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 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 in the reply filed on 4/27/2026 is acknowledged.
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.
Claims 1-8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shiokawa et al. (JP 2015-214365, see machine translated version).
Regarding claims 1 and 6, Shiokawa et al. teach a packaging material (paragraphs [0001], [0013]) comprising a paperboard substrate comprising a first side and a second side (paragraphs [0001], [0013], [0021]), an extrusion coated polymer layer attached to the first side (paragraphs [0013], [0021], [0027]), wherein the extrusion coated polymer layer comprises polyethylene (paragraph [0022]) with a melt index of 2 g/10 min or more and 10 g/10 min or less (paragraph [0024]).
Shiokawa et al. do not teach wherein the extrusion coated polymer layer has a grammage of less than 12 gsm. However, Shiokawa et al. teach wherein the extrusion coated polymer layer has a thickness of 10 µm to 40 µm (paragraph [0023]). Where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in grammage involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the grammage of Shiokawa et al. in order to provide good productivity and sealing properties (Shiokawa et al., paragraph [0016]).
Regarding claim 2, Shiokawa et al. teach wherein the packaging material does not comprise any further synthetic polymer layers (paragraphs [0013], [0021], Fig. 2A).
Regarding claim 3, Shiokawa et al. teach wherein the extrusion coated polymer layer is applied directly onto and adjacent the first side of the paperboard substrate and wherein the extrusion coated polymer layer forms an outermost layer of the packaging material (paragraphs [0013], [0021], Fig. 2A).
Regarding claim 4, Shiokawa et al. teach wherein the extrusion coated polymer layer does not comprise any pinholes which reads on less than 10 pinholes per m2, as measured using EN 13676:2001 (entire document).
Regarding claim 5, Shiokawa et al. teach a packaging material (paragraphs [0001], [0013]) comprising a paperboard substrate comprising a first side and a second side (paragraphs [0001], [0013], [0021]), an extrusion coated polymer layer attached to the first side (paragraphs [0013], [0021], [0027]), wherein the extrusion coated polymer layer comprises polyethylene (paragraph [0022]) with a melt index of 2 g/10 min or more and 10 g/10 min or less (paragraph [0024]), wherein the extrusion coated polymer layer has a thickness of 10 µm to 40 µm (paragraph [0023]).
Shiokawa et al. are silent on wherein a reject received from a re-pulping of the packaging material, determined according to PTS test method RH021/97, is less than 10 weight % based on a dry weight of the packaging material of 100 weight %. It is elementary that a mere recitation of a newly discovered property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It is inherent that the inclusion of the same paperboard substrate and extrusion coated polyethylene layer of Shiokawa et al. would possess the same reject as the instant application because it possesses all the other claimed constituents in the same structure. MPEP 2112.01
Regarding claim 7, Shiokawa et al. teach wherein the extrusion coated polymer layer consists essentially of a low density polyethylene (paragraphs [0013], [0021], [0022], [0027]).
Regarding claim 8, Shiokawa et al. teach wherein the extrusion coated polymer layer essentially consists of bio-based polyethylene (paragraphs [0013], [0021], [0022], [0027]).
Regarding claim 14, Shiokawa et al. teach a cup (paragraph [0001], [0013]) made comprising the packaging material (paragraphs [0001], [0013]) comprising a paperboard substrate comprising a first side and a second side (paragraphs [0001], [0013], [0021]), an extrusion coated polymer layer attached to the first side (paragraphs [0013], [0021], [0027]), wherein the extrusion coated polymer layer comprises polyethylene (paragraph [0022]) with a melt index of 2 g/10 min or more and 10 g/10 min or less (paragraph [0024]), wherein the extrusion coated polymer layer (paragraphs [0013], [0021], [0027]) forms an inner side of the cup and is configured to be in contact with contents of the cup (paragraphs [0013], [0021]).
Shiokawa et al. do not teach wherein the extrusion coated polymer layer has a grammage of less than 12 gsm. However, Shiokawa et al. teach wherein the extrusion coated polymer layer has a thickness of 10 µm to 40 µm (paragraph [0023]). Where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in grammage involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the grammage of Shiokawa et al. in order to provide good productivity and sealing properties (Shiokawa et al., paragraph [0016]).
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shiokawa et al. (JP 2015-214365, see machine translated version) in view of Nevalainen et al. (US Patent Application No. 2017/0008264).
Shiokawa et al. are relied upon as disclosed above.
Regarding claim 9, Shiokawa et al. fail to teach wherein the extrusion coated polymer layer comprises at least a first sub-layer and a second sub-layer. However, Nevalainen et al. teach a packaging material (page 1, paragraph [0001], page 2, paragraph [0032]) comprising a paperboard substrate comprising a first side and a second side (page 1, paragraphs [0001], [0006]), an extrusion coated polymer layer attached to the first side (page 1, paragraph [0006]), wherein the extrusion coated polymer comprises at least a first sub-layer and a second sub-layer (page 1, paragraphs [0009]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sub-layers of Nevalainen et al. as the polymer layer of Shiokawa et al. in order to provide a good vapour barrier and heat sealing characteristics (Nevalainen et al., page 1, paragraph [0006]).
Regarding claim 10, Shiokawa et al. fail to teach wherein the at least first and second sub-layers are formed by co-extrusion onto the first side of the paperboard substrate. However, Nevalainen et al. teach a packaging material (page 1, paragraph [0001], page 2, paragraph [0032]) comprising a paperboard substrate comprising a first side and a second side (page 1, paragraphs [0001], [0006]), an extrusion coated polymer layer attached to the first side (page 1, paragraph [0006]), wherein the extrusion coated polymer comprises at least a first sub-layer and a second sub-layer (page 1, paragraphs [0009]), wherein the first and second sub-layers are formed by co-extrusion onto the first side of the paperboard substrate (page 1, paragraphs [0006]-[0008]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sub-layers of Nevalainen et al. as the polymer layer of Shiokawa et al. in order to provide a good vapour barrier and heat sealing characteristics (Nevalainen et al., page 1, paragraph [0006]).
Regarding claim 11, Shiokawa et al. fail to teach wherein the polymer layer comprises a first, a second, and a third sub-layer, and wherein the first sub-layer is attached directly onto the first side of the paperboard substrate, said second sub-layer is attached to the first sub-layer, and the third sub-layer is attached to the second sub-layer. However, Nevalainen et al. teach a packaging material (page 1, paragraph [0001], page 2, paragraph [0032]) comprising a paperboard substrate comprising a first side and a second side (page 1, paragraphs [0001], [0006]), an extrusion coated polymer layer attached to the first side (page 1, paragraph [0006]), wherein the extrusion coated polymer comprises at least a first sub-layer and a second sub-layer (page 1, paragraphs [0009]), wherein the polymer layer comprises a first, a second, and third sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]), and wherein the first sub-layer is attached directly onto the first side of the paperboard substrate (page 1, paragraph [0007], page 2, paragraph [0018]), said second sub-layer is attached to is attached to the first sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]), and the third sub-layer is attached to the second sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sub-layers of Nevalainen et al. as the polymer layer of Shiokawa et al. in order to provide a good vapour barrier and heat sealing characteristics (Nevalainen et al., page 1, paragraph [0006]).
Regarding claim 12, Shiokawa et al. fail to teach wherein the second sub-layer has a grammage of between 1 – 2 gsm. However, Nevalainen et al. teach a packaging material (page 1, paragraph [0001], page 2, paragraph [0032]) comprising a paperboard substrate comprising a first side and a second side (page 1, paragraphs [0001], [0006]), an extrusion coated polymer layer attached to the first side (page 1, paragraph [0006]), wherein the extrusion coated polymer comprises at least a first sub-layer and a second sub-layer (page 1, paragraphs [0009]), wherein the polymer layer comprises a first, a second, and third sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]), and wherein the first sub-layer is attached directly onto the first side of the paperboard substrate (page 1, paragraph [0007], page 2, paragraph [0018]), said second sub-layer is attached to is attached to the first sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]), and the third sub-layer is attached to the second sub-layer (page 1, paragraph [0007], page 2, paragraph [0018]).
Nevalainen et al. do not disclose wherein the second sub-layer has a grammage of between 1 – 2 gsm. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in grammage involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the grammage of the second sub-layer of Nevalainen et al. in order to provide a good vapour barrier and heat sealing characteristics (Nevalainen et al., page 1, paragraph [0006]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sub-layers of Nevalainen et al. as the polymer layer of Shiokawa et al. in order to provide a good vapour barrier and heat sealing characteristics (Nevalainen et al., page 1, paragraph [0006]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Shiokawa et al. (JP 2015-214365, see machine translated version) in view of Constant (US Patent Application No. 2016/0168799).
Shiokawa et al. are relied upon as disclosed above.
Regarding claim 13, Shiokawa et al. fail to teach wherein the material further comprises a pigment coating applied on the second side of the paperboard substrate. However, Constant teaches a packaging material (page 1, paragraphs [0001], [0004]) comprising a paper substrate comprising a first side and a second side (page 1, paragraphs [0001], [0003], [004]), a polyethylene layer attached to a first side (page 1, paragraph [0003]) and a pigment coating applied on the second side of the paper substrate (page 1, paragraph [0004], page 3, paragraph [0021]).
It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the pigment coating of Constant on the second side of the paperboard substrate of Shiokawa et al. in order to produce a colored or patterned paper or to change the shade of the paper (Constant et al., page 3, paragraph [0040]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHINESSA GOLDEN whose telephone number is (571)270-5543. The examiner can normally be reached on Monday - Friday; 8:00 - 4:00 EST.
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/Chinessa T. Golden/Primary Examiner, Art Unit 1788 5/27/2026
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