DETAILED ACTION
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 of Group I (claims 1-12) in the reply filed on 05/01/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/01/2026.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 09/23/2024 is considered and signed IDS form is attached.
Claim Objections
Claims are objected to because of the following informalities: Appropriate correction is required.
Claim 1, line 1, recites “Composite film”, which should be “A composite film”.
Claim 1, line 3, recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 1, line 4 recites “lacquer layer”, which should be “the at least one lacquer layer”.
Claim 1, line 4 recites “carrier film”, which should be “the carrier film”.
Claim 1, line 5 recites “lacquer layer”, which should be “the at least one lacquer layer”.
Claim 1, line 5 recites “inorganic layer”, which should be “the inorganic layer”.
Claim 1, lines 7-8, recites “a hydrophilic and a hydrophobic component”, which should be “a hydrophilic portion and a hydrophobic portion”.
Claim 1, lines 8-9 recites “the hydrophobic portion is between 0.2-20% and the hydrophilic portion is at least 70%, relative to the amount of substance in mol in each case”, which should be “the hydrophobic portion is between 0.2-20 mol% and the hydrophilic portion is at least 70 mol%”.
Claim 2, line 1 recites “Composite film”, which should be “The composite film”.
Claim 3, line 1 recites “Composite film”, which should be “The composite film”.
Claim 3, line 4 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 4, line 1 recites “Composite film”, which should be “The composite film”.
Claim 4, line 4 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 5, line 1 recites “Composite film”, which should be “The composite film”.
Claim 5, line 4 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 6, line 1 recites “Composite film”, which should be “The composite film”.
Claim 6, line 4 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 7, line 1 recites “Composite film”, which should be “The composite film”.
Claim 7, line 3 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 8, line 1 recites “Composite film”, which should be “The composite film”.
Claim 8, line 3 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
Claim 9, line 1 recites “Composite film”, which should be “The composite film”.
Claim 10, line 1 recites “Composite film”, which should be “The composite film”.
Claim 11, line 1 recites “Composite film”, which should be “The composite film”.
Claim 12, line 1 recites “Composite film”, which should be “The composite film”.
Claim 12, line 3 recites “the lacquer layer”, which should be “the at least one lacquer layer”.
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 2, 4 and 6-9 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.
Claims 2, 4 and 6-9, each recite “preferably”. Therefore, the scope of each of the claims is confusing since the use of the phrase “preferably” makes it unclear as to whether the claim actually requires the limitations following these phrases.
Claims 4 and 9 recite “particularly preferably”. Therefore, the scope of the claim is confusing since the use of the phrase “particularly preferably“ makes it unclear as to whether the claim actually requires the limitations following these phrases.
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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lorenzetti et al. (US 2014/0199505 A1 cited in IDS).
Regarding claims 1, 2, 10 and 11, Lorenzetti et al. disclose a multilayer film (composite film) comprising a polyolefin core layer (carrier film) made of polyethylene and a barrier surface layer (lacquer layer) made of ethylene vinyl alcohol (EVOH) (barrier lacquer having a polymer matrix) (see Abstract and page 12, claims 1 and 6). The EVOH has an ethylene content of 36 mol% or lower (see page 12, claim 1). That is, the amount of hydrophobic portion is 36 mol% or lower. Accordingly, the amount of hydrophilic portion (vinyl alcohol) is 64 mol% or higher. Further, a vapor deposition coated film (inorganic layer) made of aluminum oxide (AlOx) can be deposited on the barrier surface layer (see paragraphs 0031, 0043 and 0047). Accordingly, Lorenzetti et al. disclose the multilayer film (composite film) on which a layer sequence is applied consisting of the barrier surface layer (lacquer layer) and the vapor deposition coated film (inorganic layer).
The polyolefin core layer is identical to the carrier layer given that the core layer is made of polyethylene identical to the carrier layer utilized in the present invention (see pages 6-7, bridging paragraph of present specification). Further, the barrier surface layer is made of EVOH having hydrophobic portion and hydrophilic portion (including overlapping amounts) identical to the lacquer layer as presently claimed. The vapor deposition coated film is made of aluminum oxide (AlOx) identical to the inorganic layer as presently claimed. Given that the carrier film, the lacquer layer and the inorganic layer of Lorenzetti et al. are identical to that utilized in the present invention, adhesion forces between the lacquer layer and carrier film are necessarily inherently lower than adhesion forces between lacquer layer and inorganic layer.
While Lorenzetti et al. disclose the composite film, Lorenzetti et al. do not disclose the composite film “for transferring a barrier layer to another substrate”.
However, the recitation in the claims that the composite film is “for transferring a barrier layer to another substrate” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Lorenzetti et al. disclose composite film as presently claimed, it is clear that the composite film of Lorenzetti et al. would be capable of performing the intended use, i.e. for transferring a barrier layer to another substrate, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
In light of the overlap between the claimed composite film and that disclosed by Lorenzetti et al., it would have been obvious to one of ordinary skill in the art to use a composite film that is both disclosed by Lorenzetti et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claims 3 and 4, Lorenzetti et al. disclose the composite film as set forth above. The composite film comprises lacquer layer comprising EVOH, wherein the EVOH has an ethylene content (hydrophobic portion) of 36 mol% or lower as noted above. Accordingly, the content of vinyl alcohol (hydrophilic portion) is 64 mol% or higher. Given that Lorenzetti et al. uses EVOH as polymer matrix identical to that presently claimed, vinyl alcohol as the hydrophilic portion is also necessarily identical to the hydrophilic portion as presently claimed. Accordingly, the hydrophilic portion necessarily inherently has properties as presently claimed.
Regarding claims 5 and 6, Lorenzetti et al. disclose the composite film as set forth above. The composite film comprises lacquer layer comprising EVOH, wherein the EVOH has an ethylene content (hydrophobic portion) of 36 mol% or lower as noted above. Accordingly, the content of vinyl alcohol (hydrophilic portion) is 64 mol% or higher. Given that Lorenzetti et al. uses EVOH as polymer matrix identical to that presently claimed, ethylene as the hydrophobic portion is also necessarily identical to the hydrophobic portion as presently claimed. Accordingly, the hydrophobic portion necessarily inherently has properties as presently claimed,
Regarding claims 7 and 8, Lorenzetti et al. disclose the barrier surface layer (lacquer) has thickness of less than 1.5 microns (see page 12, claim 1).
Regarding clam 9, Lorenzetti et al. disclose the vapor deposition coated film (inorganic layer) has a thickness of 5 to 300 nm (see paragraph 0076).
Regarding claim 12, Lorenzetti et al. disclose the composite film as set forth above. Given that the lacquer layer and the inorganic layer of Lorenzetti et al. are identical to that utilized in the present invention, the layer sequence of the lacquer layer and the inorganic layer necessarily inherently has claimed properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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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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/KRUPA SHUKLA/Examiner, Art Unit 1787
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