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 with traverse of Group I in the reply filed on 12/29/2025 is acknowledged. The traversal is on the ground(s) that there is not an undue burden on the Examiner. This is not found persuasive because the different considerations and search strategies required for a composition claim as compared to a method of making a composition does constitute a search burden, especially with the instant specification ripe with further limitation in the method of making that would not be searched under just the consideration of the composition on its own.
The requirement is still deemed proper and is therefore made FINAL.
Claims 25 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/29/2025.
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 7-9, 14, and 16-17, 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 claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 7 recites the broad recitation basis weight of 30-100, and the claim also recites a basis weight of 40-70 and 40-50 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.
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 8 recites the broad recitation thickness of 140 microns, and the claim also recites a thickness of 10-30 and 20-28 microns 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.
Regarding claim 9, it is unclear as to what is being required by the claim. It is unclear if the term “tap water” only affects the 60 degrees example or the 40 degree example too.
It is also unclear if the less than 60 seconds limitations only applies t the 60 degree option of the 40 degree option as well.
For purposes of continued examination, a polymer that will dissolve in water greater than 40 degrees will be considered to meet the requirements. It is also noted that if the polymer is dissolvable at room temperature it would also be dissolvable at 40 degrees. The claims do not negate the solubility at less than 40 degrees.
Regarding claim 14, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 basis weight of 10-60, and the claim also recites a basis weight of 15-45 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.
Regarding claim 16, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 16 recites the broad recitation degree of hydrolysis of 70-95, and the claim also recites a degree of hydrolysis of 75-92 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.
Regarding claim 17, it is unclear as to what constitutes the “creased accelerated pet food test.” The instant specification in [0064-0070] outlines the steps for running the test, but doesn’t include what constitutes a pass or a fail.
As this test is not shown by any other references than the instant application, the average artisan would have to understand this as a test of the oil and grease resistance of the material. Absent a clarification to what makes a test pass or fail any material that is advertised as oil and grease resistant and can contact food directly will read on this limitation as being sufficient to resist oil and grease.
Claim Rejections - 35 USC § 102
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) 1-4, 12, 18-19, and 24 are rejected under 35 U.S.C. 102a1 as being anticipated by Gemmiti et al, US Patent Publication 2021/0253335.
Regarding claim 1, Gemmiti teaches a composite configured for a food container (see abstract) comprising:
a recyclable composite [0004 and 0045] comprising a paper substrate [0038 and 0065] and a dissolvable polymer layer on the paper substrate [0038 and 0065];
wherein the recyclable composite is configured and dimensioned to be positioned relative to a food container vessel for use with the food container vessel (see abstract, [0065], and claim 1), and the recyclable composite is suitable for coming into contact with food (food safe PVOH film [0065]).
Regarding claim 2, Gemmiti further teaches that the dissolvable polymer layer comprises at least one of polyvinyl alcohol [0013] or plasticized plant starch.
Regarding claim 3, Gemmiti further teaches that the dissolvable polymer layer is a laminated layer [0038] or an extruded layer.
Regarding claim 4, Gemmiti further teaches that the recyclable composite is attached to one or more additional layers of the food container vessel, the one or more additional layers comprising paper [0065].
Regarding claim 12, Gemmiti further teaches that the polymer layer is directly attached to the paper substrate (see claims and figures)
Regarding claim 18, Gemmiti further teaches that the composite is recyclable but is silent to the specific definition of EN13430. We are left with the understanding of what the average artisan at the time of the invention would understand form the discloser, and it is the Examiner’s stance that the explicit teaching of recyclable as taught by Gemmiti reads on the claims as understood by the average artisan.
Regarding claim 19, Gemmiti further teaches a composite that does not mention the inclusion of fluoro chemicals and biaxially oriented polypropylene.
Regarding claim 24, Gemmiti further teaches that claimed composite. The intended use of the composite does not hold patentable weight as long as the composite is capable of performing the functions that are being claimed. Claim 24 is directed to the shape and use of the container that the composite is placed within.
The shape of the container that the composite is applied two is an intended use of the composite and the composite of Gemmiti would be capable of being in contact with a container with an internal cavity and be used for a pet food bag.
Claim(s) 1-6, 8-9, and 12 are rejected under 35 U.S.C. 102a1 as being anticipated by Rabnawaz et al, US Patent Publication 2021/0246333.
Regarding claim 1, Rabnawaz teaches a composite configured for a food container [0041] comprising:
a recyclable composite (see abstract and [0062]) comprising a paper substrate [0091-0099] and a dissolvable polymer layer [0118-0124] on the paper substrate [0075];
wherein the recyclable composite is configured and dimensioned to be positioned relative to a food container vessel (this is a showing of intended use) for use with the food container vessel [0041] and the recyclable composite is suitable for coming into contact with food [0040-0043]
Regarding claim 2, Rabnawaz further teaches that the dissolvable polymer layer (first layer [0015]) comprises at least polyvinyl alcohol (PVOH [0015]).
Regarding claim 3, Rabnawaz further teaches that the dissolvable polymer is a laminated layer (see figures and [0018]).
Regarding claim 4, Rabnawaz further teaches that the recycle composite is attached to a paper which acts as the one or mare layers for a food container [0075-0078]].
Regarding claim 5, Rabnawaz further teaches that the recyclable composite is grease resistant [0075] and heat sealable (teaches drying step is to heat it in place for final setting [0117]).
Rabnawaz teaches a composition that is intended for use as a food wrapper or food packaging/container [0096-0098]. While Rabnawaz is silent on the specific FDA requirements that are met by the composition, it is clear as understood by one of ordinary skill in the art at the time of the invention that the teaching of using a film or wrapper to cover food would meet the criteria of U.S. FDA requirements 21 CFR 176.170 and 21 CFR 176.180 for direct food contact.
If there is a specific physical component of the composition that is desired to be claimed, positively claiming the physical attribute will be required for a composition claim. Otherwise the showing of utilizing the composition to directly contact food will read on the claimed limitation.
Regarding claim 6, Rabnawaz further teaches that the paper substrate comprises at least 50 weight % cellulosic fibers (the teaching of paper or cellulosic material including paperboard, wood, or textile that is bleached, unbleached, uncoated examples is sufficient of a showing to show that the average artisan would assume more than 50% of the paper would be made up of fiber). While the same language is not present, there is an implicit teaching by Rabnawaz.
Regarding claim 8, Rabnawaz further teaches that the dissolvable polymer layer has a thickness of from about 1 micron to about 40 microns, preferably 10 to 30 microns, more preferably 20 to 28 microns (many examples including 20 microns [0049]).
Regarding claim 9, Rabnawaz further teaches that the dissolvable polymer layer is warm water soluble when using the same PVOH materials [0079]. Rabnawaz gives both water soluble and water insoluble options. While the water conditions for the solubility is not given in the reference, the same material is utilized (PVOH). The average artisan would understand that the same material utilizing the in same manner will have the same physical properties.
Regarding claim 12, Rabnawaz further teaches that the dissolvable polymer is directly attached to the paper substrate (see first layer and figures)
Claim Rejections - 35 USC § 102/103
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.
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) 17-19, 21-22, and 24 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rabnawaz et al, US Patent Publication 2021/0246333.
Regarding claim 17, Rabnawaz further teaches that the composite is oil and grease resistant (see abstract and [0075]). The “accelerated pet food test” is not mentioned by the reference, but it is not a defined standard. Due to the fact that Rabnawaz teaches the composition is safe for direct food contact and can be utilized as wrappers or contains for food, the average artisan would assume that the creased accelerate pet food test would also be met. It is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229).
Regarding claim 18, Rabnawaz further teaches that the composite is recyclable but is silent to the specific definition of EN13430. We are left with the understanding of what the average artisan at the time of the invention would understand form the discloser, and it is the Examiner’s stance that the explicit teaching of recyclable as taught by Rabnawaz reads on the claims as understood by the average artisan.
Regarding claim 19, Rabnawaz further teaches that fluorochemicals are harmful and should be avoided [0013]. Rabnawaz teaches the base composition without the use of fluorochemicals but does states that they can be optionally added in forms such as polyperfluoroethers [0091] but this is listed as an optional additive that is included in a laundry list of other options. It is the Examiner’s stance that the inclusion of and optional polyperfluoroethers does not constitute a teaching of including a using fluorochemicals in the base invention especially when fluorochemicals are taught to be harmful.
Regarding claim 21, Rabnawaz further teaches that the first layer of PVOH includes a strong oxygen barrier [0020]. Rabnawaz does not provide an oxygen transmission rate at 23C and at 50% humidity but does teach a permeability of less than 0.5 with the lower limit being as low as 0.00001 for water vapor [0105]. While these are different measurements, both provide an upper limit of oxygen transfer with a goal of reducing the oxygen transmission rate as much as possible. While the numbers of the reference are not comparable the goal of providing a strong oxygen barrier [0020] also with claimed upper limits with a goal of reducing it as much as possible. It is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It is the Examiner’s stance that the function description would be understood to read on the claimed limitations.
Regarding claim 22, Rabnawaz further teaches that the produce being made can be shaped as desired [0040-0043] and that the material will hold its grease and oil resistance [0075]. While not specifically stating that the composite made will have a crease, it is clear that the same material utilized int eh same way is capable of being creased and would still retain its desired resistance properties.
Regarding claim 24, Rabnawaz further teaches that claimed composite. The intended use of the composite does not hold patentable weight as long as the composite is capable of performing the functions that are being claimed. Claim 24 is directed to the shape and use of the container that the composite is placed within.
The shape of the container that the composite is applied two is an intended use of the composite and the composite of Rabnawaz would be capable of being in contact with a container with an internal cavity and be used for a pet food bag.
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.
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) 5, 7, 14, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rabnawaz et al, US Patent Publication 2021/0246333 In view of Filed et al, US Patent Publication 2011/0186210.
Regarding claim 7, Rabnawaz teaches the use of a thin and flexible paper [0040] but is silent as to what the basis weight of that paper would be.
In the same field of endeavor of making a coated material to seal in a food items [0006], Files teaches a packaging material made up of a paper substrate [0014] with a basis weight of preferable 25-45 lbs/ream [0031] to form a grease resistant material [0032].
Files presents the date in lbs per ream and not gsm as claimed. A known conversion of lbs to GSM in the paper field is that 1 lbs is about 1.48 gsm.
That would provide the preferred range to be 37-66.6 gsm which reads on the claimed 30-100 range.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the known paper sizing for a grease paper coated material as shown by Files in the Rabnawaz reference as Rabnawaz is merely silent as to what the weight of the paper utilized in the substrate should be. Knowing a conventional range of paper weight that is utilized for the same end result would have been an obvious starting point for the average artisan in the making of the composition of Rabnawaz.
Regarding claim 5, while Rabnawaz teaching the same drying to seal step for the material, they do not utilize the same term of heat sealing. For compact prosecution purposes a duplicate rejection is presented here as to show that Files explicitly teaches the same coated grease paper to be utilized in covering food as heat sealing (see abstract)
Regarding claim 14, Rabnawaz and Files remain as applied above and Files further teaches that he basis weight of the polymer layers can be in a wide range of values [0034-0035]. The examples of the polymer layer having a basis weight of around 8 lbs would equate to 11.84 gsm, which reads on the claimed range of 10-60.
Regarding claim 21, Rabnawaz remains as applied above but is silent on the specific value of oxygen transmission rate. To show that the claimed rate is conventional in the same art, Files explicitly states that the oxygen transmission rate according to ASTM D3985 to be less than 10 cc/m8m/day and other examples of less than 1 cc [0036]. It would have been obvious to utilize the claimed OTR as shown as conventional in Fields in the Rabnawaz reference as both are aimed with the same goal and utilize different units of measurements to achieve the same goal.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Rabnawaz et al, US Patent Publication 2021/0246333 in view of Glenn et al, US Patent Publication 2021/0040693.
Regarding claim 16, Rabnawaz further teaches that the PVOH material can be either fully or partially hydrolyzed acetate [0080].
Rabnawaz is silent on to the actual degree of hydrolysis only that it can be fully or partially hydrolyzed.
In the same field of endeavor of making food packaging materials made with a paper substrate coated with PVOH (see abstract), Glenn teaches that PVOH has a preferred degree of hydrolysis of 80-99% [0026].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the conventional range of 80-99 as a known preferred range of degree of hydrolysis in the same material of PVOH as the coating on the paper layer with same end goal of producing a food safe packaging material in the Rabnawaz reference as it was merely silent as to this physical property.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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