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
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/06/2026.
Applicant's election with traverse of Group I, Claims 1-4 and 8-11, in the reply filed on 03/06/2026 is acknowledged. The traversal is on the ground(s) that the restriction requirement was incorrectly made “as relating to patentable claims” and does not interpret the claims in light of the description. This is not found persuasive because of the following reasons:
According to PCT Rule 13.2, “The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.” The shared technical feature that is recited in each of the claimed inventions is identified in paragraph 8 of the Office Action filed 01/30/2026. This shared technical feature is not considered a “special technical feature” because it does not make a contribution over the prior art Yamakage in view of Shibutani, as shown in paragraphs 8-13 of the Office Action filed 01/30/2026.
The recitation of Yamakage in view of Shibutani in the Office Action filed 01/30/2026 is not a rejection of the claims, but is given to explain how the limitations of the shared technical feature of the multiple claimed inventions does not make a contribution over the prior art, as required for unity of invention according to PCT Rule 13.2.
Further, PCT Annex B, reads “The determination is made on the contents of the claims as interpreted in light of the description” (emphasis added). This consideration does not incorporate the description into the claims, but interprets the content of the claims in light of the description. Examiner maintains that the lack of “special shared technical feature” was determined “on the contents of the claims”.
Further, while applicant argues that the Examiner has not provided any indication that the contents of the claims interpreted in light of the description was considered in making the assertion of a lack of unity and therefore has not met the burden necessary to support the assertion, the examiner is unaware of any requirement to provide detail as to how a claim interpretation is in light of the specification. Lack of unity a posteriori is established by identifying the common technical feature unifying the claims and demonstrating that that technical feature is known in the prior art. This was properly demonstrated by the examiner as set forth above. Additionally applicants fail to distinctly point out the supposed error(s) in the Examiner’s interpretation of the claims in light of the specification.
The requirement is still deemed proper and is therefore made FINAL.
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.
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.
Claims 1-4 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamakage et al. (JP 2002/144488 A) in view of Shibutani et al. (WO 2020/218509 A1 using US 2022/0315778 A1 for translation).
Regarding Claims 1, 3-4, and 8-11, Yamakage discloses a laminated paper in which polyethylene (i.e. water-insoluble resin layer comprising polyolefin resin) is laminated on one side of a base paper, wherein a water-soluble resin is applied between the base paper surface and the polyethylene (para 0005).
Yamakage does not disclose the specific water-soluble resin as claimed.
Shibutani discloses a water-soluble resin for paper substrate (paras 0061-0062), which is a water-soluble polyester resin (para 0015) comprising monomer units A which is a dicarboxylic acid monomer unit having a sulfonate group (i.e. hydrophilic group) (para 0017) and monomer units B which is a dicarboxylic acid monomer unit having no hydrophilic group (para 0022). The content of the sulfonate group in the water-soluble resin is preferably 0.4 to 3 mmol/g (para 0020). The molar ratio of the monomer unit A to the monomer unit B in the water-soluble resin is 10/90 to 70/30 (para 0030) (i.e. the proportion of dicarboxylic acid unit having the hydrophilic group in all dicarboxylic acid units constituting the water-soluble polyester resin is 10-70 mol%). Shibutani discloses the combination of monomers achieves the ability to remove the resin with neutral water, while also improving water resistance (para 0012) because the neutral water must be at 30 °C or more to remove the resin (para 0104) (i.e. temperature-responsive).
Therefore it would be obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to use the water-soluble resin of Shibutani as the water-soluble resin of Yamakage, in order to achieve the ability to remove the resin with neutral water, while also improving water resistance.
Regarding Claim 2, Yamakage in view of Shibutani discloses all the limitations of the present invention according to Claim 1 above, including that neutral water must be at 30 °C or more to remove the water-soluble resin (Shibutani, para 0104). Shibutani further discloses that the water-soluble resin dissolves in neutral water at 70 °C. in an amount of 10% by mass or more (para 0013) (i.e. easily soluble at 70 °C).
While Yamakage in view of Shibutani do not specifically disclose the properties of the water-soluble resin layer at 25 °C, since Shibutani discloses neutral water must be at 30 °C or more to remove the water-soluble resin, the water-soluble resin must be poorly soluble at 25 °C.
Alternatively:
Since Yamakage in view of Shibutani discloses a laminate structure including temperature-responsive water-soluble resin layer as claimed, comprising monomer units as claimed, the water-soluble resin layer would necessarily be poorly soluble at 25 °C and easily soluble at 70 °C as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787