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, Species I, claims 10-13, in the reply filed on 30 October 2025 is acknowledged. The traversal is on the grounds that there is a special technical feature being the A/B layer structure, and that the data provided in the instant specification demonstrates unexpectedly superior results. This is not found persuasive for the following reasons.
In response to Applicant’s argument that there is a special technical feature, this is not found persuasive because the special technical feature claimed does not make a contribution over the prior art Nordqvist et al. (US 2024/0408859 A1) for the reasons set forth on pages 4-5 of the action mailed 08 September 2025.
In response to Applicant’s argument that the data provided in the instant specification demonstrates unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for at least the following reasons.
Firstly, the Examples relate to specific lamination films made from a specific layer A made from a specific polyurethane composition and having a thickness of 4 µm (instant specification, page 14, lines 31-35; pages 16-17, Table 2), whereas the present claims broadly allow for any adhesive layer made from any polyurethane or any acrylate and having a thickness of 0.5-7 µm.
Secondly, the Examples the relate to specific lamination films made from specific layers B made from specific compositions and narrower thicknesses than those presently claimed. Specifically, Example 6 uses a layer B having a thickness of 12 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 7 uses a layer B having a thickness of 12 µm made from another specific composition (instant specification, pages 15-16, Table 2). Example 8 uses a layer B having a thickness of 12 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 11 uses a layer B having a thickness of 17 µm and made from another specific composition (instant specification, pages 15-16, Table 2). Example 12 uses a layer B having a thickness of 17 µm made from a specific composition; layers C’ made from a specific composition, C made from a specific composition, and C’ made from a specific composition; and layers B/B’ made from a specific composition (instant specification, pages 15-16, Table 2). Example 14 uses a layer B having a thickness of 17 µm made from another specific composition (instant specification, pages 15-16, Table 2). Example 15 uses a layer B having a thickness of 30 µm made from a specific composition (instant specification, pages 15-16, Table 2). Example 18 uses a layer B having a thickness of 50 µm made from a specific composition (instant specification, pages 15-17, Table 2). However, the present claims broadly allow for any layer B comprising any aliphatic polyester and/or any aliphatic-aromatic polyester, a lubricant selected from erucamide and stearamide in an amount of 0.05-0.3 wt%, wherein the aliphatic-aromatic polyester is made from 30-70 mol% of any aliphatic C6-C18 dicarboxylic acid, 30-70 mol% of any aromatic dicarboxylic acid, 98-100 mol% of 1,3-propanediol or 1,4-butanediol, 0-2 wt% of any chain extender and/or branching agent, where the layer B has a thickness of 5-80 µm if the lubricant is erucamide or 5-50 µm if the lubricant is stearamide, the layer C is any polyvinyl alcohol, and the layer C’ is any adhesion promoter.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 30 October 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS’s) filed 06 April 2024 and 22 April 2024 have been considered by the examiner.
The information disclosure statement (IDS) filed 07 April 2024 has not been considered by the examiner because it is identical to the IDS filed 06 April 2024, which has been considered by the examiner.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12, line 5: “at least one bifunctional carboxylic acid selected from the group of” should read “at least one bifunctional carboxylic acid is selected from the group consisting of”.
Appropriate correction is required.
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 10-13 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.
With respect to claim 10, the claim recites “b1-i) 30 to 70 mol%, based on components b1-i and b1-ii, of an aliphatic C6-C18 dicarboxylic acid; b1-ii) 30 to 70 mol%, based on components b1-i and b1-ii, of an aromatic dicarboxylic acid; b1-iii) 98 to 100 mol%, based on components b1-i and b1-ii, of propane-1,3-diol or butane-1,4-diol” in lines 6-10. Claim 10 is indefinite because it is unclear how the 1,3-propanediol or 1,4-butane diol can be present in 98-100 mol% while also having 30-70 mol% of an aliphatic C6-C18 dicarboxylic acid and 30-70 mol% of an aromatic dicarboxylic acid since these values would exceed 100 mol%. For the purposes of examination, claim 10 has been interpreted as if it recites “98 to 100 mol%, based on diol components, of propane-1,3-diol or butane-1,4-diol”.
With respect to claim 12, the claim recites “where the glass transition temperature of the polyurethane is below 20°C or the melting point of the polyurethane is not above 20°C and has an enthalpy of fusion below 10 J/g” in lines 7-8. Claim 12 is indefinite because it is not clear if this phrase means “the glass transition temperature of the polyurethane is below 20°C and the polyurethane has an enthalpy of fusion below 10 J/g or the polyurethane has a melting point not above 20°C and has an enthalpy of fusion below 10 J/g”, or if it means “the glass transition temperature of the polyurethane is below 20°C” (with no limitation on the enthalpy of fusion; that is, the enthalpy of fusion below 10 J/g is associated only with the melting point being not above 20°C) only or “the melting point of the polyurethane is not above 20°C and has an enthalpy of fusion below 10 J/g”. Clarification is respectfully requested. For the purposes of examination, the claim has been interpreted as if the polyurethane has an enthalpy of fusion below 10 J/g in both instances (i.e., when the glass transition temperature is below 20°C and the polyurethane has an enthalpy of fusion below 10 J/g or the melting point of the polyurethane is not above 20°C and the polyurethane has an enthalpy of fusion below 10 J/g).
Claims 11 and 13 are rejected under 35 U.S.C. 112(b) due to their ultimate dependency on claim 10.
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.
Claims 10-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Fanfani et al. (US 2019/0030857 A1, “Fanfani”) in view of the evidence provided by Itabana et al. (Poly(Butylene Adipate-Co-Terephthalate) (PBAT) – Based Biocomposites: A Comprehensive Review, “Itabana”).
With respect to claims 10-11 and 13, Fanfani discloses a package comprising a support, a product loaded on the support, and a top web film ([0029]). The top web film comprises an outer seal layer comprising a polyester layer, a tie layer, and an outer abuse layer ([0025-0028], [0075-0077]). The sealing layer comprises polyester made from an acid component comprising no more than 90 mol% of an aromatic dicarboxylic acid and at least 10 mol% of a C2-C8 aliphatic dicarboxylic acid with one or more glycols including 1,4-butanediol ([0088-0091], [0093-0094]). Given that only one glycol is required, the 1,4-butanediol is present in an amount of 100 mol%. The aromatic carboxylic acid includes terephthalic acid ([0089]). As evidenced by Itabana, polybutylene adipate-co-terephthalate is synthesized from 1,4-butanediol, adipic acid, and terephthalic acid (Itabana, page 3, 2.1 PBAT Industrial Synthesis), and therefore Fanfani discloses an aliphatic-aromatic polyester that is polybutylene adipate-co-terephthalate as presently claimed. The sealing layer also comprises 0.01-2 wt% wax (i.e., lubricant) that includes stearamide or erucamide ([0099-0101]). Given that the sealing layer does not require any other components in addition to the wax and polyester, it is calculated that there is present 98-99.99 wt% polyester. The sealing layer has a thickness of 2-25 microns ([0106]). The tie layer or adhesive layer comprises polyurethane ([0157], [0159]) and has a thickness of 2-20 microns ([0161]). The support of the packaging is biodegradable ([0214]), and therefore the packaging is considered biodegradable.
In light of the overlap between the claimed biodegradable lamination film and that taught by Fanfani, it would have been obvious to one of ordinary skill in the art to use a biodegradable lamination film that is both taught by Fanfani and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fanfani et al. (US 2019/0030857 A1, “Fanfani”) in view of the evidence provided by Itabana et al. (Poly(Butylene Adipate-Co-Terephthalate) (PBAT) – Based Biocomposites: A Comprehensive Review, “Itabana”) as applied to claim 10 above, and further in view of Schumacher et al. (WO 2021/175676 A1, “Schumacher”).
With respect to claim 12, while Fanfani discloses the use of a polyurethane as set forth in the above rejection of claim 10, Fanfani does not disclose wherein at least 60% by weight of the polyurethane is composed of: at least one diisocyanate; at least one polyesterol; at least one bifunctional carboxylic acid selected from the group consisting of dihydroxycarboxylic acid and diaminocarboxylic acid; and where the glass transition temperature of the polyurethane is below 20°C or the melting point of the polyurethane is not above 20°C and has an enthalpy of fusion below 10 J/g.
Schumacher teaches an aqueous polyurethane dispersion for packaging (page 2, lines 3-9). The polyurethane is made from at least one diisocyanate, at least one polyester diol (i.e., at least one polyesterol), and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion lower than 10 J/g (page 2, lines 17-26). The polyurethane adhesive has high quality adhesive properties and rapid biodisintegratability (page 2, line 5).
Fanfani and Schumacher are analogous inventions in the field of biodegradable packaging having polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane adhesive of Fanfani to be the polyurethane made from at least one diisocyanate, at least one polyester diol, and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion low than 10 J/g as taught by Schumacher in order to provide a polyurethane adhesive layer having high quality adhesive properties and rapid biodisintegratability (Schumacher, page 2, line 5).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gohil et al. (US 2009/0123767 A1, “Gohil”) in view of Fanfani et al. (US 2019/0030857 A1, “Fanfani”).
With respect to claim 10, Gohil discloses a coextruded multilayer film for packaging that is a bilayer comprising a sulfonated aliphatic-aromatic polyester film and a polyurethane adhesive layer ([0064], [0073], [0094-0095]). The sulfonated aliphatic-aromatic polyester is biodegradable ([0002]) and is made from 40-68 mol% aliphatic dicarboxylic acid, 32-56 mol% sebacic acid (i.e., a C10 aliphatic dicarboxylic acid), and 95-100 mol% 1,3-propanediol ([0019-0026]). The sulfonated aliphatic-aromatic polyester includes additives such as N,N-ethylene bis-stearamide ([0051]). The sulfonated aliphatic-aromatic polyester film has a thickness of 0.025-0.15 mm (25-150 µm) ([0063]).
However, Gohil does not disclose the amount of N,N-ethylene bis-stearamide nor the thickness of the urethane adhesive layer.
Fanfani teaches packaging comprising a top web film comprising an outer seal layer comprising polyester and wax, a tie layer, and an outer abuse layer ([0025-0028], [0075-0077], [0099]). The tie or adhesive layer comprises polyurethane ([0157], [0159]) and has a thickness to provide the adhesive function of 2-20 microns ([0161]). The wax is present in an amount of 0.01-2 wt% and includes stearamide ([0100], [0102]). The wax assists in the manufacture by coextrusion of the film ([0099]).
Gohil and Fanfani are analogous inventions in the field of biodegradable packaging having a polyester film and a polyurethane adhesive layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester layer of Gohil to contain 0.01-2 wt% stearamide as taught by Fanfani and to modify the thickness of the polyurethane layer of Gohil to be 2-20 microns as taught by Fanfani in order to provide a packaging material with ease of manufacturing by coextrusion and having sufficient adhesive function (Fanfani, [0099], [0161]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gohil et al. (US 2009/0123767 A1, “Gohil”) in view of Fanfani et al. (US 2019/0030857 A1, “Fanfani”). as applied to claim 10 above, and further in view of Schumacher et al. (WO 2021/175676 A1, “Schumacher”).
With respect to claim 12, while Gohil in view of Fanfani discloses the lamination film having a polyurethane adhesive layer as set forth in the above rejection of claim 10, Gohil in view of Fanfani does not disclose wherein at least 60% by weight of the polyurethane is composed of: at least one diisocyanate; at least one polyesterol; at least one bifunctional carboxylic acid selected from the group consisting of dihydroxycarboxylic acid and diaminocarboxylic acid; and where the glass transition temperature of the polyurethane is below 20°C or the melting point of the polyurethane is not above 20°C and has an enthalpy of fusion below 10 J/g.
Schumacher teaches an aqueous polyurethane dispersion for packaging (page 2, lines 3-9). The polyurethane is made from at least one diisocyanate, at least one polyester diol (i.e., at least one polyesterol), and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion lower than 10 J/g (page 2, lines 17-26). The polyurethane adhesive has high quality adhesive properties and rapid biodisintegratability (page 2, line 5).
Gohil in view of Fanfani and Schumacher are analogous inventions in the field of biodegradable packaging having polyurethane adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane adhesive of Gohil in view of Fanfani to be the polyurethane made from at least one diisocyanate, at least one polyester diol, and at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids, where the polyurethane has a glass transition temperature below 20°C and an enthalpy of fusion low than 10 J/g as taught by Schumacher in order to provide a polyurethane adhesive layer having high quality adhesive properties and rapid biodisintegratability (Schumacher, page 2, line 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787