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 .
Note
Applicant’s response filed on 02/05/2026 has been fully considered. Claims 5, 6, 17, 18 and 20 are amended, claim 5 is cancelled and claims 1-14 and 16-21 are pending. The previous formal action has been withdrawn in view of Applicant’s amendments and comments.
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.
Claims 1-6, 8-13 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wicher (US 2010/0310894 A1).
Claims 1 and 8: Wicher teaches a coated paper comprising a base paper containing white pigment and/or fillers coated with a coating solution (abstract), wherein the coating solution comprises starch [0015] and polyvinyl alcohol {instant claim 8} [0025]. The polyvinyl alcohol meets the claimed heat sealable material. It is well established that starch is a heat sealable material. Wicher teaches the content of the white pigment and/or filler in the paper is up to 55% (abstract and [0034]) but does not teach the content is less than 5%. Up to 55% range includes the claimed less than 5% range. Wicher also teaches opacity can be determined by titanium oxide content [0013]; and this is interpreted as higher content of titanium dioxide enhances opacity and lower content of titanium oxide enhances transparency. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to select less than 5% of white pigment and/or filler with the knowledge of consequence loss of opacity. If an ordinary artisan desires a base paper having moderate level of transparency or translucency with less need for high opacity, a base paper containing less than 5% white pigment and/or filler would be selected with predictable results which includes the claimed less than 60% opacity.
Claim 2: Wicher teaches the paper has a basis weight of 15-200 g/m2 [0037].
Claims 3 and 4: Wicher teaches the paper comprises long fiber pulps and short fiber pulps in a mixing ratio of 10:90 to 90:10 {instant claim 4} [0035], wherein this ratio overlaps with the claimed ratio of short fibers to long fibers of greater than 1.
Claims 5, 6 and 9-11: With respect to cold seam sealing strength, burst pressure, tensile strength and elongation at break, the Office realizes that all of the claimed effects and physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients, and process limitations. Therefore, the claimed effects and physical properties, i.e., cold seam sealing strength would implicitly be achieved by a composition with all the claimed ingredients. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 7: Wicher teaches the coating solution is applied onto the paper with a coating weight of 1-15 g/m2 [0038] and has a solid content of 5-30% [0030].
Claim 12: With respect to the thickness of the coated paper, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the thickness of the coated paper, and the motivation would be to control and balance flexibility and durability. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claims 13 and 20: Wicher teaches preimpregnating the paper with a polymer is well known before the effective filing date of the current invention [0013], wherein the polymer can be a vinyl acetate/ethylene copolymer [0013] which is a type of latex. The preimpregnated polymer meets the claimed precoat layer.
Claim 19: Wicher teaches the paper comprises cotton fibers [0035] and cellulose fibers [0036].
Claim 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wicher (US 2010/0310894 A1) as applied to claim 1 one above, and further in view of Marietta (US 2004/0211334 A1).
Wicher teaches the claimed invention as set forth above.
Claim 16: Wicher teaches the coated paper is for a decorative material but does not teach it is for a packaging material. However, Marietta teaches a wrapper is preferably a coated paper or a plurality of paper layers which surrounds bound strings of firecrackers, and serves not only to provide a limited amount of protection against damage such as impact and moisture intrusion, but also permits a decorative appearance for a packaging [0008]. Therefore, use of a coated paper {wrapper} both as a decorative material and as a packaging material is notoriously known before the effective filing date of the invention (see [0008] of Marietta).
Claims 17 and 18: With respect to cold seam sealing strength, the Office realizes that all of the claimed effects and physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients, and process limitations. Therefore, the claimed effects and physical properties, i.e., cold seam sealing strength would implicitly be achieved by a composition with all the claimed ingredients. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 7, 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wicher (US 2010/0310894 A1) as applied to claim 1 one above, and further in view of Ueberschar et al. (US 2005/0132956 A1).
Wicher teaches the claimed invention as set forth above.
Claims 7, 14 and 21: Wicher teaches the coating solution is applied onto the paper with a coating weight of 1-15 g/m2 [0038] and has a solid content of 5-30% {instant claims 14 and 21} [0030]. Wicher does not teach a double curtain coating process. However, Ueberschar teaches applying a liquid coating medium onto a paper using double side coating or application method in the form of a curtain [0008]. Wicher and Ueberschar are analogous art because they are from the same field of endeavor that is the coated medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Ueberschar, (i.e., double curtain coating process) with the invention of Wicher, and the motivation for combining would be to achieve uniform coating and consistent thickness.
Response to Arguments
Applicant’s argument is based on that Wicher is directed to an entirely different type of paper and a fundamentally different technical purpose, and that Wicher concerns so-called "raw decorative papers" for laminate applications. This argument is not persuasive because the claimed invention does not exclude a decorative material.
Applicant further argued that the disclosure of Wicher is directly opposed to the present application, which requires a base paper with less than 5 wt % fillers in order to achieve translucency (opacity < 60%) for packaging applications. This argument is not persuasive for the following reasons. (1) Wicher expressly teaches the content of the white pigment and/or filler in the paper is up to 55% [0034]. Up to 55% range includes the claimed less than 5% range. (2) Wicher also teaches opacity can be determined by titanium oxide content [0013]; and this is interpreted by the Office as a higher content of titanium dioxide enhances opacity and a lower content of titanium oxide enhances transparency. Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to select less than 5% of white pigment and/or filler with the knowledge of consequence loss of opacity. If an ordinary artisan desires a base paper having moderate level of transparency or translucency with less need for high opacity, a base paper containing a very small amount (i.e., less than 5%) white pigment and/or filler would be selected with predictable results of very low opacity, which includes the claimed less than 60% opacity.
Applicant also argued that a non-film-forming starch cannot form a coherent thermoplastic layer and is inherently incapable of providing heat-sealability; consequently, Wicher does not disclose and does not suggest a heat-sealable coating layer as required by current claim 1. This argument is not persuasive for the following reason. In the prior art rejection, the Examiner has shown the polyvinyl alcohol (PVA) meets the claimed heat-sealable material not a starch. The current specification lists PVA as one of the suitable examples of the claimed heat-sealable material (page 7, line 4). Since the PVA of current invention functions as a heat-sealable material, the PVA of Wicher would function as a heat-sealable material as well.
Applicant also argued that Wicher is aimed at maintaining or increasing porosity for resin penetration (see paragraph [0043]), which is fundamentally incompatible with a heat-sealable coating that must form a continuous, impermeable film, as is desired by the present application. This argument is not persuasive for the following reason. The claimed invention is not drawn to a continuous, impermeable film. A heat-sealable layer is not always a continuous, impermeable film; and the claimed invention does not limit the coating color layer containing the heat-sealable material to be a continuous, impermeable film/layer.
Applicant argued that while Marietta may show that coated paper can be used as a decorative packaging wrapper, it does not disclose any sealing layer, sealing mechanism, or defined seam strengths, nor does it address translucency, low filler contents, or the mechanical performance required by the present claims; further, Wicher's paper, even if used as packaging, would not inherently achieve the claimed sealing strength because it lacks a functional heat-sealable coating layer. This argument is not persuasive for the following reason. The reference of Marietta was introduced to teach the claimed packaging not to teach any sealing layer, sealing mechanism, seam strengths, translucency, low filler contents or the mechanical performance. Claim 16 depends upon claim 1; and the limitations of claim 1 are taught in the above paragraphs 4-5 of the prior art rejection and in the reference of Wicher. The reference of Marietta was introduced to teach the claimed packaging. Marietta teaches a wrapper is preferably a coated paper or a plurality of paper layers which surrounds bound strings of firecrackers, and serves not only to provide a limited amount of protection against damage such as impact and moisture intrusion, but also permits a decorative appearance for a packaging [0008]; and this suggests use of a coated paper {wrapper} both as a decorative material and as a packaging material is known before the effective filing date of the invention (see [0008] of Marietta).
Applicant submits that Uesbeschar relates exclusively to curtain-coating machinery and provides no teaching regarding sealing materials, low-filler translucent base papers, or packaging functionality. This argument is not persuasive for the following reason. The reference of Uesbeschar was introduced to teach the claimed double curtain coating process not to teach sealing materials, low-filler translucent base papers, or packaging functionality. Clam 21 depends upon claims 14 and 1; and the limitations of claims 1 and 14 are taught in the above paragraphs 4-5 and 17 of the prior art rejection and in the reference of Wicher. The reference of Uesbeschar was introduced to teach the claimed double curtain coating process. Ueberschar teaches applying a liquid coating medium onto a paper using double side coating or application method in the form of a curtain [0008]; and it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Ueberschar, (i.e., double curtain coating process) with the invention of Wicher, and the motivation for combining would be to achieve uniform coating and consistent thickness.
For the above reasons claims 1-14 and 16-21 stand rejected.
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 BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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BS
May 19, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights