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 with traverse of Group 1, Species A1, B1, and C1, Claims 24-29, 31-34, 36-38, and 40 in the reply filed on 07/05/2026 is acknowledged. The traversal is on the ground(s) that only one species needs to be elected. This is not found persuasive because a proper species election requires an election from each species group of A, B, and C, which Applicant has elected. Thus, the restriction requirement is proper and Applicant has made a proper election.
Claims 30, 35, 39, and 41-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group 2, Species A2, B2, and C2, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/05/2026
The requirement is still deemed proper and is therefore made FINAL.
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 24-29, 30-34, 36-38 and 40 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.
Regarding Claim 24, the claim recites “fiber based main base (P), preferably a paper or a cardboard that is free of fluoro chemicals and PVDC and having a min 40 gr/m2 grammage,”. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. (MPEP § 2173.05(d)). For purposes of examination, only a fiber based main base (P) is required and the limitation with regard to base after preferably is considered optional.
The claim recites “silicone” as an inorganic coating. Silicone is an organic polymer comprising carbon and silicon and cannot be considered inorganic. Therefore, it is uncertain to one with ordinary skill in the art what the material of the metal layer comprises of. For purpose of examination, it is silicone is interpreted to silicon.
The claim also recites “like SiO2, Al2O3”. The phrase “like” renders the scope of the claim indefinite, as narrower range may or may not be construed to further limit the claim. For purposes of examination, the “like SiO2, Al2O3” is considered an alternative.
Claims 25-29, 30-34, 36-38 and 40 are also rejected, due to their dependency on Claim 24.
Regarding Claim 26, there is an issue of antecedent basis with “one side” and it should recite “the at least one side is”. There is an antecedent basis issue with “the mill”.
Regarding Claim 29, it its uncertain what the (average) is in front of 2-3 optical density means to the claim. For purposes of examination, (average) is not part of the limitation.
Regarding Claim 31, The claim recites “silicone” as an inorganic coating. Silicon is an organic polymer comprising carbon and silicon and cannot be considered inorganic. Therefore, it is uncertain to one with ordinary skill in the art what the material of the metal layer comprises of. For purpose of examination, it is silicone is interpreted to silicon.
The claim also recites “like SiO2, Al2O3”. The phrase “like” renders the scope of the claim indefinite, as narrower range may or may not be construed to further limit the claim. For purposes of examination, the “like SiO2, Al2O3” is considered as an alternative.
Regarding Claim 34, the claim recites “ethylene vinyl alcohol (PVOH) copolymer”. However, ethylene vinyl alcohol copolymers (EVOH) and PVOH are different polymers. Therefore, it is uncertain why the (PVOH) is in a parenthetical for ethylene vinyl copolymers, which renders the claim indefinite. For purposes of examination, PVOH is determined to be in the claim.
Regarding Claim 37, the claim recites “preferably a compostable water soluble emulsion or dispersion”. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. (MPEP § 2173.05(d)). For purposes of examination, only the protective layer (C3) is water soluble is required and the limitation with regard to protective layer composition after preferably is considered as an alternative.
Regarding Claim 38, the claim recites “preferably from EVA …”. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. (MPEP § 2173.05(d)). For purposes of examination, only an acrylic polymer is required for protective layer C3 and the limitation with regard to protective layer composition after preferably is considered as an alternative.
Regarding Claim 40, the claim recites “preferably by transfer metallization method”. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. (MPEP § 2173.05(d)). For purposes of examination, only the recited method of making is considered as an alternative.
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 24, 27, 31-34, 36-38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Yuki et al. (US 2023/0068867 A1).
Regarding Claim 24, Yuki teaches a packaging material (Paragraph 0026) comprising a paper, fiber based main base, (Item 10), a metal layer (Item 40) and adhesive layer, glue, between the main base and the metal layer to ensure adhesion of the main base and metal layer (Item 30). Yuki teaches the metal layer is formed and applied to the glue via a transfer method, where the metal layer is initially formed via CVD or PVD on a polymeric carrier film (Paragraph 0168-0171, 0276-0286).
Yuki teaches the metal layer can be a non-transparent or transparent inorganic coating of aluminum or silicon or oxides thereof. (Paragraph 0156-0158). Yuki teaches the thickness of the metal layer can range from 30 to 3000 angstroms. (Paragraph 0165). This overlaps the claimed range. 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).
Regarding Claim 27, Yuki teaches the metal layer can be a non-transparent or transparent inorganic coating of aluminum. (Paragraph 0156-0158). Yuki teaches the thickness of the metal layer can range from 30 to 3000 angstroms. (Paragraph 0165). This overlaps the claimed range. 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).
Regarding Claim 31, Yuki teaches the metal layer is made of a transparent inorganic coating of aluminum or silicon via CVD or PVD. (Paragraph 0156-0158, 0168-0171, 0276-0286).
Regarding Claim 32-34, Yuki teaches a barrier layer, comprising polyvinyl vinyl alcohol copolymer, a non-ionic water-soluble polymer that functions as a barrier against oxygen, aroma, grease and mineral oil, (Paragraph 0206-0212) is formed on top of the metal layer. Yuki further teaches a reinforcing layer to help bonding can be placed on the side of the inorganic layer, under the barrier layer, comprising EEA copolymers, water-resistant material, below the protective layer. (Paragraph 01241-0244)
Regarding Claim 36 and 38, Yuki teaches a protective layer coated on top of the barrier layer. (Paragraph 0220-0225) comprising an acrylic polymer, which can offer moisture resistance. (Paragraph 0202).
Regarding Claim 37, Yuki teaches a soluble polymer as the protective layer. (Paragraph 0211).
Regarding Claim 40, Yuki teaches the packaging material may be metallized, forming an outer metal layer, a second time under secondary processing to apply another function to the packaging material. (Paragraph 0254-0255). Given that there are only two sides to the barrier paper, it would have been it would have been obvious one with ordinary skill in the art to metalize either side of the packaging material of Yuki, under the obvious to try standard under KSR to apply further desired functions to the main base and resulting packaging material.
Claims 25, 26, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Yuki in view of Xerox (NPL).
Regarding Claim 25, Yuki teaches the main base can be white paper (Paragraph 0028) is chemically pre-treated on at least one side (Item 20) and having a thickness of 5 to 200 microns. (Paragraph 0030). This overlaps the claimed range. 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).
Yuki does not specifically teach maximum moisture content of the paper. Yuki teaches the paper maybe printed on. (Paragraph 0254-0255).
Xerox teaches paper moisture with a moisture content of 4.5% +1% reduces issues with printing (Page 2). This overlaps the claimed range. 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). Thus, it would have been obvious to one with ordinary skill in the art to ensure the paper of Yuki can be easily printed upon by ensuring the moisture content stays within the claimed range.
Regarding Claim 26, the location of where the paper is pretreated, at a mill, is a product-by-process limitation that does not place patentable structural weight on the claimed invention.
Yuki teaches the one side is pre-treated with a clay coating. (Paragraph 0184-0187).
Regarding Claim 28, Yuki teaches the adhesive can be urethane or acrylic adhesives. (Paragraph 0042).
Claim 29 is rejected under 35 U.S.C. 103 is rejected under 35 U.S.C. 103 as being unpatentable over Yuki in view of Belmont Metals (NPL).
Regarding Claim 29, Yuki teaches the metal layer can be a coating of aluminum. (Paragraph 0156-0158). Yuki teaches the thickness of the metal layer can range from 30 to 3000 angstroms. (Paragraph 0165). This overlaps the claimed range. 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).
Yuki does not specifically teach the optical density of the metal film. However, give than Yuki teaches the same material and overlapping thickness, then the metal film would inherently have the same optical density range as the claimed metal layer.
Yuki does not teach the aluminum layer has 99.9% purity.
Belmont Metals teaches 99.9% pure aluminum offers good hardness and strength. (Page 1). Thus, it would have been obvious to one with ordinary skill in the art to use 99.9% purity aluminum in Yuki for the hardness and strength.
Correposndence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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