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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 4/20/26 is acknowledged.
Claims 11-13 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/20/26.
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 and 5 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.
Claim 3 contains the trademark/trade name Tween. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a proprietary compound and, accordingly, the identification/description is indefinite.
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 1-2 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Mallory et al. (US 2002/0031651, which incorporates Blais et al., US 5,547,764 by reference at ¶ 0044).
Claim 1: Mallory teaches a process for preparing a modified polymer film (Abst.) comprising the steps of: providing a polyethylene polymer layer (¶¶ 0024-0026) and subjecting it to a corona discharge treatment (¶ 0038); coating a modifier on the treated polymer layer (¶¶ 0024, 0039, 0044), wherein the coating comprises an aqueous solution of polyvinyl alcohol (PVOH) (i.e. claimed component A) and an aqueous solution of a crosslinker (i.e. claimed component B) (¶ 0044). Mallory further states that suitable PVOH coatings are disclosed in Blais. Blais explains that suitable PVOH coatings are 4-8% solids by weight, of which 20-98% is PVOH and 2-20% is cross-linking agent, such as glyoxal (3:46-63) (this corresponds to 0.8-7.8% PVOH in the coating component and 0.08-1.6% cross-linking agent). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected 0.8-2% PVOH in component A and 0.2-1.6% cross-linking agent in component B with the predictable expectation of success.
With respect to the alcoholysis degree, Mallory teaches that the PVOH includes a component a high degree of hydrolysis (analogous to alcoholysis) and a component with a lower degree and that these are blended at a ratio to achieve a desire mixture for the process (¶ 0044). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a component A PVOH with a degree of alcoholysis of 95-100% depending on the desired properties.
Claim 2: Blais teaches that the ratio of PVOH to cross-linking agent is 20-98:2-20 (3:46-63). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a ratio of 1:1 to 4:1 with the predictable expectation of success.
Claim 6: Blais teaches that there is a direct relationship between the molecular weight of the PVOH and the viscosity of the solution (3:34-45). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a molecular weight of 50,000-150,000 Da with the predictable expectation of success.
Claim 7: Mallory teaches that the thickness of the coated layer is controlled and depends on the amount needed to provide the desired barrier characteristics (¶ 0040). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a coating thickness of 20-200 nm with the predictable expectation of success.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mallory in light of Berlin et al. (US 2005/0129930).
Claims 3 and 5: Mallory fails to teach the inclusion of nanoparticles. Berlin teaches a process of forming a barrier layer of PVOH (Abst.; ¶ 0007) where nanoparticles of silica having a particles size of less than 100 µm are included with the PVOH to improve gas and moisture barrier properties (¶ 0007). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included silica particles of 5-15 nm in the PVOH coating of Mallory in order to have improved the barrier properties of the film.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mallory in light of Khan (US 2018/0079839).
Claim 4: Mallory is silent regarding pH. Khan teaches a similar process of forming barrier coatings using polymeric coatings (Abst.) and explains that the pH of the cross-linking agent component short be lowered to below 5 to ensure effective crosslinking (¶¶ 0077-0078). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a pH of 0.8-3 in Mallory in order to have improved crosslinking.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mallory in light of Roullet et al. (US 4,267,143).
Claim 8: Mallory teaches drying the coating (¶ 0040), but fails to discuss drying conditions. Roullet teaches a process of forming a PVOH coating (Abst.) and explains that the drying timing should be selected to avoid any danger of softening or premature crystallization of the coating (3:5-22). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a period of 0-120 second between deposition and drying in Mallory with the predictable expectation of success.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mallory in light of Hada et al. (US 2011/0177942).
Claim 9: Mallory fails to teach separately loading and supplying the components. Hada teaches a process of forming a PVOH coating (Abst.) and explains that each of the PVOH component and the cross-linking component can be separately provided in order to extend the life of the materials (¶ 0170). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have separately supplied the two components in Mallory in order to have extended the life of the materials with the predictable expectation of success.
With respect to the feed rate, a person of ordinary skill in the art would have readily understood that the feed rate used is a balance of factors, such as the desired film thickness, the desired uniformity/smoothness of the film, etc. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a flow rate of 50-200mL/min depending on the desired characteristics of the film.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mallory in light of Wolf et al. (US 2002/0197425).
Claim 10: Mallory is silent concerning the corona discharge parameters. Wolf teaches a process of pretreating a substrate using corona discharge and explains that the parameters (i.e. power, current and velocity) determine the amount of corona discharge that the substrate is exposed to (¶ 0127). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed parameters depending on the desired exposure in Mallory with the predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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