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 .
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 61 and 62 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 61 recites the limitation "the latex" in line 1. There is insufficient antecedent basis for this limitation in the claim. Similar rejection applies to claim 62.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 70 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 70, depends on claim 1, recites article comprising 3 layers while claim 1 recites article consisting of between 3 to 7 layers. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 58-71 is/are rejected under 35 U.S.C. 103 as being unpatentable over Slattegard et al. (US 2018/0258188) in view of Bruchmann et al. (2005/0147834).
Regarding claims 1, 58-59, 63-65, 68 and 70-71, Slattegard discloses laminated multilayer structure (paragraphs 0026, 0138), consisting of between 3 to 7 layers wherein the multilayer can have any configuration, i.e. ABC, and at least one of the layers containing CNC-PVOH blend and optionally starch (paragraph 0082, 0086), i.e. layer B, wherein the substrate is paper or plastic, i.e. layer A, wherein the numbers and constitution of any one or more films or layers in the multilayer structure may vary and is not limited in way to any one material composition, mechanical property, physical property or any other property such that the multilayer structure meets the required properties (paragraphs 0020, 0132-0138). Therefore, it would have been obvious to one of ordinary skill in the art to use any material for layers A and C including paper or plastic as taught by Slattegard to obtain required properties.
Slattergard does not disclose varnish layer.
Bruchmann discloses multilayered material comprising varnishes layer comprising binder being polyester, i.e. polymer, to provide outstanding adhesion between the individual layers (paragraphs 0022-0023).
It would have been obvious to one of ordinary skill in the art to use the varnish layer of Bruchmann in the multilayer including between layers B and layer C of Slattergard to obtain outstanding adhesion between the individual layers. Therefore, Slattegard in view of Bruchmann meets the claimed structure of ABC1C2 wherein C1 is varnish and C2 is paper.
Given that Slattegard in view of Bruchmann discloses the same multilayer structure as well as the same material as claimed in present claims, it is clear that the multilayer of Slattegard in view of Bruchmann would intrinsically possess the same properties as recited in present claims.
It is noted that Slattegard in view of Bruchmann does not specifically disclose layer B thickness.
Since the instant specification is silent to unexpected results, the specific thickness of layer B is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of multilayer including layer B, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of layer B in the multilayer of Slattegard to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 60-62, Slattegard in view of Bruchmann discloses the multilayer of claim 58, wherein the resin, the latex and the oil are optional by prior art.
Regarding claim 66, Slattegard in view of Bruchmann discloses the multilayer of claim 57 being biodegradable (paragraph 0020).
Regarding claim 67, Slattegard in view of Bruchmann discloses the multilayer of claim 57 but does not disclose a ratio of CNC to PVOH.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, since the instant specification is silent to unexpected results, the specific amounts of CNC and PVOH is not considered to confer patentability to the claims. As the barrier property is a variable that can be modified, among others, by adjusting the amounts of CNC and PVOH, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of CNC and PVOH in the layer to obtain the desired barrier property (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 69, Slattegard in view of Bruchmann the multilayer of claim 57, wherein the layer containing CNC and PVOH (fig. 7, paragraph 0082).
Claims 1 and 58-71 is rejected under 35 U.S.C. 103 as being unpatentable over Slattegard et al. (US 2018/0258188) in view of Depres (US 2012/0015145).
Regarding claims 1, 58, 61, 63-65, 68 and 70-71, Slattegard discloses laminated multilayer structure (paragraphs 0026, 0138), consisting of between 3 to 7 layers wherein the multilayer can have any configuration, i.e. ABC, and at least one of the layers containing CNC-PVOH blend and optionally starch (paragraph 0082, 0086), i.e. layer B, wherein the substrate is paper or plastic, i.e. layer A, wherein the numbers and constitution of any one or more films or layers in the multilayer structure may vary and is not limited in way to any one material composition, mechanical property, physical property or any other property such that the multilayer structure meets the required properties (paragraphs 0020, 0132-0138). Therefore, it would have been obvious to one of ordinary skill in the art to use any material for layers A and C including paper or plastic as taught by Slattegard to obtain required properties.
Slattergard does not disclose varnish layer.
Depres discloses multilayer sheet including a varnish layer comprising styrene butadiene binder, i.e. styrene butadiene latex, to obtain abrasion and scratch resistance (paragraphs 0019-0021, 0050).
It would have been obvious to one of ordinary skill in the art to use styrene butadiene latex based varnish layer of Depres on the multilayer of Slattegard to obtain abrasion and scratch resistance.
Given that Slattegard in view of Depres discloses the same multilayer structure as well as the same material as claimed in present claims, it is clear that the multilayer of Slattegard in view of Depres would intrinsically possess the same properties as recited in present claims.
It is noted that Slattegard in view of Depres does not specifically disclose layer B thickness.
Since the instant specification is silent to unexpected results, the specific thickness of layer B is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of multilayer including layer B, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of layer B in the multilayer of Slattegard to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 59-60 and 62, Slattegard in view of Depres discloses the multilayer of claim 58, wherein the resin, oil and polymer are optional by prior art.
Regarding claim 66, Slattegard in view of Depres discloses the multilayer of claim 57 being biodegradable (paragraph 0020).
Regarding claim 67, Slattegard in view of Depres discloses the multilayer of claim 57 but does not disclose a ratio of CNC to PVOH.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, since the instant specification is silent to unexpected results, the specific amounts of CNC and PVOH is not considered to confer patentability to the claims. As the barrier property is a variable that can be modified, among others, by adjusting the amounts of CNC and PVOH, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of CNC and PVOH in the layer to obtain the desired barrier property (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 69, Slattegard in view of Depres the multilayer of claim 57, wherein the layer containing CNC and PVOH (fig. 7, paragraph 0082).
Claims 1 and 58-71 is rejected under 35 U.S.C. 103 as being unpatentable over Slattegard et al. (US 2018/0258188) in view Troutman et al. (US 2004/0002559).
Regarding claims 1, 58, 62-65, 68 and 70-71, Slattegard discloses laminated multilayer structure (paragraphs 0026, 0138), consisting of between 3 to 7 layers wherein the multilayer can have any configuration, i.e. ABC, and at least one of the layers containing CNC-PVOH blend and optionally starch (paragraph 0082, 0086), i.e. layer B, wherein the substrate is paper or plastic, i.e. layer A, wherein the numbers and constitution of any one or more films or layers in the multilayer structure may vary and is not limited in way to any one material composition, mechanical property, physical property or any other property such that the multilayer structure meets the required properties (paragraphs 0020, 0132-0138). Therefore, it would have been obvious to one of ordinary skill in the art to use any material for layers A and C including paper or plastic as taught by Slattegard to obtain required properties.
Slattergard does not disclose varnish layer.
Troutman discloses flame retardant coating comprising tung oil based varnish layer to obtain excellent flame retardancy (paragraphs 0032, 0412).
Given that Slattegard in view of Troutman discloses the same multilayer structure as well as the same material as claimed in present claims, it is clear that the multilayer of Slattegard in view of Troutman would intrinsically possess the same properties as recited in present claims.
It is noted that Slattegard in view of Troutman does not specifically disclose layer B thickness.
Since the instant specification is silent to unexpected results, the specific thickness of layer B is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of multilayer including layer B, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of layer B in the multilayer of Slattegard to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 59-61, Slattegard in view of Troutman discloses the multilayer of claim 58, wherein the resin, the latex and polymer are optional by prior art.
Regarding claim 66, Slattegard in view of Troutman discloses the multilayer of claim 57 being biodegradable (paragraph 0020).
Regarding claim 67, Slattegard in view of Troutman discloses the multilayer of claim 57 but does not disclose a ratio of CNC to PVOH.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, since the instant specification is silent to unexpected results, the specific amounts of CNC and PVOH is not considered to confer patentability to the claims. As the barrier property is a variable that can be modified, among others, by adjusting the amounts of CNC and PVOH, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of CNC and PVOH in the layer to obtain the desired barrier property (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 69, Slattegard in view of Troutman the multilayer of claim 57, wherein the layer containing CNC and PVOH (fig. 7, paragraph 0082).
Response to Arguments
Applicant's arguments with respect to present claims have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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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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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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