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 Objections
Claim 1 is objected to because of the following informalities: “the second substrate cellulose” on lines 4-5 should read “the second cellulose substrate”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: the first occurrence of the abbreviation “SR” in the claims should be accompanied by the full terminology for the abbreviation. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: “has” on line 2 should read “have”. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: “cellulose” should be inserted after “first” on line 4. Appropriate correction is required.
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 1-27 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. The term “highly refined cellulose fibers” or “highly refined fibers” in independent claim 1 or independent claim 18, respectively, is a relative term which renders the claim(s) indefinite. The term “highly refined” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification as filed (at page 8, lines 3-6) recites that the “term highly refined cellulose fibers as used herein refers to a cellulose fibers which have been subjected to considerable refining, but not to the extent that all of the cellulose fibers will pass through a 200 mesh screen (equivalent hole diameter 76 pm) of a conventional laboratory fractionation device (SCAN-CM 66:05)” (emphasis added), however, the Examiner notes that such “definition” is ambiguous and although the specification further recites that “[t]he term highly refined cellulose pulp as used herein refers to a cellulose pulp having a Schopper-Riegler (SR) number above 65, and preferably in the range of 70-90, as determined by standard ISO 5267-1” (emphasis added), which is more clearly defined than the above, the latter SR recitation is directed to the “pulp” and not the “fibers” as in claims 1 and 8, and further, given that standard ISO 5267-1 has multiple versions, the recitation of said standard without specifying the version or year raises an issue with respect to clarity of the “determined by” recitation given that one skilled in the art would clearly understand that standards may change over time and may be different between versions.
Independent claims 1 and 18 also recite that “a peeling strength” between the “second substrate cellulose” or the “second cellulose substrate”, respectively, and the tie layer is between 3-5 N, however, given that “peeling strength” is a relative property that is highly dependent upon the method and conditions utilized for determining said peeling strength, e.g., wet or dry, peeling speed, peeling angle, temperature, etc., the recitation of a “peeling strength” of “3-5 N” without specifying the method and conditions under which said “peeling strength” is obtained renders the claims indefinite, particularly given that “peeling strength” in the art is typically expressed in terms of force per unit length, such as N/cm, N/mm, and N/m, and not in just force units or Newtons (N) (see for example, Madeira, Correlation between Surface Energy and Adhesion Force of Polyethylene/Paperboard: A Predictive Tool for Quality Control in Laminated Packaging, Entire document). Hence, 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 2-17 and 19-27 do not remedy the above and hence are indefinite for the same reason(s).
Claim 8 is 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 claim 8, 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 4-5 and 12-14 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. Claims 4-5 and 12-14 recite ISO and/or ASTM standards, however, given that the recited ISO and ASTM standards have multiple versions, the recitation of a specific standard without specifying the date and/or version renders the claim(s) indefinite, especially when recited as “the standard” as in instant claims 12-13.
Claims 16 and 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. Claims 16 and 27 recite, “wherein the tie layer and the first cellulose substrate [have] a similar surface energy value” (emphasis added), however, given that the term “similar” is a relative term, it is unclear as to how “similar” the surface energy values need to be or how different the surface energy values can be in order to meet the claimed “similar surface energy value” limitation, e.g., of the same order of magnitude, within 5%, within 3%, etc.? Hence, 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.
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, 4-14, 16, 18-21, 23-25 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heiskanen (US2019/0091982A1). Heiskanen discloses a laminate, useful for packaging oxygen-sensitive foods, comprising (A) a multilayer fibrous-based oxygen barrier film comprising (i) a microfibrillated cellulose (MFC) film (reading upon the claimed “first cellulose substrate” of instant claims 1 and 18, and claimed “barrier film” of instant claims 7 and 24), (ii) an oxygen barrier polymer layer, (iii) an optional tie layer, and (iv) an outermost polyolefin layer; combined with (B) a fibrous paper or paperboard base by means of (C) an “intermediate poly-ethylene layer” (reading upon the claimed “tie layer comprising a hot melt adhesive” of instant claims 1 and 18, “arranged between the first cellulose substrate and the second cellulose substrate” as in instant claim 2, “providing a tie layer comprising a hot melt adhesive between said first cellulose substrate and said second cellulose substrate to form said laminate” as in instant claim 18, “applied by extrusion coating” as in instant claim 19, and “the hot melt adhesive comprises a thermoplastic resin” as in instant claims 8 and 21; Abstract, Paragraph 0035); wherein the fibrous paper or paperboard (B) is made of chemical or wood pulp (reading upon the claimed “second cellulose substrate” of instant claims 1 and 18, and particularly “paper or paperboard” as in instant claims 10 and 25; Paragraph 0036). Heiskanen discloses that the MFC film (i) is formed from an MFC suspension containing microfibrils of 100 nm to 200 µm fiber length and a Schopper-Riegler drainability number of at least 70 SR, preferably at least 90 SR, wherein the MFC may be obtained using an extended refining process (Paragraphs 0025-0031, reading upon the claimed “highly refined cellulose fibers” of instant claims 1 and 18, and particularly as in instant claims 4-5) and the MFC film preferably has a basis weight of about 20 to 40 g/m2 (gsm) (Paragraphs 0015 and 0031, as in instant claims 6 and 23). Heiskanen discloses that the fibrous paper or paperboard base may comprise a paperboard having a basis weight of 130 to 250 gsm, or alternatively a paper of weight 40 to 130 gsm (Paragraph 0022, as in instant claim 11). Heiskanen discloses that the laminate can be produced by first extrusion coating the fibrous base with a layer of polyethylene, preferably LDPE (as in instant claims 18-19), and then dry or extrusion laminating the MFC film based multilayer film to the PE coated fibrous base, “which includes adhering an uncoated or LDPE coated reverse side of the MFC film to the PE coat of the fibrous base” (Paragraph 0036; as in instant claim 18), with exemplified laminates produced utilizing an extruded LDPE layer of 12 g/m2 as a tie layer between the MFC film and the paper or paperboard layer (reading upon the claimed tie layer thickness of 3-100 µm as recited in instant claims 9 and 20 given the density of LDPE) and exhibiting oxygen transmission rates (OTR) and water vapor transmission rates (WVTR) falling within the claimed ranges as recited in instant claims 12 and 13, respectively (Examples, Paragraphs 0037-0040, Table 1).
Hence, Heiskanen generally discloses a barrier laminate as in instant claims 1-2 and 4-13 as well as a method for manufacturing a barrier laminate as in instant claims 18-21 and 23-25, and although Heiskanen does not specifically disclose a “peeling strength” between the paper or paperboard as the instantly claimed second cellulose substrate and the thermoplastic LDPE layer as the claimed tie layer of “between 3-5 N” as recited in instant claims 1 and 18, the Examiner takes the position that the laminate disclosed by Heiskanen, which is produced by the same materials and the same process as in the instant invention, would inherently exhibit “a peeling strength” between the paper or paperboard and the LDPE tie layer of “between 3-5 N” as instantly claimed when measured by some arbitrary method and under some arbitrary conditions, such that given the lack of clarity with respect to the claimed “peeling strength” as discussed in detail above, and absent any evidence to the contrary, Heiskanen anticipates the claimed invention as recited in instant claims 1-2, 4-13, 18-21, and 23-25.
With respect to instant claim 14, although Heiskanen does not specifically disclose the KIT value of the laminate as instantly claimed, given that the laminate disclosed by Heiskanen comprises the same layer structure, layer materials, and basis weights/thickness as in the instantly claimed invention, the Examiner takes the position that the laminate disclosed by Heiskanen would inherently exhibit a KIT value (e.g., grease resistance) as instantly claimed when measured according to the same method and conditions as in the instant invention. Hence, absent any evidence to the contrary, the Examiner takes the position that Heiskanen anticipates instant claim 14.
With respect to instant claims 16 and 27, given that Heiskanen clearly discloses that the paper or paperboard substrate as the claimed second cellulose substrate may be extrusion coated with the LDPE layer as the claimed tie layer, and then laminated to an LDPE-coated MFC film as the claimed first cellulose substrate comprising highly refined cellulose fibers as discussed above, such that the LDPE surface of the LDPE-coated MFC film would inherently have a “similar surface energy value” as the LDPE tie layer, Heiskanen anticipates instant claims 16 and 27, especially in light of the lack of clarity thereof as discussed above.
Claims 1-3, 6-10, and 18-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saukkonen (US2020/0318293A1). Saukkonen discloses a paper or paperboard laminated product for use as a packaging material, particularly for packaging foodstuff, wherein the laminated product comprises a paper or paperboard product (reading upon the claimed “second cellulose substrate” of instant claims 1 and 18, particularly as in instant claims 10 and 25) laminated to a barrier laminate having oxygen barrier properties and comprising a porous fiber based layer formed from a mixture of 40-90wt%, preferably 60-90wt%, of nanocellulose or microfibrillated cellulose fibers produced as discussed in Paragraphs 0041-0047 (reading upon the claimed “highly refined [cellulose] fibers” of instant claims 1 and 18, in a content as in instant claims 3 and 22, and “barrier film” as in instant claims 7 and 24); and 10-60wt%, preferably 10-40wt%, of “normal” cellulosic fibers having an SR (Schopper-Riegler) value below 60; and a polymer layer attached to one or both sides of said porous fiber based layer (Entire document, particularly Abstract; Paragraphs 0008, 0012-0013, 0024-0025, and 0028; Claims 1-3, 13, and 17). Saukkonen discloses that the polymer layer is preferably a polyolefin, such as polyethylene (PE) or polypropylene (PP) (Paragraph 0019, reading upon the claimed “tie layer comprising a hot melt adhesive” as in instant claims 1 and 18, and “wherein the hot melt adhesive is a thermoplastic resin” as in instant claims 8 and 21), and is preferably applied to the fiber based layer by extrusion coating technology (Paragraph 0033); wherein multiple layers can be provided on at least one side of the fiber based layer, such as a multilayer polymer of two or more different polymer layers (Paragraph 0034), and that by providing both sides of the fiber based layer with at least one polymer layer, a laminate having good barrier properties on both sides is achieved (Paragraph 0035, hence reading upon “tie layer arranged between the first cellulose substrate and the second cellulose substrate” as in instant claim 2, “providing a tie layer comprising a hot melt adhesive between said first cellulose substrate and said second cellulose substrate to form said laminate” as in instant claim 18, and “applied by extrusion coating” as in instant claim 19). Saukkonen also discloses that the polymer layer may further comprise tie resins blended with the polymer layer to improve adhesion of the polymer layer and the porous fiber based layer, wherein suitable tie resins include an ethylene acid acrylate terpolymer (Paragraph 0036, e.g., an ethylene-acrylate as in the “such as” limitation of instant claim 8), and that one advantage of the invention “is that the adhesion between the fiber based layer and the polymer layer is increased compared to if the fiber based layer is non-porous” (Paragraph 0031).
Hence, Saukkonen generally discloses a barrier laminate as in instant claims 1-3, 7-8, and 10, as well as a method for manufacturing a barrier laminate as in instant claims 18-19, 21-22, and 24-25, and although Saukkonen does not specifically disclose a “peeling strength” between the paper or paperboard, as the instantly claimed second cellulose substrate, and the extrusion coated polyolefin layer, as the claimed tie layer, applied on the porous fiber based layer containing nanocellulose or microfibrillated cellulose fibers as the claimed first cellulose substrate to which the paper or paperboard is laminated, of “between 3-5 N” as recited in instant claims 1 and 18, the Examiner takes the position that the laminate disclosed by Saukkonen, which is produced by the same materials and essentially the same process as in the instant invention, would inherently exhibit “a peeling strength” between the paper or paperboard and the polyolefin layer of “between 3-5 N” as instantly claimed when measured by some arbitrary method and under some arbitrary conditions, such that given the lack of clarity with respect to the claimed “peeling strength” as discussed in detail above, and absent any evidence to the contrary, Saukkonen anticipates the claimed invention as recited in instant claims 1-3, 7-8, 10, 18-19, 21-22, 24 and 25.
With respect to instant claims 6 and 23, Saukkonen discloses that the fiber based layer, as the claimed first cellulose substrate, preferably has a grammage of less than 60 gsm, preferably less than 45 gsm, and preferably between 20-40 gsm (Paragraph 0020), thereby anticipating instant claims 6 and 23.
With respect to instant claims 9 and 20, Saukkonen discloses that the polymer layer, or preferably polyolefin layer, has a grammage of less than 35 gsm, preferably between 15-25 gsm with respect to a single polymer layer (falling within the instantly claimed thickness range given the density of PE and PP), and given that Saukkonen specifically discloses working examples utilizing an extrusion coated LDPE layer of 25 gsm, corresponding to a thickness within the claimed range, Saukkonen anticipates instant claims 9 and 20.
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.
Alternatively, claims 1-2, 4-14, 16, 18-21, 23-25 and 27, as well as claims 3, 15, 17, 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Heiskanen, as applied to claims 1-2, 4-14, 16, 18-21, 23-25 and 27 above, and as evidenced by or in further view of Al-Gharrawi (Improving Recycling of Polyethylene-Coated Paperboard with a Nanofibrillated Cellulose Layer) and/or Madeira (Correlation between Surface Energy and Adhesion Force of Polyethylene/Paperboard: A Predictive Tool for Quality Control in Laminated Packaging).
The teachings of Heiskanen are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory, particularly in light of the lack of clarity of the claimed “peeling strength” as discussed above, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the laminate taught by Heiskanen, which is produced by the same materials and the same process as in the instant invention, to exhibit a “peeling strength” between the paper or paperboard, as the instantly claimed second cellulose substrate, and the thermoplastic LDPE layer, as the claimed tie layer, of “between 3-5 N” as instantly claimed, particularly when measured by some arbitrary method and under some arbitrary conditions. Additionally, given that it is well established in the art that polyethylene, such as LDPE as utilized in Heiskanen, generally has low or “poor” adhesion to paper/paperboard, particularly when the paper or paperboard has a lower surface energy value than the polyethylene (as evidenced by Madeira, Entire document, particularly Section 2; e.g., as in instant claims 15 and 26) and that typically upon recycling of polyethylene-coated paper/paperboard by separating or peeling the polyethylene layer from the paper/paperboard substrate, the peeling force may actually be a function of the paper strength given that upon separation, the paper/paperboard tears leaving fibers attached to the polyethylene layer due to failure of the paper structure as taught by Al-Gharrawi (Entire document, particularly Introduction and p. 3293; see also Madeira, Section 2). Madeira also teaches that the delamination force of polyethylene-paper laminates is known to increase with paper surface energy such that the surface energy of the paper/paperboard can be tailored utilizing various coatings or treatments on an outer surface thereof to adjust the adhesion force between the paper/paperboard and the polyethylene coating (Entire document); while Al-Gharrawi demonstrates that increasing the pressing temperature at which a PE film is laminated to the paper/paperboard substrate generally increases the peeling load (N) with a 10 second pressing at a temperature of about 210°C resulting in a peeling load of about 3 N for a conventional PE coated paperboard (Results and Discussion, Figs. 9-10; e.g., similar to the claimed 3-5 N) that does not have an additional coating layer of nanofibrillated cellulose (NFC) provided on the paperboard before applying the PE coating wherein said additional NFC layer not only improves the barrier properties of the laminate but also reduces the peeling load and improves the recyclability or fiber recovery of the PE-coated paperboard due to good separation between the PE and the paperboard (Entire document, particularly Abstract, Results and Discussion). Hence, given these known concepts in the art as evidenced or taught by Madeira and/or Al-Gharrawi, the Examiner further takes the position that 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 surface energies and resulting bonding/peeling strength to provide the desired bonding strength during use of the laminate for a particular end use and desired peeling properties for recycling or reuse of the layers of the laminate taught by Heiskanen such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-2, 4-14, 16, 18-21, 23-25 and 27 as well as claims 15 and 26 would have been obvious over the teachings of Heiskanen in view of Al-Gharrawi and/or Madeira.
With respect to instant claims 3 and 22, given the description of the MFC film and production process as taught by Heiskanen in Paragraphs 0025-0032, wherein Heiskanen specifically teaches that the MFC comprises partly or totally fibrillated cellulose fibers with a fiber length and SR value as noted above (thus “highly refined cellulose fibers”), and that the film is an “MFC” film prepared by an MFC suspension containing the MFC fibers and only referring to “eventual solid additives such as fillers” (Paragraph 0031), which the Examiner notes are typically provided in a minor weight content, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the “MFC” film taught by Heiskanen to contain a major weight or “at least 50wt%” of the MFC fibers as the claimed “highly refined cellulose fibers” of instant claims 3 and 22. Hence, the claimed invention as recited in instant claims 3 and 22 would have been obvious over the teachings of Heiskanen in view of Al-Gharrawi and/or Madeira.
With respect to instant claim 17, although Heiskanen does not specifically teach that the fibrous paper or paperboard (B) that is made of chemical or wood pulp includes an internal sizing agent, it is well established in the art that a sizing agent, including an internal sizing agent, is an obvious additive for fibrous paper or paperboard produced from chemical or wood pulp (as evidenced by Madeira, Section 2 and page 5), such 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 Heiskanen in view of Al-Gharrawi and/or Madeira given that it is prima facie obviousness to combine prior art elements according to known methods to yield predictable results.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Anderson (US2013/0087268A1) discloses a multi-ply paper substrate having an internal bond of 10-180 milli-ft-lb/sq. in. comprising at least two paper plies bonded to one another by an adhesive, such as an adhesive in the form of a melt or a thermoplastic polymer adhesive, wherein the multi-ply paper substrate is designed such that only one ply delaminates upon peeling the substrate apart.
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