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 .
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.
Status of Claims
Claims 1-28 are pending.
Claims 9-28 are withdrawn from further consideration as being directed to non-elected inventions.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election of Group 1, claims 1-8 in the reply filed on 27 April 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 27 April 2026.
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 1-8 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 a size distribution as compared to montmorillonites exfoliated according to a certain process. This renders the scope of the claim indefinite because one of ordinary skill in the art would be unable to ascertain whether any nanoparticles meet the claimed limitations because only a few processing conditions are recited in the claims. Therefore, the claimed size distribution will be interpreted as being met by exfoliated nanoparticles.
Claims 2-8 are rejected as being dependent on indefinite claim 1.
Claims 6, 7, and 8 recited a broad range followed by narrower ranges within the same claim thus rendering the scope of the claims unclear. See MPEP 2173.05(c)(I). For purposes of examination, claims 6, 7, and 8 will be read as reciting the broadest range.
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) 1-2 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pre-grant Publication 2018/0215896 to Beall et al. cited in the Information Disclosure Statement filed 24 April 2024 (herein Beall).
Regarding claims 1 and 2, Beall teaches a polymer clay nanocomposite coating used as a gas barrier (abstract) wherein the coating contains a water-dispersible polymer and a coated nanoparticle (paragraph 0018). Beall teaches that the nanoparticles can be an exfoliated montmorillonite (paragraph 0073). Beall teaches that the coating exhibits oxygen barrier properties as well as transparency (paragraph 0073).
Regarding claim 7, Beall teaches all the limitations of claim 1 as discussed above.
Beall teaches that a bilayer of polymer and nanoparticle in the film has a thickness of 2 to 3 microns (paragraph 0098) and that multiple bilayers can be included in the coating film (paragraph 0074).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beall as applied above and in view of U.S. Patent 6,593,408 to Takaki et al. (herein Takaki).
Regarding claim 3¸ Beall teaches all the limitations of claim 1 as discussed above.
Beall is silent as to the water content of the coating.
Takaki teaches an organic polymer/inorganic fine particle aqueous solution (abstract). Takaki teaches that a film made from the solution turns cloudy when absorbing moisture and turns transparent when dried wherein this change is reversible (Col 23, lines 53-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the water content of the coating of Beall in order to adjust the transparency as taught by Takaki thereby rendering the claimed range obvious. See MPEP 2144.05(II).
Claim(s) 4-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beall as applied above.
Regarding claims 4 and 5, Beall teaches all the limitations of claim 1 as discussed above.
Beall teaches that the permeation rate of the coating can be decreased by increasing the amounts of polymer and nanoparticles in the coating (paragraph 0089). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the permeability of the coating by adjusting the amounts of polymer and nanoparticles thereby rendering the claimed ranges obvious. See MPEP 2144.05(II).
Regarding claim 6, Beall teaches all the limitations of claim 1 as discussed above.
Beall teaches that the nanoparticles of the coating are intercalated throughout the thickness of the coating and the spacing between the nanoparticles can be adjusted by varying the ratio of polymer to nanoparticle ratio (paragraph 0098). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the permeability of the coating by adjusting the ratio of polymer to nanoparticles in order (paragraph 0100). See MPEP 2144.05(II).
Regarding claim 8, Beall teaches all the limitations of claim 1 as discussed above
Beall teaches that the coating layer(s) are formed by an aqueous polymer solution having 0.1 to 0.5 wt% water soluble polymer (paragraph 0071) and a nanoparticle suspension containing 0.1 to 0.5 wt% nanoparticles (paragraph 0073). Combining these two teachings yields an amount of nanoparticles in the dried coating that overlaps the claimed range. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. MPEP 2144.05 (I).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY M DAVIS whose telephone number is (571)272-6957. The examiner can normally be reached M-F 7-4:30, off 2nd Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria V Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY M DAVIS/Primary Examiner, Art Unit 1783
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