DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. No claims have been amended in the amendment filed on July 27, 2026 in the above-identified application. New claim 9 is added. Claims 1-9 are pending and under consideration.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
3. Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Omura et al. (US 2017/0036832 A1).
Omura et al. disclose a gas barrier film (equivalent to the laminate of the claimed invention) that includes: a resin film substrate (equivalent to the substrate of the claimed invention); a first layer made of an aqueous coating agent (C) (equivalent to the barrier coat layer of the claimed invention) that contains a water soluble polymer (A) and an inorganic layered mineral (B). Omura et al. teach packaging materials with a gas barrier layer made of a material having gas barrier properties. The gas barrier layer has been formed on a substrate such as a film or paper by sputtering, vapor deposition, wet coating or printing. Further, the gas barrier layer has been formed of a metal foil or a metal deposition film made of a metal such as aluminum and these metal foils and metal deposition films are known to have good gas barrier properties. In one embodiment, the aqueous coating agent (C) may contain an aqueous polyurethane resin (meeting the limitations of claim 2) having water solubility or water dispersibility, a curing agent, the water soluble polymer (A) and the inorganic layered mineral (B). In another embodiment, a gas barrier laminate includes the gas barrier film according to the first aspect, an adhesive layer (equivalent to the adhesive layer of the claimed invention) and a heat seal resin layer (equivalent to the resin film layer of the claimed invention) disposed in this order on at least one surface of the gas barrier film. The substrate is a single-layer film made of a single resin, a single-layer film made of a plurality of resins or a laminated film made of a plurality of resins. Alternatively, a laminated substrate formed by laminating the above resins on another substrate (metal, wood, paper, ceramic or the like) may be used. Further, the substrate may be a laminated film in which a plurality of resins or metals are laminated (equivalent to the inorganic vapor deposition layer of the claimed invention). The aqueous urethane resin is not specifically limited. Examples of aqueous urethane resin include an aqueous urethane resin obtained by a conventional reaction between polyester polyol and polyisocyanate. Further, the aqueous urethane resin may contain a chain extender as necessary. The polyester polyol is obtained by a conventional reaction between a dicarboxylic acid and a glycol and examples include an aromatic dicarboxylic acid such as terephthalic acid, isophthalic acid or 2,6-naphthalenedicarboxylic acid, aliphatic dicarboxylic acid such as adipic acid or sebacic acid, oxycarboxylic acid such as oxybenzoic acid, and ester forming derivatives thereof. Examples of glycol include aliphatic glycols such as ethylene glycol, 1,4-butanediol, diethylene glycol, triethylene glycol, aromatic diols such as 1,4-cyclohexane dimethanol, and poly (oxy alkylene) glycols such as polyethylene glycol, polypropylene glycol or polytetramethylene glycol. Further, while polyester polyol obtained by the reaction between dicarboxylic acid and glycol has a linear structure, a branched polyester can be formed by using an ester-forming constituent which is trivalent or more. Examples of polyisocyanate include xylylene diisocyanate (meeting the limitations of claim 3). Further, examples of the chain extender include diamines such as ethylene diamine (meeting the limitations of claim 6) and the curing agent may be a water dispersible (water soluble) carbodiimide or a water soluble epoxy compound (meeting the limitations of claim 8). The gas barrier film may be provided with an anchor coat layer, printing layer, overcoat layer, light-shielding layer, adhesive layer, heat seal layer and the like as necessary. In one embodiment, the gas barrier laminate is a laminate that includes the gas barrier film, an adhesive layer and a heat seal resin layer disposed in this order on at least one surface of the gas barrier film. Examples of the heat seal resin layer include polyolefin films and various adhesives can be appropriately selected for use in the adhesive layer depending on the lamination methods. For example, known adhesives such as polyurethane adhesives (including the above-described polyester polyurethane and meeting the limitations of claim 4) can be used. (see Abstract and paragraphs 0004, 0005, 0019, 0020, 0023, 0030-0038, 0055-0065, 086-0089, 0102-108).
With regards to the limitation that the adhesive layer has a thermal expansion coefficient of 100.0x10⁻⁵K⁻¹ or less and that the adhesive layer contains an ester group wherein the content ratio of the ester group to the adhesive layer is 7.00 mmol/g or more, the Examiner takes the position that such properties are inherent in the adhesive taught by Omura et al. given that the polyester polyurethane taught by Omura et al. and that can be used as the adhesive is identical to the one taught in the claimed invention.
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.
4. Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Omura et al. (US 2017/0036832 A1).
Omura et al. disclose a gas barrier film (equivalent to the laminate of the claimed invention) that includes: a resin film substrate (equivalent to the substrate of the claimed invention); a first layer made of an aqueous coating agent (C) (equivalent to the barrier coat layer of the claimed invention) that contains a water soluble polymer (A) and an inorganic layered mineral (B). Omura et al. teach packaging materials with a gas barrier layer made of a material having gas barrier properties. The gas barrier layer has been formed on a substrate such as a film or paper by sputtering, vapor deposition, wet coating or printing. Further, the gas barrier layer has been formed of a metal foil or a metal deposition film made of a metal such as aluminum and these metal foils and metal deposition films are known to have good gas barrier properties. In one embodiment, the aqueous coating agent (C) may contain an aqueous polyurethane resin (meeting the limitations of claim 2) having water solubility or water dispersibility, a curing agent, the water soluble polymer (A) and the inorganic layered mineral (B). In another embodiment, a gas barrier laminate includes the gas barrier film according to the first aspect, an adhesive layer (equivalent to the adhesive layer of the claimed invention) and a heat seal resin layer (equivalent to the resin film layer of the claimed invention) disposed in this order on at least one surface of the gas barrier film. The substrate is a single-layer film made of a single resin, a single-layer film made of a plurality of resins or a laminated film made of a plurality of resins. Alternatively, a laminated substrate formed by laminating the above resins on another substrate (metal, wood, paper, ceramic or the like) may be used. Further, the substrate may be a laminated film in which a plurality of resins or metals are laminated (equivalent to the inorganic vapor deposition layer of the claimed invention). The aqueous urethane resin is not specifically limited. Examples of aqueous urethane resin include an aqueous urethane resin obtained by a conventional reaction between polyester polyol and polyisocyanate. Further, the aqueous urethane resin may contain a chain extender as necessary. The polyester polyol is obtained by a conventional reaction between a dicarboxylic acid and a glycol and examples include an aromatic dicarboxylic acid such as terephthalic acid, isophthalic acid or 2,6-naphthalenedicarboxylic acid, aliphatic dicarboxylic acid such as adipic acid or sebacic acid, oxycarboxylic acid such as oxybenzoic acid, and ester forming derivatives thereof. Examples of glycol include aliphatic glycols such as ethylene glycol, 1,4-butanediol, diethylene glycol, triethylene glycol, aromatic diols such as 1,4-cyclohexane dimethanol, and poly (oxy alkylene) glycols such as polyethylene glycol, polypropylene glycol or polytetramethylene glycol. Further, while polyester polyol obtained by the reaction between dicarboxylic acid and glycol has a linear structure, a branched polyester can be formed by using an ester-forming constituent which is trivalent or more. Examples of polyisocyanate include xylylene diisocyanate (meeting the limitations of claim 3). Further, examples of the chain extender include diamines such as ethylene diamine (meeting the limitations of claim 6) and the curing agent may be a water dispersible (water soluble) carbodiimide or a water soluble epoxy compound (meeting the limitations of claim 8). The gas barrier film may be provided with an anchor coat layer, printing layer, overcoat layer, light-shielding layer, adhesive layer, heat seal layer and the like as necessary. In one embodiment, the gas barrier laminate is a laminate that includes the gas barrier film, an adhesive layer and a heat seal resin layer disposed in this order on at least one surface of the gas barrier film. Examples of the heat seal resin layer include polyolefin films and various adhesives can be appropriately selected for use in the adhesive layer depending on the lamination methods. For example, known adhesives such as polyurethane adhesives (including the above-described polyester polyurethane and meeting the limitations of claim 4) can be used. (see Abstract and paragraphs 0004, 0005, 0019, 0020, 0023, 0030-0038, 0055-0065, 086-0089, 0102-108).
Omura et al. specifically state that various adhesives can be appropriately selected for use in the adhesive layer depending on the lamination methods and examples of aqueous urethane resin include an aqueous urethane resin obtained by a conventional reaction between polyester polyol and polyisocyanate.
Accordingly, it would have been obvious to one having ordinary skill in the art to use the disclosed aqueous urethane resin obtained by a conventional reaction between polyester polyol and polyisocyanate in the adhesive layer. With regards to the limitation that the adhesive layer has a thermal expansion coefficient of 100.0x10⁻⁵K⁻¹ or less and that the adhesive layer contains an ester group wherein the content ratio of the ester group to the adhesive layer is 7.00 mmol/g or more, the Examiner takes the position that such properties are inherent in the adhesive taught by Omura et al. given that the polyester polyurethane taught by Omura et al. and that can be used as the adhesive is identical to the one taught in the claimed invention. Furthermore, with regards to the thickness recited in claim 9, the Examiner would like to point out that workable physical properties such as thicknesses are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties unless there is evidence indicating such thicknesses are critical.
Response to Arguments
5. Applicant's arguments filed on July 27, 2026 have been fully considered but they are not persuasive.
Applicant’s traverse the rejection of claims 1-8 under 35 U.S.C. 102(a)(1) and/or 102(a)(2) over Omura (US 2017/0036832) and submit that the "inorganic vapor deposition layer" recited in claim 1 of the present application is an extremely thin layer formed by a vapor deposition process and is different in thickness from common metal layers. In response to applicant's argument that the references fail to show that the inorganic vapor deposition layer recited in claim 1 is an extremely thin layer, it is noted that the features upon which applicant relies (i.e., thickness) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the patentability of a product does not depend on its method of production. If the product 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.
Applicants further argue that the thermal expansion coefficient is not inherent in the polyester polyurethane adhesive taught by Omura and that, as shown in Table 2, the thermal expansion coefficient of Comparative Example shows that polyester polyurethane adhesives can have different thermal expansion coefficients. In addition, with regards to the rejection of claims 1-9 under 35 U.S.C. 103 as being unpatentable over Omura et al. (US 2017/0036832 A1), Applicants state that the present specification describes the critical significance of the thermal expansion coefficient as seen in the comparison between Comparative Example 1 and Example 5. As to the assertion of criticality and/or unexpected results, a showing of unexpected results must be based on evidence, not argument or speculation. The specification presents no factual evidence to show that results were actually unexpected in comparison to the results in the prior art. In this case, the Applicants should clearly establish the criticality of the thermal expansion coefficient and present claims that are commensurate in scope with the showing.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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, 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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/SHEEBA AHMED/ Primary Examiner, Art Unit 1787
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