DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group I, claims 1-9, 16-21, 24, and 26, in the reply filed on March 30, 2026 is acknowledged.
Claims 1-27 are pending of which claims 10-14, 22, 25, and 27 are withdrawn and claims 1-9, 16-21, 24, and 26 are now under consideration.
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.
3. Claim 19 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 19, 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).
Appropriate correction or clarification is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. Claims 16, 17, 21 and 26 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Constant et al. (US 2018/0135251 A1).
Constant et al. disclose coated substrates (equivalent to the coated paper product of claim 16) comprising cellulose-based substrates with surface-treated aqueous-based polymer coatings. In some embodiments, the cellulose-based substrate comprises paper, paper board, or cardboard (equivalent to the paper or paperboard of claim 16). In some embodiments, the aqueous-based polymer coating comprises a pure acrylic copolymer, a styrene-acrylic copolymer, a styrene-butadiene copolymer, a vinyl acrylic copolymer, or a combination thereof. The aqueous-based polymer coating can have a coating weight of 2 g/m2 to 30 g/m2. In some embodiments, there is a second coating comprising a semicrystalline polymer optionally having a polar functionality and examples include a polyethylene copolymer ethylene and a monomer comprising methyl acrylate, methacrylic acid, or a combination thereof (equivalent to the barrier coating of claim 16 and meeting the limitation that the polyolefin copolymer bears carboxylic acid moieties and meeting the limitations of claim 26). In some embodiments, the cellulose-based substrates may be paper cups (equivalent to the packaging of claim 21). The aqueous-based polymer coating and/or semicrystalline polymer coating can, in some embodiments, further include one or more additives. The one or more additives can include mineral fillers and/or coating pigments. Mineral fillers generally have a substantial proportion of particles having a particle size greater than 2 microns whereas coating pigments have a substantial proportion of particles having a particle size less than 2 microns. In some embodiments, the mineral fillers and/or coating pigments can be added to impart certain properties to a paper such as smoothness, whiteness, increased density or weight, decreased porosity, increased opacity, flatness, glossiness, and the like. The mineral fillers and/or coating pigments can include graphite (equivalent to the high surface area graphite flakes having an average particle size of 2-7 µm as recited in claims 16 and 17) (See Abstract and paragraph 0004, 0005, 0006, 0022-0025, 0042-0044, 0049-0052, 0055, 0058, and 0065).
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.
5. Claims 18-20 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Constant et al. (US 2018/0135251 A1).
With regards to the limitations that the surface area of the graphite flakes is 15-70 g/m², the content of the graphite flakes in the barrier coating is 5-30 wt.%, and the coat weight of the barrier coating is at least 4 g/m², the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties.
6. Claims 1-9 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Constant et al. (US 2018/0135251 A1) in view of Rabnawaz et al. (US 2021/0246333 A1).
Constant et al. do not teach that the barrier coating comprises graphene.
However, Rabnawaz et al. disclose omniphobic coatings with high barrier properties and comprises an oleophobic and hydrophilic first layer and a hydrophobic and oleophilic second layer adjacent to the first layer. A corresponding omniphobic coated article is also disclosed and can include the omniphobic coating on a substrate such as a porous cellulosic or paper substrate, for example to provide a water- and oil/fat/grease-resistant coating for a paper-based product. In one embodiment, the omniphobic coating further comprises one or more additives selected from the group consisting of graphene oxide and graphene and the additives can be included in the any or all layers of the omniphobic coating as applied to the (porous and/or cellulosic) substrate. For example, the additives can be included in a solution or mixture containing the omniphobic (polymeric) coating (e.g., functionalized chitosan) before it is applied to the substrate. One function of the fillers is to seal the substrate pores and filler such as nanocrystals, graphene, nanoclay, etc. can increase the gas and water vapor barrier properties (see Abstract and paragraph 0046).
Accordingly, it would have been obvious to one having ordinary skill in the art to replace the graphite taught by Constant et al. with graphene given that Rabnawaz et al. teach that fillers such as graphene can increase the gas and water vapor barrier properties of the coated paper products.
With regards to the limitations of claims 7 and 8, the Examiner takes the position that such property limitations must be inherent in the disclosed coated paper product given that the composition and structure as taught in the prior art and that of the claimed invention are identical.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
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