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 without traverse of claims 2-13 & 16-19 in the reply filed on 12/2/25 is acknowledged.
Claims 1, 14, & 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/2/25.
Claim Objections
Claim 2: Claim 2 is objected to because of the following informalities: clause (a) ends with a “.” instead of “; and” following US practice.
Appropriate correction is required.
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 3-4, 6, 7, 13, 18, & 19 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 3: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “an aldehyde”, and the claim also recites “more preferably formaldehyde” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 4: Claim 4 is rejected as being indefinite because it depends from claim 3 and does not remedy the issues of claim 3.
Claim 6: Regarding claim 6, the phrase "for example" 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).
Claim 6: Claim 6 recites the limitation “crystalline triazine layer” which renders the claim indefinite because the limitation is not preceded by “a” or “the” and it is unclear if “crystalline triazine layer” refers to the crystalline triazine layer of claim 2 or a new layer.
For the purpose of examination, the limitation is being interpreted as being “the crystalline triazine layer” and referring to the crystalline triazine layer of claim 2.
Appropriate correction is required.
Claim 7: Claim 7 recites the limitation “crystalline triazine layer” which renders the claim indefinite because the limitation is not preceded by “a” or “the” and it is unclear if “crystalline triazine layer” refers to the crystalline triazine layer of claim 2 or a new layer.
For the purpose of examination, the limitation is being interpreted as being “the crystalline triazine layer” and referring to the crystalline triazine layer of claim 2.
Appropriate correction is required.
Claim 13: Claim 13 is rejected as being indefinite because the term “cellulose-based” is undefined and one of ordinary skill in the art would not be able to determine what is included in a “cellulose-based” material.
Claims 18 & 19: Claims 18 & 19 are rejected as being indefinite because they depend from claim 13 and does not remedy the issues of claim 13.
Claim Rejections - 35 USC §§ 102 & 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 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.
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 2, 3, 5, 8-13, 16, 17, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jahromi (US PG Pub 2007/0207319; hereafter ‘319).
Claim 2: ‘319 is directed towards a process for preparing a coated substrate (see title & abstract), the process comprising:
providing a coated substrate having a crystalline triazine layer (abstract & ¶ 15); and
applying a vapor of a reactive compound in a superheated steam (the crystalline triazine layer is treated with reactive gas of water and formaldehyde during vapor depositing after vapor depositing at a temperature of 125ºC – i.e. superheated vapor treatment; see abstract, ¶s 20-22, and claims 1 & 11-13).
‘319 does not explicitly teach that the reactive superheated steam comprising a mixture of water and formaldehyde reacts with the triazine and the triazine is either alkylolated and/or the layer comprises alkylether and/or alkylene bridged triane and the substrate has oxygen barrier properties and the layer is resistant to alcohol.
‘319 teaches the claimed invention but fails to explicitly teach the reactive superheated steam comprising a mixture of water and formaldehyde reacts with the triazine and the triazine is either alkylolated and/or the layer comprises alkylether and/or alkylene bridged triane and the substrate has oxygen barrier properties and the layer is resistant to alcohol. Since the same materials and processes are taught; it is reasonable to presume the results are obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Alternatively, if ‘319 does not inherently teach that the steam is superheated.
It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the temperature of the steam to obtain the desired reactiveness because differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claim 3: The reactive compound is an aldehyde, specifically formaldehyde (¶ 20).
Claim 5: The reactive compound is a mixture of water and formaldehyde in a reactive gas mixture – i.e. the formaldehyde is dissolved in water (¶ 20).
Claim 8: As discussed above, ‘319 teaches treating with a reactive gas mixture of water and formaldehyde.
‘319 does not teach a means for supplying the reactive gas mixture.
However, spraying is an art known means for supplying a gas mixture in a deposition apparatus.
It would have been obvious to one of ordinary skill in the art at the time of filing to spray the reactive gas mixture during the process because it is an art recognized means for supplying a gas in a deposition system and would have reasonably provided the reactive gas mixture as desired.
‘319 does not provide a distance from which the gas mixture is supplied.
However, it is prima facie obvious to optimize the distance from which the reactive gas is sprayed to optimize the exposure of the film to the reactive gas because change in shape and size is prima facie obvious.
Claim 9: ‘319 teaches that the triazine is in crystalline form and then further treated with a reactive gas as discussed above.
‘319 does not teach a specific degree of reaction.
However, ‘319 does teach that processing is beneficial by providing desired results (¶ 18-20) and it is preferrable that the triazine layer consists essentially of crystalline triazine (¶ 16).
Although the taught range of consists essentially of crystalline triazine is not explicitly the claimed range of 90% or more of the triazine layer is not reacted and in a crystalline form, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Claim 10: The triazine is melamine (¶ 8).
Claim 11: The substrate is a film (¶ 7).
‘319 does not provide a thickness for the substrate film.
However, changes in size and shape are prima facie obvious and it would be obvious to use a shape and size for the desired purpose of the film of ‘319.
Claim 12: The substrate is a plastic film (¶ 7).
Claim 13: The substrate can be cardboard (i.e. cellulose-based; ¶ 7).
Claim 16: The substrate can be BOPP (¶ 7).
Claim 17: The plastic film is provided with an alumina, AlOx, or SiO-x layer (¶ 7).
Claim 19: The cellulose-based material is provided with an alumina, AlOx, or SiO-x layer (¶ 7).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over ‘319 as applied above, and further in view of Capelot et al. (US PG Pub 2019/0232628; hereafter ‘628).
Claim 4: ‘319 teaches that the reactive gas is a crosslinking agent for melamine (¶ 18).
‘319 does not teach using glyoxal in place of formaldehyde as the crosslinking reaction agent.
However, ‘628, which is directed towards barrier structures (title), teaches that glyoxal and formaldehyde are known crosslinkers for melamine in the field (¶ 69).
It would have been obvious to one of ordinary skill in the art at the time of filing to use glyoxal in place of formaldehyde in the process of ‘319 because as taught by ‘628, they are art recognized crosslinking agents for melamine and the use of glyoxal would have predictably provided the same desired results.
Claims 6 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over ‘319 as applied above, and further in view of Jahromi et al. (US PG Pub 2011/0045258; hereafter ‘258).
Claim 6: ‘319 does not teach that it is a continuous roll-to-roll process at atmospheric pressure.
However, ‘258, which is also directed towards treating laminates comprising crystalline triazines layers (title & abstract) teaches that the process can be performed in a continuous roll-to-roll process (abstract, Fig. 1, ¶ 68, & claims 25-26) wherein the process can be carried out below about 1000 Pa (i.e. about atmospheric pressure; ¶ 61)
It would have been obvious to one of ordinary skill in the art at the time of filing to use the apparatus of ‘258 for the treatment of the crystalline melamine layer because it is an art recognized apparatus for the treatment of crystalline melamine layer laminates and would have predictably provided the desired results.
Although the taught range of below about atmospheric pressure is not explicitly the claimed range of atmospheric pressure, it does overlap the claimed range. Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to have incorporated a value within the claimed range since in the case where the claimed ranges “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).
Claim 7: ‘319 does not teach that it is a continuous roll-to-roll process at below atmospheric pressure.
However, ‘258, which is also directed towards treating laminates comprising crystalline triazines layers (title & abstract) teaches that the process can be performed in a continuous roll-to-roll process (abstract, Fig. 1, ¶ 68, & claims 25-26) wherein the process can be carried out below about 1000 Pa (i.e. below atmospheric pressure; ¶ 61)
It would have been obvious to one of ordinary skill in the art at the time of filing to use the apparatus of ‘258 for the treatment of the crystalline melamine layer because it is an art recognized apparatus for the treatment of crystalline melamine layer laminates and would have predictably provided the desired results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over ‘319 as applied above, and further in view of De Rybel et al. (US PG Pub 2024/0083150; hereafter ‘150).
Claim 18: ‘319 is directed towards barrier layers on packaging material which can be paper based (see title, ¶s 6 & 7).
‘319 does not teach that the substrate is clay coated paper which is coated with lacquer.
However, ‘150, which is directed towards barrier paper packaging films (title) teaches that clay coated paper which is coated with a lacquer is an art recognized packaging paper material (¶ 21).
It would have been obvious to one of ordinary skill in the art at the time of filing to use clay coated paper with a lacquer coating as the specific packaging paper substrate for the process of ‘319 because it is an art recognized packaging paper substrate in the field and would have predictably been suitable as the substrate for the process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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/James M Mellott/ Primary Examiner, Art Unit 1759