DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15 in the reply filed on 4/3/2026 is acknowledged.
Claims 16-18 and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/3/2026.
Claim Objections
Claim 3 is objected to because of the following informalities: the claim recites “polyvinyl alcohol”, “ethylene vinyl alcohol”, “PVOH”, and “EVOH”, wherein “PVOH” is the same as “polyvinyl alcohol” and “EVOH” is the same as “ethylene vinyl alcohol”. Please put “PVOH” and “EVOH” in parentheses since the terms are initials for the polymer full names. Examiner notes that the above discussion is relevant to “NFC/MFC” and “NCC” which should also be in parentheses. 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 3-4 and 6-12 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 3, 4, 6, 9, and 11, 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 7-8 and 10 are rejected as being dependent upon claim 4.
Claim 3 recites the limitation "the barrier dispersion coating" in second line. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation “other latexes of acrylate polymers and copolymers”. It is not clear what would be considered “other latexes of acrylate polymer and copolymers”. Clarification is requested.
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.
Claims 1-6 and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shamoto et al. (JP 2020-189489).
Shamoto discloses a barrier laminate with paper as a base material for packaging materials. Concerning claim 1, Shamoto discloses the barrier laminate comprises a paper (or cellulosic) base material having a water vapor barrier layer and gas barrier layer disposed in that order, wherein the water vapor barrier layer is considered to be equivalent to ductile base layer pre-coating and the gas barrier layer is equivalent to the claimed gas barrier layer (abstract; para. 0009-0057). The paper (or cellulosic) base material has a density of 1.0 g/cm3 (or 1000 kg/m3) and a grammage of 25 g/m2 to 320 g/m2 and specifically 30 g/m2 (para. 0022 and 0068). Further, the water vapor barrier layer has a thickness of 1 to 30 microns (or 1000 nm to 30000 nm) (para. 0047). Examiner considers to the limitation “for use as a gas barrier sheet in a laminated packaging material for oxygen-sensitive products” as a statement of intended use and not given patentable weight since the laminate as set forth by Shamoto is the same as that claimed and would function in the same manner.
Regarding claims 2 and 3, the limitations are considered product-by-process limitations and since the structure is the same as that claimed and disclosed, the gas barrier coating is met by the disclosure of Shamoto since Shamoto discloses the materials are water soluble and are the same as that claimed (para. 0048-0054). Examiner also notes that there is no structural difference between “barrier dispersion coating” and “gas barrier coating” and as such, considered to be interchangeable. Concerning claims 4 and 5, the resins can include styrene-butadiene and isoprene-based materials in aqueous compositions (para. 0039-0043).
In regards to claims 6 and 9, the water vapor barrier layer further comprises a layered inorganic filler such as kaolin or bentonite (para. 0024-0029). With respect to claim 10, the water vapor barrier layer has a coating weight of 1 to 20 g/m2, specifically of 6 g/m2 (para. 0047 and Example 1). In regards to claim 11, Shamoto discloses the coating structure is disposed on “at least one surface” of the paper substrate which includes embodiments of coating structure disposed on both surfaces of the paper and as such, meet the limitations as claimed (abstract). Concerning claims 12-14, since the structure, materials, and grammage are the same and as such, have the claimed properties. With respect to claim 15, the paper substrate comprises at least 50% wood pulp which is a softwood pulp (para. 0017-0018).
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Shamoto et al. (JP 2020-189489).
Shamoto discloses the above, including the binder in the water vapor barrier layer is found at a content of 20 to 80% by mass (para. 0045) and the layered inorganic filler is found at a content of 2 to 80% by mass (para. 0031), wherein the ranges overlap and include the claimed ranges as claimed in claim 7. Regarding claim 8, Shamoto discloses the composition for the water vapor barrier layer can further include a thickener and other additives for functional behavior can be added as well as a cationic resin (para. 0032-0037 and 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.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/710076 (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 barrier-coated cellulose-based substrate for packaging, wherein the substrate has the same density and grammage and the gas barrier material includes and encompasses the claimed materials with a ductile-base layer pre-coating comprising the same or similar materials. The resulting laminate has the same or similar properties in at least overlapping ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 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 barrier-coated cellulose-based substrate for packaging, wherein the substrate has the same density and grammage and the gas barrier material includes and encompasses the claimed materials with a ductile-base layer pre-coating comprising the same or similar materials. The resulting laminate has the same or similar properties in at least overlapping ranges. While it is noted that the instant claims do not recite a packaging container, it would have been obvious to one of ordinary skill in the art to produce a packaging since that is the intended use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hartmann et al. (EP2344698), Santarella et al. (EP1687150), and Duarte et al. (WO 2021/260043) disclose paper substrates coated with at least one water barrier layer and at least one gas barrier layer.
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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