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 .
The amendment filed 5/11/2026 has been entered. Claim 8 has been canceled. Claims 1-7 and 9-27 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1-7 and 9-27 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. Amended independent claims 1 and 18 now recite, “wherein a peeling strength between the second cellulose substrate and the tie layer is between 3-5 N determined by an Alwetron peel test,” however, given that the accepted units for “peeling strength” including with respect to an “Alwetron peel test” when using an Alwetron machine such as an Alwetron TCT 5 as in the instant invention, or similar Alwetron TCT universal testing machine, are force per distance (e.g., width or length) such as N/m or N/cm or N/15 mm or N/25 mm, etc. as discussed in the prior office action (see paragraph 8 of the prior office action which is incorporated herein by reference, and as further evidenced by Oderkerk, US2020/0290331A1, Paragraph 0112; or Penttinen, US2006/0193994A1, Paragraphs 0051 and 0099-0103, and Charts 3-4; or Prieto, US2023/0192969A1, Paragraph 0051); or given that N=J/m, in units of J/m2 as in Kinloch (The mechanics of peel tests; Entire document, particularly Section 3), the recitation of a “peeling strength” in units of force, i.e., Newtons (N) only, without clearly specifying the size of the test specimen and/or the test conditions under which said “N” value was obtained by said “Alwetron peel test” renders the claims indefinite given that one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-7, 9-17, and 19-27 do not remedy the above and hence are indefinite for the same reasons.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
With the above in mind, it is noted that although the specification discusses testing conditions under which a peeling strength may be determined by an “Alwetron peel test” or a peel test conducted on an Alwetron machine, given that the claims and the specification do not clearly define the claimed “an Alwetron peel test” as being limited to testing conditions as recited in the specification, e.g., width, length, release angle, peeling speed, etc., the Examiner takes the position that the claimed “peeling strength” may be determined by any “Alwetron peel test” utilizing any testing conditions “given that limitations from the specification are not read into the claims”, and one skilled in the art would readily understand that the testing conditions, particularly peel/release angle, peeling speed, and temperature, directly affect the measured peeling strength as evidenced by Kinloch (Entire document, particularly Section 3). Further, given that a “peeling strength”, including one measured with an Alwetron machine, e.g., a universal tensile and material testing system, is typically reported in terms of average force divided by width of the test specimen, e.g., N/m or N/15 mm or N/25 mm, etc., as discussed in the prior office action and further discussed above (see also the attached Google search results for “Alwetron peel test”), the recitation of a “peeling strength” (as determined by an Alwetron peel test) in force units only, without clearly reciting the size of the test specimen for said force, is improper and/or incomplete, and hence, the claimed force or “N” range with respect to the “peeling strength” has been interpreted as being applicable to and/or determined based upon any width or any size specimen and under any testing conditions utilizing any Alwetron machine or similar universal tensile testing machine capable of measuring peel strength.
Claim Rejections - 35 USC § 103
Claims 1-7, 9-14, and 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Baumlin (US2020/0385929A1). Baumlin teaches a translucent or transparent paper material having barrier properties and a laminate produced therefrom, particularly for packaging applications (Entire document, particularly Abstract, Paragraphs 0001-0003, 0018-0019, and 0024-0032), wherein the translucent or transparent paper comprises a fibrous substrate, preferably a tracing paper, that comprises cellulose fibers refined to above 40° SR, in particular above 60° SR, preferably above 80° SR (Schopper-Riegler) (Paragraph 0034, reading upon the claimed “first cellulose substrate comprising highly refined [cellulose] fibers” having “a Schopper-Riegler (SR) value of 65 or higher, as determined by standard ISO 5267-1” as in instant claims 1 and 18 given that ISO 5267-1 is a known standard that specifies the Schopper-Riegler (SR) method for determining the SR value of a pulp in the art; and also reading upon the SR ranges as in instant claims 4-5); and has a basis weight of 40 to 200 g/m2 (gsm) (Paragraph 0033), such as a basis weight of 42 or 52 gsm (Paragraph 0062, as in instant claims 6 and 23). Baumlin teaches that the translucent or transparent paper is particularly a natural tracing paper that “derives its translucency primarily from the unusually high degree of refining of the cellulose pulp fibers from which it is made” (Paragraph 0104) that can serve as a recyclable, repulpable, and renewable alternative to plastics used in wrappers or lamination films (Abstract, Paragraphs 0001 and 0018); and may be bonded or laminated with a standard paper, cardboard, or paperboard (reading upon and/or rendering obvious the claimed “second cellulose substrate” given that one skilled in the art would reasonably expect such standard paper, cardboard, or paperboard to be made from cellulose, particularly in light of the examples) via a glue or adhesive disposed therebetween by any available technique, “wherein the glue or adhesive comprises a material selected from a group consisting of polyurethane adhesives, acrylic adhesives, one or two-component polychloroprene adhesive, polyvinyl acetate, modified starch, methylcellulose, and vinylic dispersion” (Entire document, particularly Paragraphs 0007, 0063-0066, 0090-0092, and 0127-0130), with Example 1 utilizing a coated paper with a basis weight of 115 gsm laminated to a coated tracing paper of the invention with a basis weight of 42 gsm by applying an adhesive layer formed from a polyurethane adhesive therebetween (e.g., as in instant claims 1 and 18).
Hence, with respect to the claimed invention, Baumlin clearly teaches a barrier laminate comprising a first cellulose substrate comprising highly refined cellulose fibers having a Schopper-Riegler (SR) value of preferably above 80 (reading upon the claimed SR value as recited in instant claims 1, 4-5 and 18), an adhesive or “tie” layer comprising a polyurethane adhesive, and a standard paper or paperboard as a second cellulose substrate as recited in instant claims 1 and 18, particularly as in instant claims 10 and 25, wherein the adhesive/tie layer is arranged between the first and second cellulose substrates as in instant claims 2 and 18, such that the only differences between the teachings of Baumlin and instant claims 1-2, 4-5, 10, 18, 21, and 25, is that Baumlin does not specifically teach that the polyurethane adhesive is a “hot melt” “thermoplastic” polyurethane and that the peeling strength between the polyurethane adhesive as the claimed tie layer and the standard paper/paperboard as the claimed second cellulose substrate “is between 3-5 N determined by an Alwetron peel test” as instantly claimed. However, with respect to the polyurethane adhesive, given that Baumlin does not limit the polyurethane adhesive to any particular type whether thermoplastic or thermosetting, and that in general, “polyurethane adhesives” encompass “thermoplastic polyurethane”, it would have been obvious to one having ordinary skill in the art to utilize any known polyurethane adhesive in the art such as a thermoplastic polyurethane adhesive in the invention taught by Baumlin, thereby reading upon and/or rendering obvious the claimed “hot melt adhesive comprises…thermoplastic polyurethane” of instant claims 1 and 18, and claimed “thermoplastic resin” of instant claim 21, given that it prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success. With respect to the claimed “peeling strength” of “between 3-5 N determined by an Alwetron peel test” as recited in instant claims 1 and 18, the Examiner takes the position that a “peeling strength” between the polyurethane adhesive and the standard paper or paperboard of the laminate taught by Baumlin would fall within the claimed “between 3-5 N” range when determined by some arbitrary Alwetron peel test utilizing some arbitrary width or specimen size under some arbitrary testing conditions such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-2, 4-5, and 10, and similarly instant claims 18, 21, and 25 would have been obvious over the teachings of Baumlin.
With respect to instant claims 3 and 22, although Baumlin does not specifically recite that the translucent or transparent paper, particularly the tracing paper, as the claimed first cellulose substrate comprises at least 50wt% of highly refined cellulose fibers based on the total dry weight of the first cellulose substrate as instantly claimed, given that Baumlin does teach that the translucent or transparent paper is made of highly refined cellulose fibers, particularly natural tracing paper that “derives its translucency primarily from the unusually high degree of refining of the cellulose pulp fibers from which it is made” as discussed above, and that the translucent or transparent paper is recyclable and/or repulpable (Abstract, Paragraph 0102) “wherein the amount (by mass) of the non-renewable materials comprised in the coating layer relative to the cellulose fibers contained in the fibrous substrate is in a range from 2 to 20%” (Paragraph 0050) with a coating layer dry coat weight of 1 to 40 gsm with respect to a paper basis weight of 40 to 200 gsm, with examples at 9.4 and 8.2 gsm dry coat weight to 42 gsm paper basis weight (Example 1); and that the fiber yield from a repulpability test “must be at least 80% based on the total fiber weight, or 85% based on the bone dry fiber charged to the pulper” (Paragraph 0107), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, it would have been obvious to one having ordinary skill in the art to provide the translucent or transparent tracing paper taught by Baumlin with greater than 50wt% of the highly refined cellulose fibers as in instant claims 3 and 22.
With respect to instant claims 6 and 23, as discussed above, Baumlin teaches that the translucent or transparent paper has a basis weight of 40 to 200 gsm, overlapping the claimed 55 gsm or less range, with data points at 42 gsm and 52 gsm, falling within the claimed 55 gsm or less range, and given that Baumlin specifically teaches examples utilizing 42 gsm falling within the claimed 55 gsm or less range, instant claims 6 and 23 would have been obvious over the teachings of Baumlin.
With respect to instant claims 7 and 24, as discussed above, Baumlin teaches that the translucent or transparent paper made of the highly refined cellulose fibers provides barrier properties, wherein a coating layer(s) provided on the fibrous cellulose substrate can enhance the transparency of the translucent paper and create moisture barrier properties at the same time (Entire document, particularly Paragraphs 0019, 0023, 0029, 0105, and 0108); thereby reading upon the claimed “is a barrier film” as in instant claims 7 and 24, and hence, instant claims 7 and 24 would have been obvious over the teachings of Baumlin.
With respect to instant claims 9 and 20, Baumlin teaches that the glue or adhesive is disposed in a layer having a thickness in a range of 2 to 12 µm (Paragraph 0067), overlapping the claimed thickness range of 3-100 µm, with a majority of the thickness taught by Baumlin falling within the claimed range, and hence, the claimed invention as recited in instant claims 9 and 20 would have been obvious over the teachings of Baumlin.
With respect to instant claim 11, although Baumlin teaches that the translucent or transparent paper may be bonded or laminated to a standard paper, cardboard or paperboard, as discussed above, generally designated as a paper support (Paragraph 0128), Baumlin does not specifically limit the basis weight thereof as recited in instant claim 11. However, given that Baumlin does teach an example utilizing a coated paper having a basis weight of 115 gsm, falling within the claimed range of 20-500 gsm, such that it would have been obvious to one skilled in the art to utilize similar basis weights in producing the laminated paper product or packaging taught by Baumlin, the claimed invention as recited in instant claim 11 would have been obvious over the teachings of Baumlin.
With respect to instant clams 12 and 13, Baumlin teaches that the paper of the invention may serve the purpose of protecting an item it contacts, surrounds, contains or covers against scratches, fingerprints, oil/water stains, oxygen and other contaminants (Paragraphs 0009), wherein coating layer(s) can be applied to the translucent or transparent paper to further enhance the transparency as noted above and/or to provide barrier properties against moisture, oxygen and other gases when applied as a coating on the fibrous substrate of the translucent or transparent paper (Paragraphs 0023, 0108, and 0125). Baumlin specifically teaches that the translucent or transparent paper may have a water vapor transmission rate (WVTR) of less than or equal to 20 g/m2/day at 85% relative humidity and 23°C, measured in accordance with test method ISO 2528 (Paragraphs 0029-0031), preferably less than or equal to 10 g/m2/day, or less than or equal to 5 g/m2/day, with examples utilizing a tracing paper that as is has a WVTR of only 23.7 g/m2/day, for producing coated tracing papers with WVTR values of 15.3 and 3.3 g/m2/day, such that similar WVTR values at 50% RH as well as low OTR values at 50% RH for the overall laminate or laminated paper product taught by Baumlin would have been obvious to one having ordinary skill in the art based upon the intended end use of the laminated paper packaging, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 12 and 13 would have been obvious over the teachings of Baumlin.
With respect to instant claim 14, although Baumlin does not specifically teach a “KIT value”, e.g., grease resistance, as instantly claimed, given that Baumlin clearly teaches that the coated paper provides protection from grease (Paragraphs 0023, 0105, and 0125), and that the laminated paper product comprises the same layer materials and basis weights as in the claimed invention, it would have been obvious to one having ordinary skill in the art to reasonably expect the laminate or laminated paper packaging product taught by Baumlin to exhibit a similar KIT value as instantly claimed, and/or obvious to one having ordinary skill in the art to determine the optimum layer materials to provide a desired KIT value for a particular end use of the paper or packaging material wherein absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 14 would have been obvious over the teachings of Baumlin.
With respect to instant claim 17, given that Baumlin teaches that the translucent or transparent paper may be bonded or laminated to a standard paper, paperboard or cardboard as discussed above, wherein such standard paper substrates typically comprise an internal sizing agent, an obvious species of conventional additive in the art (as established on the record, e.g., see paragraph 27 of the prior office action which is incorporated herein by reference), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 17 would have been obvious over the teachings of Baumlin.
With respect to instant claim 19, as discussed above, Baumlin teaches that the translucent or transparent paper can be bonded to a paper or paperboard item “by any available technique, in particular laminated with said paper or paperboard item” (Paragraph 0127), and given that Baumlin teaches that the glue or adhesive may be applied in a continuous layer and teaches similar coating techniques as instantly claimed for applying other layers of the product, such as an ink adhesion layer (Claim 14), the claimed invention as recited in instant claim 19 would have been obvious over the teachings of Baumlin.
Claims 1-7, 9-14, and 17-25 as well as claims 15-16 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Baumlin (US2020/0385929A1), as applied above to claims 1-7, 9-14, and 17-25, in view of Zimmer (US2024/0051283A1) or Al-Gharrawi (Improving Recycling of Polyethylene-Coated Paperboard with a Nanofibrillated Cellulose Layer) and in further view of Madeira (Correlation between Surface Energy and Adhesion Force of Polyethylene/Paperboard: A Predictive Tool for Quality Control in Laminated Packaging).
The teachings of Baumlin are discussed in detail above and incorporated herein by reference, wherein it is again noted that Baumlin teaches a recyclable, repulpable, and renewable alternative to plastic wrappers and laminates (Abstract), particularly an alternative to polyethylene (PE) films wherein although such plastic materials are renewable, they are difficult to recycle once they are laminated to paperboards (Paragraph 0014). Baumlin also teaches that the “coating layer provided on a repulpable paper is readily separable from paper fibers or dispersible during the repulping operation, enabling recovery of paper fibers” (Paragraph 0106), and that the translucent or transparent paper of the invention does not contain a plastic film and thus is recyclable and/or repulpable (Paragraph 0102), wherein the coating layer(s) may comprise materials that are not necessarily renewable but that in such case, the mass of the non-renewable material comprises in the coating layer is very low relative to the total mass of the cellulose fibers in the translucent or transparent paper thereby allowing the translucent or transparent paper to be repulpable and/or recyclable (Paragraph 0110). Baumlin specifically teaches that the translucent or transparent paper may be used in packaging, especially luxury packaging, in order to wrap, hold, or laminate objects, including closed boxes or containers that protect, identify and transport a wide range of goods, including food and consumer products (Paragraph 0009), and may be bonded to a paper or paperboard item so that printed features provided thereon are protected from moisture, grease and mechanical abrasion while being visible through said translucent or transparent paper (Paragraph 0105).
Hence, it is evident that Baumlin is concerned with recycling of paper-based packaging materials and packaging articles, and although Baumlin does not specifically limit the peeling strength between the adhesive layer as the claimed tie layer and the standard paper, paperboard or cardboard as the claimed second cellulose substrate to 3-5 N as instantly claimed, given that it is well established in the art that such laminated, multilayer packaging materials need to have sufficient bond strength to maintain integrity during a given packaging end use but are able to be separated for recycling purposes, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum adhesive from those taught by Baumlin (which would also read upon and/or suggest the claimed EVA and/or ethylene-acrylate as well as the thermoplastic polyurethane discussed above given that “acrylic adhesives” would broadly encompass ethylene-acrylate adhesive and/or “vinylic dispersion” adhesives would broadly encompass and/or suggest the claimed EVA and/or ethylene-acrylate), bonding conditions, and thus resulting peeling strength for a given packaging end use and recycling process wherein given that similar interlayer peeling strengths are known in the art for similar recyclable paper-based packaging materials as taught by Zimmer (Entire document, particularly Abstract, Paragraphs 0001-0002, 0011-0013, 0025-0030, 0034, and 0038) and/or given that the peeling force may actually be a function of the paper strength with similar coated paperboards having a paper strength that would read upon and/or suggest the instantly claimed peeling strength as taught by Al-Gharrawi (directed to similar concepts as in Baumlin) as discussed in detail in the prior office action (and incorporated herein by reference, see also Results and Discussion), the claimed invention as recited in instant claims 1-7, 9-14, and 17-25 would have been obvious over the teachings of Baumlin in view of Zimmer or Al-Gharrawi.
Further, given that it is well established in the art that adhesion is directly driven by surface energy as evidenced by Madeira (Entire document, and previously discussed on the record and incorporated herein by reference), wherein the same or similar surface energies between two layers generally provides better adhesion, due to better wetting, than the adhesion between surfaces with different surface energies (e.g., as in instant claims 15-16 and 26-27), and given that one skilled in the art before the effective filing date of the claimed invention would have been motivated to determine the desired interlayer adhesion, e.g., as a function of surface energy similarities/differences, between the layers of the invention taught by Baumlin in view of Zimmer or Al-Gharrawi based upon the desired end use and recyclability as discussed above, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-7, 9-14, and 17-25 as well as instant claims 15-16 and 26-27 would have been obvious over the teachings of Baumlin in view of Zimmer or Al-Gharrawi, and further in view of Madeira given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection presented above. With respect to the rejection under 35 U.S.C. 112(b), Applicant’s arguments on pages 7-8 have been fully considered, however, given that “a peeling strength” in the art is typically reported in terms of force per distance (e.g., width or length) such as N/m or N/cm or N/15 mm or N/25 mm, as noted in the prior office action and further discussed above including with respect to “an Alwetron peel test”, especially since an Alwetron machine (i.e., an ABB Lorentzen & Wettre (L&W) Alwetron Tensile Tester) does not limit the size of a test specimen to one width only (as evidenced by the attached L&W Tensile Tester technical information from ABB, Entire document; see also the attached Google Search results for an “Alwetron” machine), and not in terms of Newtons (N) or units of force alone as in the claimed invention without clearly defining or reciting the size of the test specimen for said force and/or how said force was determined, the Examiner maintains her position that the claims (as amended) are indefinite given that one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 5/11/2026.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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