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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” “Disclosed…,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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 1-18 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.
In claim 7 the phrase “optionally on a dry basis…” renders the claim vague and indefinite, because is not understood, i.e., the base of the composition is not clear, since it seems to indicate that the percentages of the compounds in the mixture/blend would not change if based on a wet basis or a dry basis.
Claim 10 is vague and indefinite as to how a composition can be a package? Should it be that the composition is formed/made onto a package?
Regarding claim 13, the phrase "for example" or equivalent “e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Also the claim is vague and indefinite as what would be considered and “industrial product,” since the previously mentioned products are also formed in an industry and thus it is unclear what are the other “industry products” the term encompasses and thus the metes and bounds of patent protection desired cannot be ascertained.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 8-15 and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Behabtu, US Patent Application Publication No. 2019/0153674 A1.
With regard to claims 1-5 and 9, Behabtu teaches a product/composition comprising a cellulosic substrate, such as paper, paperboard, etc., (¶-[0093]) coated with a composition comprising and insoluble α-glucan having at least 90% of the glycosidic linkages of it being α-1,3 linkages and having a number average degree of polymerization (DPw) between 55 to 10, 000, the example on ¶-[0160] shows the use of α-glucan having a DPw of about 300 (¶-[0004], [0032], [0044], [0094] and [0160], etc.). Behabtu teaches also that the composition can include other additives, including a binder, such as PVOH and latexes, such as styrene butadiene latex, acrylate latex, etc., see ¶-[0091]. Note that the latex correspond to the diene-based elastomer of claim 1 and actually explicitly disclosed on page 19, lines 4-10 of the current application. Note that styrene butadiene latex correspond the styrene butadiene copolymer and thus reading on the diene-based elastomers of claim 1. Styrene Butadiene Latex (SBL), also known as SBR Latex, is a synthetic rubber emulsion polymer made from styrene and butadiene monomers, i.e., a styrene and butadiene copolymer.
Regarding to claim 8, Behabtu teaches coating thickness between 0.5 µm to 50 µm, which falls within the claimed range; see ¶-[0108].
With regard to claims 10-13, Behabtu teaches that the coated substrate provides grease and/or oil resistance and can be useful for food packaging applications and the composition contacting the product inside is implicit for the use of the packaging for food; see ¶-[0002], [0167].
Regarding to claim 14, although Behabtu does not measure the contact angle, but teaches that the coating makes the surface of the substrate oleophobic, i.e., makes the surface grease and/or oil resistant (¶-[0002],[0093]. Etc.), which as it is a well-known the contact angle of an oleophobic surface is greater than 60º1.
With regard to claim 15, Behabtu teaches kit values falling within the claimed range; see Tables 1 and 2 on ¶-[0172] and [0187] respectively.
Regarding to claim 17, Behabtu teaches that the substrate can be papers and/or textiles, which as it is well-known have microscopic folds and thus reading on the claim; see ¶-[0093], but in the same paragraph also teaches that corrugated board, which have macro-folds can be coated with the coating composition,
It seems that the cited references teaches all the limitations of the above claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claims 6-7 and 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Behabtu, cited above in view of Kim et al., (hereinafter Kim), US Patent Application Publication No. 2021/0130504 A1.
Behabtu invention has been discussed above. Behabtu does not discloses the use of natural rubber as a binder of claim 6, Behabtu teaches the use of diene latexes id, nor the composition with a rubber of claim 7, nor the tackiness of claim 16, nor the overcoat of claim 18.
With regard to claims 6-7, the secondary reference, Kim, teaches a similar coating for the same substrate as those of the primary reference, Behabtu, and teaches the use of natural rubber as one of the component, as a binder instead of the PVOH, which is disclosed and explicitly used by Behabtu (¶-0195]); see ¶-[0248] and [0250]-[0251], and also added in proportion falling the range of claim 7; see ¶-[0250]. Therefore, using natural rubber as suggested by Kim as the binder (PVOH) used by Behabtu, would have been obvious to one of ordinary skill in the art since the secondary reference teaches that rubber can also be used and perform as-well as the PVOH used by the primary reference. It has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
Regarding to claim 16 as indicated above using rubber as the elastomer taught by Behabtu in an α-glucan composition would have been obvious to one of ordinary skill in the art and then it can be said that the composition of the combination of references would inherently have the same properties indicated on the above claims.
With regard to claim 18, adding another layer including an α-glucan at the claimed levels, is within the level to one of ordinary skill in the art in order to further improve the desired oil/grease and/or oxygen barrier of the substrate and considered obvious absent a showing of unexpected results.
Claims 1-3 and 5-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim et al., (hereinafter Kim) US Patent Application Publication No. 2021/0130504 A1, cited above.
With regard to claims 1-3, 5-7 and 9, Kim teaches a cellulose substrate, e.g., paper, paperboard, corrugated board, etc.(¶-[0187] reading on claim 5), which is coated with a blend of rubber, e.g., natural rubber (¶-[0250] which teaches the use of natural rubber (reading on claim 6) at proportion falling the range of claim 7) and an insoluble α-glucan having at least about 50% of the glycosidic linkages of the α-glucan being 1,3 linkages (abstract, ¶-[0005], [0007]) and on ¶-[0067] teaches that the 1,3 linkages can be from 90% to 100% (reading on claim 2). Kim also teaches that the degree of polymerization of the α-glucan can be 200 or less; see ¶-[0068] (reading on claim 3). Note that if the coat is added to a cellulosic substrate, such as paper, paperboard corrugated board, the coat is immediately adjacent to the cellulosic fibers and thus reading on claim 9.
Regarding to claim 8, Kim teaches coating thickness falling within the claimed range, i.e., at least 10 µm; see ¶-[0182] which teaches coating thickness of preferrable between 0.5-1.5 mils, which converts to 12.7 µm to 38.1 µm.
With regard to claims 10-13, Kim teaches coating cellulosic substrates that can be converted, used, as packages or container, e.g., bags ford food or pharmaceutical use; ¶-[0111],-[0112],[0180]. Note that for food product, since the coat imparts grease and/or oil resist the coat must be at the inside of the container.
Regarding to claim 14, although Kim does not measure the contact angle, but teaches that the coating makes the surface of the substrate oleophobic, i.e., makes the surface grease and/or oil resistant (¶-[0187].), which as it is a well-known the contact angle of an oleophobic surface is greater than 60º2.
With regard to claim 15, since Kim teaches the same coating on the same surface the properties of the product must be inherently the same. It has been held that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Moreover, while Kim does not explicitly call a kit test, but Kim shows on table 4, ¶-[0248], a Cobb value index for oil absorption, which correspond a Kit Test TAPPI T 559, and shows values falling within the claimed range.
Regarding to claim 16, as indicated above, Kim teaches the same coating on the same surface the properties of the product must be inherently the same. It has been held that “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 17, Kim teaches that the substrate can be papers and/or textiles, which as it is well-known have microscopic folds and thus reading on the claim; see ¶-[0187], but in the same paragraph also teaches that corrugated board, which have macro-folds can be coated with the coating composition.
Regarding to claim 18, adding another layer including an α-glucan at the claimed levels, is within the level to one of ordinary skill in the art in order to further improve the desired oil/grease and/or oxygen barrier of the substrate and considered obvious absent a showing of unexpected results.
It seems that the cited references teaches all the limitations of the above claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Paper Coating Compositions comprising Rubber and Insoluble Alpha-Glucan.”
Adibi et al., in “ Sustainable barrier paper coating based on alpha-1,3 glucan and natural rubber latex” teaches the same composition/product a s claimed, but it is not a prior art in view exception (B) of the AIA USC §112 (a)(2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Oleophobic surfaces repel oils, characterized by high contact angles (typically >90° to >105° with water, and often 60°-80° or more with oils like n-hexadecane) (https://nanoslic.com/oleophobic-coatings/#:~:text=Oil%20on%20Teflon-,NanoSlic%20Coatings,hydroxyl%20groups%20on%20the%20substrate.)
2 Oleophobic surfaces repel oils, characterized by high contact angles (typically >90° to >105° with water, and often 60°-80° or more with oils like n-hexadecane) (https://nanoslic.com/oleophobic-coatings/#:~:text=Oil%20on%20Teflon-,NanoSlic%20Coatings,hydroxyl%20groups%20on%20the%20substrate.)