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.
Claims 1-17 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, and the following species, claims 1-10, 16-17 in the reply filed on 05/27/26 is acknowledged. The traversal is on the ground(s) that there would be no burden in examining all the inventions which is not persuasive in view of the different legal treatment and search requirements of the different inventions.
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The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 11-15 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/27/26.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-10, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caruso (U.S. 2023/0235510) in view of Noda (U.S. 5,498,692) in view of Glenn (U.S. 2021/0040693) in view of Kitamura (U.S. 2005/0010010).
Regarding claims 1-10, 16, 17, Caruso discloses a fluorine free coating on a paper substrate ([0051]) that is formed from a composition (the limitations of claims 16 and 17 are product by process limitations that carry no patentable weight because they do not affect the final product, especially because crosslinking/curing is explicitly taught in the prior art, see below) that includes water ([0100], inherently equivalent to distilled or deionized as in claim 10, these limitations are also product by process limitations without patentable weight, because water is H2O without ions or impurities, but such impurities are not precluded anyway given the comprising language in the claim), polyvinyl alcohol with an overlapping amount, MW and hydrolysis degree as in claim 2 ([0070]-[0072], inherently biodegradable to the same degree as in the present application), biodegradable polyhydroxyalkanoates ([0082], the MW is not disclosed in Caruso but Noda is provided as an example in [0082] of Caruso for such PHA’s and discloses an overlapping number of repeating units, see claim 1 of Noda, relative to the MW of claim 2, as well as a motivation for adjusting MW based on viscosity, col. 20, lines 30-35 and col. 24, lines 1-5, thus rendering obvious the claimed MW range, such that it would have been obvious to have used such PHA’s from Noda in Caruso because Caruso discloses them as examples of suitable PHA materials), glycerol plasticizer as in claim 6 ([0075], with an overlapping amount), and silicone based antifoam as in claim 8 at an overlapping amount ([0079]). The use of water soluble polymer addresses the limitation of claim 9 regarding dissolving and the amount of water is an immaterial product by process limitation that does not affect the final product.
Caruso does not disclose the claimed crosslinker, however, Glenn is also directed to an aqueous PVOH coating for paper (see abstract) and teaches that citric acid (as in claim 3) was a known crosslinker for such coatings to provide water contact stability and water resistance (as claimed) ([0028]), such that it would have been obvious to have used such a crosslinker in Caruso to provide water contact stability and water resistance as taught by Glenn, with the amount of such crosslinker being obvious to adjust as part of optimizing the degree of water contact stability and water resistance.
Caruso also does not disclose nanoclay filler in the PVOH layer (but does indicate barrier properties from such an ingredient in a nanocomposite layer of the overall laminate, [0066]-[0068]). However, Glenn suggests that clay nanoparticles may be included in the PVOH coating to provide oil resistance (as claimed) ([0031]) such that it would have been obvious to have also included the nanoclay filler (as in claim 4) from Caruso (with an overlapping size as in claim 5, [0066]) in the PVOH layer of Caruso (i.e., not just in the nanocomposite layer of Caruso) as taught by Glenn in order to provide oil resistance barrier properties to the PVOH layer as taught by Glenn (and thus increase the overall oil resistance/barrier properties in Caruso). The amount of such a filler is obvious to adjust as part of optimizing the degree of oil resistance imparted to the PVOH layer.
Caruso discloses surfactant, including sorbate based surfactants, at an overlapping amount ([0076]) but does not disclose the particular claimed surfactant of claim 7. However, Kitamura is also directed to surfactants for PVOH coatings (see abstract) and discloses that the claimed species was a known suitable surfactant ([0035]) such that it would have been obvious to have used such surfactant in Caruso because Kitamura discloses it is suitable for providing the desired functionality (reducing surface tension).
As indicated above, water and oil resistance are disclosed as being provided by the citric acid crosslinking and the clay nanoparticles, such that the degree of water resistance (Cobb60) and the degree of grease/oil resistance (TAPPI) of the coating is disclosed as being obviously adjustable in the prior art. See MPEP 2144.05 II A. “[W]here 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.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
Furthermore, given that the type of ingredients of the present specification are overlapped and rendered obvious in the prior art, and the amounts from the present specification are overlapped and/or rendered obvious by the prior art, these overlapping embodiments from the prior art in terms of the type and amount of ingredients in the coating layer will inherently have the same water and grease/oil resistance properties as the overlapped embodiments of the present application (and within the ranges as claimed).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights