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.
Claims 1-14 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.
Claim 1 recites the limitation "the barrier film" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not previously recite a “barrier film”. It is thus unclear as to what the barrier film refers. For purposes of examination, claim 1 is interpreted as instead reciting “the barrier coating
Claims 12-13 recite a ratio of polyvinyl alcohol to polyacrylic acid. However, claims 12-13 do not to what the ratio is based. It is thus unclear what the ratio is based on, i.e. by weight, volume, moles, etc. For purposes of examination, the ratio in claims 12-13 are considered to be a weight ratio as supported by the instant specification Page 5.
Claims 2-11 and 14 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 6-9, 12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oosaki et al. (US 20180244929 A1).
Regarding claim 1, Oosaki teaches a coating material comprising a polyvinyl alcohol, a polyacrylic acid, and a carbodiimide (Oosaki Abstract, Par. 0080-0090, 0097-0098, 0123, 0274). Oosaki teaches the coating material is formed at a temperature of 50°C or more and 120°C or less (Oosaki, Par. 0196), which lies within the claimed range of less than 120°C and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 2, Oosaki teaches the polyacrylic acid comprises poly(meth)acrylic acid (Oosaki, Par. 0085 and 0097-0098).
Regarding claims 6-7, Oosaki teaches the polyacrylic acid is partially neutralized with a degree of neutralization of 2-20% (Oosaki, Par. 0097-0100), which lies within the claimed range of 2 to 50% and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claims 8-9, Oosaki teaches the polyvinyl alcohol has a saponification degree of at least 98% (Oosaki, Par. 0091) which lies within the claimed ranges of at least 80% and at least 95% and therefore satisfy the claimed ranges, see MPEP 2131.03.
Regarding claim 12, Oosaki teaches a ratio of the polyvinyl alcohol to the polyacrylic acid is 30:70 to 95:5 (Oosaki, Par. 0101), which lies within the claimed range of 5:95 to 95:5 and therefore satisfies the claimed range see MPEP 2131.03.
Regarding claim 14, Oosaki teaches a laminate comprising the barrier coating (Oosaki, Par. 0012, 0014, and 0137).
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 3-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Oosaki et al. as applied to claim 1 above.
Regarding claims 3-5, Oosaki teaches the polyacrylic acid has a molecular weight of 5000 to 10,000,000 g/mol (Oosaki, Par. 0097), which overlaps the claimed ranges and therefore establishes a prima facie case of obviousness over the claimed ranges, see MPEP 2144.05, I.
Regarding claim 13, Oosaki teaches a ratio of the polyvinyl alcohol to the polyacrylic acid is 30:70 to 95:5 (Oosaki, Par. 0101), which overlaps the claimed range of 15:85 to 85:15 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Oosaki et al. as applied to claim 1 above, further in view of Naderi (US 20220009684 A1).
Regarding claims 10-11, Oosaki teaches all of the elements of the claimed invention as stated above for claim 1. Oosaki is silent regarding the polyvinyl alcohol having a molecular weight of 10,000 to 300,000 g/mol as required by claim 10, and a molecular weight of 50,000 to 200,000 g/mol as required by claim 11.
Naderi teaches a barrier composition comprising a polyvinyl alcohol and a polyacrylic acid (IPCFA) wherein the polyvinyl alcohol has a molecular weight of 80,000 to 135,000 g/mol (Naderi, Abstract, Par. 0001, 0014-0015, 0025, and 0027), which lies within the claimed ranges and therefore satisfies the claimed ranges, see MPEP 2131.03.
Oosaki and Naderi are analogous art as they both teach barrier compositions comprising polyvinyl alcohol and a polyacrylic acid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a polyvinyl alcohol with a molecular weight within the claimed range for the polyvinyl alcohol of Oosaki. This would allow for improved barrier performance (Naderi, Par. 0027).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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