Detailed Action
The communications received 03/30/2026 have been filed and considered by the Examiner. Claims 1-9 and 13-17 are pending.
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 Rejections - 35 USC § 112
The rejections of claims 2-4 under 35 USC § 112 have been removed due to the amendments supplied 03/30/2026.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-9 and 13-17 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nyflött et al (US 2021/0245481 cited by the Applicant in the IDS filed 05/28/2024) hereinafter NYF.
As for claim 1, NYF teaches a product comprising a paper substrate having a printing side (dispersion barrier layer) and a reverse side (the first side) [Abstract],
a first coating provided on the reverse side (barrier coating) and a second coating provided on the printing side (the dispersion barrier) [Abstract], wherein the first coating comprises starch and calcium carbonate pigment and the dry weight ratio of starch to calcium carbonate in the first coating is between 21:100 and 500:100 (less than 50% by weight of calcium carbonate versus 50-80% by weight of starch, this amounts to a ratio of 50/50 : 80/50 which is 100:100 and 160:100 which falls within the claimed range) [0036-37], and wherein the second coating comprises pigment and a polymeric binder (WAX) [0014; 0040].
NYF further teaches wherein the dry weight ratio of polymeric binder to pigment in the second coating is between 10:100 and 20:100 ( pigment can be 0-60% while the wax is understood to be in additive amounts as no other amounts are listed and the polymers of this group are considered “additional” at 0.1-5% which amounts to a ratio of inf : 0 to 6.66:100 which overlaps the claimed range) [0014;0040-42].
NYF further teaches wherein the coat weight of the second coating is at least 100% higher than the coat weight of the first coating (as a barrier layer based on PVOH which would give it a grammage of 2-7 gsm against the barrier layer based on starch with a gsm of 2-10 which results in difference range of (2-10)/2 to (7-2) / 2 which is a range of -400% to 250% which overlaps at least 100% higher [0031-32].
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
As for claims 2-4, NYF teaches claim 1 and that the ratio range is 100:100 to 160:100 which falls within the claimed ranges [see claim 1].
As for claim 5, NYF teaches claim 6 and further wherein the dry weight ratio of starch to calcium carbonate in the first coating is between 100:100 to 160:100 which overlaps the claimed ranges [see claim 1].
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
As for claim 6, NYF teaches claim 1 and that the starch and calcium carbonate constitute at least 80% by dry weight of the first coating [0036-37].
As for claim 7, NYF teaches claim 1 and wherein the coat weight of the first coating is between 2-10 g/ meter squared which overlaps the claimed range.
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
As for claim 8, NYF teaches claim 1 that the paper substrate is multi-layered paperboard [Abstract; 0028] and the grammage can be 190-232 gsm which falls within the claimed range [0069]. It is understood that the grammage would be substantially the same as the one produced by the specified ISO method.
As for claim 9, NYF teaches claim 8 and that the paperboard is used for liquid packaging [0016].
As for claim 13, NYF teaches claim 1 and a polyolefin layer provided on the first coating [0028-29].
As for claim 14, NYF teaches claim 6 and wherein the starch and calcium carbonate pigment comprise at least 95% of the dry weight of the first coating (as 50% and 50%) [see claim 1].
As for claim 15, NYF teaches claim 7 and wherein the coat weight of the first coating is between 2-10 gsm which overlaps the claimed range [see claim 7].
As for claim 16, NYF teaches claim 8 and wherein that the paper substrate is multi-layered paperboard [Abstract; 0028] and the grammage can be 190-232 gsm which falls within the claimed range [0069]. It is understood that the grammage would be substantially the same as the one produced by the specified ISO method.
As for claim 17, NYF teaches claim 1 and that the polyolefin layer is a polyethylene layer [0028].
Response to Arguments
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
The Applicant argues that the prior art fails to teach the range of polymeric binder as the latex component is in sufficient amounts to render the binder of Nyflott far above the claimed limitation.
Respectfully the Examiner disagrees. As currently claimed there is no requirement that all of the binder components present in the paper contribute to the binder amounts, merely that there is a polymeric binder which does so. Therefore the additive component which includes a binder component can be considered as the basis from which to derive a ratio and in this manner meet the claimed limitation.
The Applicant argues that grammage the Examiner cited to derive the coating weight of the dispersion barrier layer does not apply because the coating weight of the dispersion barrier layer is not explicitly defined in Nyflott.
Respectfully the Examiner disagrees. In Nyflott, the dispersion barrier layer is primarily made of PVOH and other materials and a barrier layer based on this is applied in at least the given cited grammage [0014; 0031-32] while the barrier coating would be based on starch applied as a coating layer with the cited range [0014; 0031-32]. One of ordinary skill readily understands that even without explicit denoting of an exact term that they could utilize a range, a value, etc. that is employed for a layer that otherwise meets the limitation especially as the phrasing of those paragraphs are that where starch or PVOH are used in the layers that there is a preferred grammage to use. Therefore the limitation and ranges are met.
Conclusion
THIS ACTION IS MADE FINAL. 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 Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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/E.V./Examiner, Art Unit 1748 /Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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