DETAILED ACTION
In response to Election filed 5/26/2026. Claims 1, 3, 5, and 9-31 are pending. Claims 19-26 are withdrawn. Claims 1, 3, 5, 9-18, and 27-31 are examined thusly. Claim 1 was amended. Claims 2, 4, and 6-8 were cancelled. Claims 27-31 were added as new.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-18 in the reply filed on 5/26/2026 is acknowledged. The traversal is on the ground(s) that the amended claims are not taught by the cited prior art. This is not found persuasive because the independent claims previously cited were taught by the prior art and furthermore, the instant claims do not provide a contribution over the prior art as cited below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/26/2026.
Claim Objections
Claims 1, 3, 5, 9-18, and 27-31 are objected to because of the following informalities: please amend the preamble of the independent claim to read “A barrier-coated cellulose-based substrate” and each dependent claim “The barrier-coated cellulose-based substrate” for proper antecedent basis. Appropriate correction is required.
Claim 3 recites “polyvinyl alcohol, PVOH” and “ethylene vinyl alcohol, EVOH” to read “polyvinyl alcohol (PVOH)” and “ethylene vinyl alcohol (EVOH)” since “EVOH” and “PVOH” are each abbreviations of the full chemical names.
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, 3, 5, 9-18, and 27-31 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.
Regarding claims 1 and 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 5, 9-18, and 27-31 are rejected as being dependent upon claim 1.
Claims 9, 11, and 13 are dependent upon a cancelled claim. In the interest of compact prosecution, claims 9, 11, and 13 are considered dependent upon claim 1. Clarification is requested.
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, 3, 5, 9-18, 27, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 20190270289).
Okamoto discloses paper barrier material and packaging thereof. Concerning claims 1, 3, 13, and 27, Okamoto discloses the paper barrier material comprises a paper substrate having a grammage of 20 to 500 g/m2, specifically of 60 g/m2, wherein a water vapor barrier layer and gas barrier layer having a grammage of 0.2 to 20 g/m2 are disposed in this order and the water vapor barrier layer comprises styrene-acrylate, starch, and the like and the gas barrier layer comprises polyvinyl alcohol and the like disposed by solution coating with a grammage of 3 to 50 g/m2 (para. 0031-0052). Examiner notes that the grammage and materials of the paper substrate are the same and would therefore have the same density. Furthermore, the water vapor barrier layer is the same materials and structural position as that disclosed; as such, it is considered to be the claimed ductile base layer.
With respect to the claimed barrier deposition coating and thicknesses thereof, a further vapor deposited metal or metal oxide can be attached to at least one side of the paper barrier material, which would include embodiments of the vapor deposited gas barrier layer disposed on the first gas barrier layer (para. 0056). While it is noted that Okamoto is silent to the thickness of the vapor deposited coating, it would have been obvious to one of ordinary skill in the art to have any thickness including the claimed thickness for providing excellent gas (oxygen) barrier properties. Regarding claims 5, 29, and 31, the vapor deposited coating can be an aluminum and since the material is the same, the optical density would be within the claimed range (para. 0056). Examiner notes that the term “vapor deposition” would include physical and chemical vapor deposition.
Regarding claims 9-12, the water vapor barrier layer can contain an inorganic filler such as kaolin (para. 0040). Okamoto discloses that the kaolin can be found from 5 to 200 parts by weight per 10 to 150 parts by weight resin, which would include and encompass the claimed ranges and can further include functional additives such as crosslinking agent and a thickening agent (para. 0042-0046). As such, for the desired functional behavior of the water vapor barrier layer, one of ordinary skill in the art would have been motivated to add the claimed thickener and crosslinking compound at the contents as claimed.
With respect to claim 14, the barrier coatings are disposed on at least one surface of the paper substrate and as such, includes embodiments having barrier coatings on both surfaces and would meet the limitations as claimed (para. 0022). In regard to claims 15-17, given that the structure, materials, and processes are the same as that claimed, the properties as claimed would be within the claimed ranges. Regarding claim 18, the paper substrate is a kraft pulp, which is considered to be a softwood cellulose and would meet the limitations as claimed (para. 0032; Example 1).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 20190270289) as applied to claim 28 above, and further in view of Dӧll (ISCST; Hereafter “Doell”).
Okamoto discloses the above but is silent to the part layers as claimed.
Doell discloses a multilayer application of a coating liquid versus a single layer application allows for reduction in raw material costs (p. 2). As such, it would have been obvious to one of ordinary skill in the art to apply the “part-layers” as claimed, in order to reduce raw material costs.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5, 9-18, 27, and 29-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/710019 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Both sets of claims are directed to a laminated packaging material having the claimed structure and materials.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
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