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 .
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 1-6, 8-13, 15-16, 18-22 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Nishijima et al. (hereinafter Nishijima), US Patent Application Publication No. 2016/0130056 A1 in view of Backfolk et al., (hereinafter Backfolk’840), WO 2021/224840 A1 and evidenced by any of Gold et al., (hereinafter Gold), United State Patent No. 4,434,259, Dragoon et al., (hereinafter Dragoon), United State Patent No. 3,463,659, Becker et al., (hereinafter Becker), United State Patent No. 4,567,098 and Girard et al., (hereinafter Girard), United State Patent No. 5,827,616, just to cite a few.
With regard to claims 1-2, 9, 13, 19-21 and 27, Nishijima teaches a process of making a coated paper; see ¶-[0022], [0028], [0032], [0049], [0064]-[0065] and [0081] and table 1, comprising:
Providing a paper substrate comprising a humectant layer (reading on claim 13) coated in its surface at amounts falling within the claimed range, i.e., about 23 kg/ton, calculated from the data on examples 1 and 2, ¶-[0064]-[0065], [0081] and Table 1, i.e., 64 g/m2 of the substrate with 1.5 g/m2 of the humectant layer(s)1 which gives that the humectant layer is about 2.3% (converts to 23 kg/ton) based on the total amount of the substrate and the coating.
Cleaning and smoothing the surface of the substrate including the humectant layer prior to the deposition layer, with a plasma treatment.
Applying a deposition layer/costing layer by a vacuum coating process, such as physical vapor deposition (PVD) or chemical vapor deposition (CVD) (reading on claim 19), of metal oxides, such as silicon oxide, aluminum oxide and the like (reading on claims 20-21); see ¶-[0049].
While Nishijima does not explicitly teach the pre-coating of the substrate before the metal deposition by vacuum coating the evidentiary references teach that for vacuum coating is necessary to pre-coat the surface of the substrate to clean and smooth the its surface; see column 1, lines 20-56 and column 2, lines 25-37 of Gold; column 1, lines 37-55 and column 3, line 56 through column 4, line 53 of Dragoon; column 1, lines 26 through column 2, line 46 of Becker; figure 1 and column 1, line 41 through column 2, line 3 of Girard. Backfolk’840 teaches that plasma treatment clean and smooth the surface of the paper, which is equivalent to the process of pre-coat the substrate before the application of the vacuum coating process; see page 9, line 6-8; page 7, line 12 through page 8, line 2 and step d of claim 1, therefore, substituting the plasma treatment taught by Nishijima, with pre-coating the surface of the substrate of the primary reference, Nishijima, would have been obvious to one of ordinary skill in the art since they are equivalent process and it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
Regarding to claims 3-6 and 8, Nishijima teaches the sue of a premium paper having a basis weight/grammage of 64 g/m2 which are known to contain fillers and surface sized2 and have the claimed properties or at the very least using papers with the claimed properties as the substrate of the primary reference would have been obvious to one of ordinary skill in the art, absent a showing of unexpected result(s).
With regard to claims 10-11, Nishijima teaches the use of polyols and sugar alcohols, e.g., sorbitol as humectant/hygroscopic agent/additive; see ¶-[0044]-[0045].
Regarding to claim 12, while Nishijima does not explicitly teach the use of inorganic humectant, the use an equivalent product is within the level of ordinary skill in the art and considered obvious absent a showing of unexpected result(s). Note that it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
With regard to claims 15-16 and 18, the evidentiary references teach that pre-coating the substrate before the vacuum coating with a metal is known id, and teach that using polyvinyl alcohol (PVOH) is commonly used in said pre-coat and added at ranges falling within the claimed arrange; see for example column 2, lines 6-17 and column 5, lines 1-14 of Becker; paragraph bridging columns 3 and 4 of Gold; also on paragraph bridging columns 3 and 4 of United State Patent No. 5,358,790. Therefore, using a pre-coat including PVOH and adding it at the claimed range would have been obvious to one of ordinary skill in the art.
Regarding to claim 22, the secondary reference Backfolk’840, teaches that inorganic and organic vacuum coating layers are known in the art; see paragraph bridging pages 2 and 3, and thus the use of an organic vacuum coating in the art of the primary reference would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if organic materials were deposited on the surface of the main/primary reference, Nishijima.
With regard to claim 24, Nishijima taches vacuum coating layer having thickness between 10 and 5000 Å, (1 to 500 nm); see ¶-[0050], that falls within the claimed range.
Regarding to claims 25-26, tables 1 through 3 on pages 7 and 8 of Nishijima show oxygen transmission rate (OTR) and water vapor transmission rate (WVTR) falling within the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “A Method for Manufacturing a Vacuum Coated Paper.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Note that hygroscopic layer function also as a humectant, which is evidenced by the current application, page 5, lines 26-29 and also evidenced by the fact that the same compounds are used as humectant in the current application, e.g. sorbitol used as humectant in the current application and as a hygroscopic agent/additive in the reference, Nishijima
2 The examiner takes official notice of this/these fact(s) and would present evidence if necessary.
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