaches a barrier film comprise a polymeric substrate layer with an overlapping thickness range, an inorganic coating layer with an overlapping thickness range, a polymeric buffer layer of propylene, polyurethane or polylactic acid, positioned between and in direct contact with the inorganic coating layer, and an overlapping thickness ratio of the polymeric buffer layer and inorganic coating layer. (Claims 14, 16, 17, 19, 22, of copending). Copending does not teach the polyolefin sealing layer, the free shrink of the polyolefin substrate or the Young’s modulus of the polymeric buffer layer.
Forloni teaches a multilayer gas barrier packaging film comprising multiple polymer layers, including a polyolefin layer (Abstract). Forloni teaches the layers of the film should have a heat shrink of at least 5% at 95 degrees C measured under ASTM D2732 (Paragraph 0031, 0098). Forloni teaches this allows the gas barrier film to be considered heat-shrinkable and be used in various heat shrinkable applications, such as lid packaging. (Paragraph 0031, 0098, 0105). Thus, it would have been obvious to one with ordinary skill in the art to ensure the polyolefin substrate of Copending to have the claimed free shrink as taught by Forloni to allow the barrier packaging film to be used in heat-shrinkable applications, such as lid packaging.
Miyake teaches the polymeric buffer layer, anchor coat layer, has an elastic/Young’s modulus of 0.1×101 to 1×103 N/mm2 (MPa). (Column 4, Lines 14-25). This overlaps the claimed range of 0.1 to 100 MPa. However, Miyake does not specifically teach the Young’s modulus is determined at 95 degrees C using the claimed ASTM method. Miyake does teach this packaging can be used in high temperatures, such as retort packaging which can go above 120 degrees C. (Column 15). Miyake teaches this soft, low Young’s modulus range, anchor layer improves the blocking properties of the anchor coat. (Column 6). Thus, as Miyake teaches this softer Young’s modulus range provides blocking advantages and the composite can be used at temperatures to 120 degrees C and above, it would have been obvious to one with ordinary skill in the art to set the Young’s modulus of the anchor layer to overlap the claimed range at the 95 degrees C for good blocking properties. Furthermore, one of ordinary skill in the art would reasonably expect the Young’s modulus range to apply to all types of measuring, including ASTM E2546-15 Annex X.4, to get the soft and desired properties in Copending.
Miyake teaches a barrier packaging film (Abstract; Field of Invention) comprising a polyolefin substrate, (Column 5, Lines 24-30, Column 23, Lines 10-15), an inorganic layer having a thickness of 0.01 to 0.5 microns (Column 10-11), which overlaps the claimed range, an polymeric buffer layer, anchor coat layer, positioned between and in direct contact with the polyolefin substrate and the inorganic coating layer having a thickness of 0.01 to 5 microns, which overlaps the claimed range, (Column 6, 10), and a polypropylene sealing layer (Column 15-16).
Miyake teaches a sealing layer allow for simplified production of the film into a bag (Column 15); therefore, it would have been obvious to one with ordinary skill in the art to add a polyolefin sealing layer to the laminate of copending.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14, 16, 17 of copending Application No. 18,022,308 in view of Miyake and Forloni and Tanaka.
Regarding Claim 2, Miyake teaches the polyolefin substrate is a first exterior layer and the polyolefin sealing layer is a second exterior layer.
Miyake does not specifically teach an adhesive layer is located between the polyolefin sealing layer and the inorganic coating layer.
Tanaka teaches a barrier packaging film comprising polyolefin substrate, inorganic coating layer, anchor coat, and a polyolefin sealing layer, where both the polyolefin substrate and polyolefin sealing layer are exterior layers (Abstract; Claim 1 of Tanaka; Paragraph 0032; Fig. 1). Tanaka teaches using an adhesive layer between the polyolefin sealing layer and the inorganic coating layer (Item S). Tanaka teaches applying the adhesive layer to the sealant layer to be applied to the rest of the film ensures proper bonding at high temperatures for retort treatment. (Paragraph 0082-0083). Thus, it would have been obvious to one with ordinary skill in the art to place an adhesive layer between the polyolefin sealing layer and the inorganic layer of copending and Miyake for better adhesion of the sealant layer at high temperatures.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14, 16, 17 of copending Application No. 18,022,308 in view of Miyake, Forloni, and Nagai.
Regarding Claim 6, Miyake does not specifically teach the oriented polypropylene film comprises a homopolymer polypropylene.
Nagai teaches a gas barrier film, where the biaxially oriented substrate can be either homopolymer polypropylene or polypropylene copolymer. (Abstract; Column 3, Lines 20-40). Nagai teaches polypropylene homopolymer, crystalline isotactic, offers better thermal stability. Column 3, Lines 20-40). Thus, it would have been obvious to one with ordinary skill in the art to use a polypropylene homopolymer in Miyake for improved thermal stability.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14, 16, 17 of copending Application No. 18,022,308 in view of Miyake, Forloni, and Yamada.
Regarding Claim 10, Copending does not specifically teach the barrier packaging film has a total composition greater than 80% by weight of polyolefin.
Yamada teaches a gas barrier packaging film (Abstract; Paragraph 0119), where the polyolefin comprises 90 mass% or greater of the film. (Paragraph 0049). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Yamada teaches this range enhances the recyclability of the film. (Paragraph 0049). Thus it would have been obvious to one with ordinary skill in the art to set the polyethylene/polyolefin mass% of copending to the claimed range to enhance recyclability as taught by Yamada.
This is a provisional nonstatutory double patenting rejection
Response to Arguments
Applicant’s arguments have been fully considered.
Applicant argues that Miyaki teaches overlapping ranges that go outside the claimed ranges. This argument is found unpersuasive. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). One of ordinary skill in the art would select within the claimed ranges, as Miyaki teaches such ranges are suitable.
Applicant argues that Miyaki teaches examples that are outside the claimed range. This argument is found unpersuasive. The broad disclosure of Miyaki teaches overlapping ranges that establish a prima facie case. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. (MPEP §2123)
Applicant argues the claimed ranges show criticality through unexpected results of the thickness ratio. This argument is found unpersuasive, as the data provided does not support the broader range recited in Claim 1. The data provided only shows one comparative example having the ratio of 14, while operable ranges are from 42.5 to 87.5, which does not provide support for the criticality of 20 to 500 range. For a showing of unexpected results, objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. (MPEP §716.02(d)).
Applicant argues the copending Application does not teach a ratio of the thickness of the polymeric buffer layer to the thickness of the inorganic coating layer. This argument is found unpersuasive, as Claim 16 of copending teaches the thickness of the inorganic layer, 0.005 to 0.1 microns, and Claim 14 teaches the polymeric buffer layer is 1.1 to 20 times the amplitude of the inorganic coating layer, 0.25 to 1 micron. Thus, copending teaches a thickness ratio that overlaps the claimed range.
The rejections are maintained.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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