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 claims 1-10 in the reply filed on 8/5/26 is acknowledged. The traversal is on the ground(s) that the internation search authority did not issue a unity of invention objection and there would be no burden to search both the product and process. This is not found persuasive because (A) a decision by the internation search authority is not binding on the USPTO and as evidenced by the rejection there is no special technical feature that makes a contribution over the art and (B) a search burden is not required for a lack of unity decision but instead a showing of lack of unity which is evidenced by the rejection below.
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/5/26.
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.
Claims 1-8 & 10 are rejected under 35 U.S.C. 103 as being unpatentable over Funabiki et al. (US PG Pub 2009/0149593; hereafter ‘593).
Claim 1: ‘593 is directed towards a process of preparing a gas barrier laminate (abstract), comprising:
providing a paper substrate (abstract & ¶ 57);
applying an aqueous gas barrier composition to the paper substrate (abstract), wherein the aqueous gas barrier composition comprises:
an ethylene-vinyl alcohol copolymer (component (A), abstract) having a saponification degree of not lower than 95 mol% (abstract & ¶ 22), and
a partially neutralized (meth)acrylic acid polymer (see component (B), abstract, such as an acrylic or methacrylic copolymer, ¶ 26, wherein the degree of neutralization is not particularly restricted, ¶ 34),
wherein the weight ratio of component (A) to component (B) is 0.1-20:100 (¶ 36); and
drying the aqueous gas barrier composition at a temperature of 80-140 ºC for 5 seconds to 5 minutes to form a gas barrier coating, thereby obtaining the gas barrier laminate (¶ 59).
‘593 does not teach that the partially neutralized (meth)acrylic acid polymer has a degree of neutralization of from 6-18 mol%.
However, as discussed above, the degree of neutralization is not particularly restricted (¶ 34).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a degree of neutralization of from 6-18 mol% because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Although the taught range of 80-140ºC is not explicitly the claimed range of less than 120ºC, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Although the taught weight ratio of component (A) to component (B) is 0.1-20:100 is not the claimed range of from 80:20 to 50:50, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the ratio because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Claim 2: Although the taught weight ratio of component (A) to component (B) is 0.1-20:100 is not the claimed range of from 75:25 to 62:38, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the ratio because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Claim 3: ‘593 does not teach that the partially neutralized (meth)acrylic acid polymer has a degree of neutralization of from 10-15 mol%.
However, as discussed above, the degree of neutralization is not particularly restricted (¶ 34).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a degree of neutralization of from 10-15 mol% because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Claim 4: ‘593 teaches drying the aqueous gas barrier composition at a temperature of 80-140 ºC.
Although the taught range of 80-140ºC is not explicitly the claimed range of 60-100ºC, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Claim 5: The (meth)acrylic acid is a copolymer of (meth)acrylic acid (abstract & ¶ 26).
Claim 6: The process is free of a step of further heat treatment of the gas barrier laminate at a temperature of 120ºC or higher (see Examples 4-8, ¶s 86-89).
Claim 7: Prior to step (ii), the paper is coated with a primer layer so that the primer layer resides between the substrate and the gas barrier coating (an anchor coating is applied prior to coating with the barrier coating composition, ¶ 60).
Claim 8: ‘593 does not teach the dry weight of the coating relative to the weight of the paper.
However, the dry weight is proportional to the coating thickness which in turn is a result effective variable based on the gas barrier properties of the coating film and it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the dry weight of the coating to obtain the desired gas barrier properties of the coating because optimization of a result-effective variable is prima facie obvious. "Where 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." See MPEP 2144.05(II)(B).
Claim 10: The ethylene-vinyl alcohol copolymer has an ethylene content of 15-65 mol% (¶ 21).
‘593 does not teach the ethylene-vinyl alcohol copolymer has an ethylene content of 10 mol% or less
However, it would have been obvious to one of ordinary skill in the art at the time of filing to optimize the ethylene content in the EVOH copolymer because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ‘593 as applied above, and further in view of Kutsuna et al. (US PG Pub 2005/0014908; hereafter ‘908).
Claim 9: The gas barrier laminate can be used in food packaging such as a bag (¶ 70).
‘593 does not teach folding the gas barrier laminate into a shaped article or details of making a bag from the gas barrier laminate.
‘908 is also directed towards gas barrier laminates (title) and teaches that gas barrier laminates can be transformed into bags by folding the laminate into the desired shapes (see ¶ 77).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporating the teachings of ‘908 into the process of ‘593 such that the bags of ‘593 are formed by folding the laminate of ‘593 into the desired shape because it is an art recognized means for forming bags from gas barrier laminates and would have predictably produced the bags as desired.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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