DETAILED ACTION
Response to Amendment
The amendment and response filed on August 21, 2026 has been entered. Claims 1-10 and 12-17 are pending.
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.
Claims 1-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cham et al. (US Pub 2013/0101855) in view of Mongrain (US Pub 2019/0291134).
Regarding claim 1, US ‘855 discloses a multilayer packaging material (Figure 3) which comprises a surface coating layer (#312), a first paper layer (#314), a second paper layer (#324), and a sealant coating layer (Table 2).
US ‘855 does not disclose the Cobb sizing degree of the packaging material. However, US ‘855 does disclose that the packaging material exhibits low water vapor transmission rates [0021] and functions as a water barrier [0026], which is indicative of a material having a low Cobb sizing degree. Further, US ‘134, which is also directed to the multilayer coated paper laminate art, discloses that it is known to prepare multilayer coated paper laminates having a Cobb sizing degree within the presently claimed range [0025]. It would have been obvious to one of ordinary skill in the art to have prepared the multilayer packaging material of US ‘855, wherein the material exhibits a Cobb sizing degree of 25 g/m2·30 minutes or less, as taught in US ‘134, motivated by the desire to obtain a packaging material having desired barrier and resistance properties.
Regarding claim 2, US ‘855 discloses that the heat seal layer may employ heat seal promoters as known in the art to increase the heat seal strength [0035] and uses the same materials for the sealing coating layer as the present claims. As set forth in MPEP 2112, “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Thus, it is reasonable to conclude that the claimed heat seal strength range is inherent to the heat seal layer of US ‘855. Alternatively, it would have been obvious to the skilled artisan to have discovered optimum or workable ranges of the seal strength through routine experimentation. See MPEP 2144.05, which states “"[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). With respect to the limitation that the surface coating layer has a surface energy of 38 dyne/cm or more, US ‘134, which is also directed to the multilayer coated paper laminate art, discloses that it is known to provide a paper laminate with a surface layer having a surface energy of greater than 38 dyne/cm (Table 3). US ‘134 discloses that such a coating provides excellent oil and grease resistance properties to the multilayer coated paper laminate. It would have been obvious to the skilled artisan to have included the surface coating layer of US ‘134 to the multilayer paper laminate of US ‘855, motivated by the desire to impart excellent oil and grease resistance properties to the multilayer coated paper laminate.
Regarding claim 3, US ‘134 discloses that the surface coating layer can be a water-based coating such as a polyethylene emulsion (claim 1, [0060]).
Regarding claim 4, US ‘855 further discloses a primer layer that can be a polyvinyl alcohol (#320, [0028], claim 4).
Regarding claim 5, US ‘855 discloses the use of kraft paper (claim 2) which is known to have a density in excess of 0.8 kg/m3.
Regarding claim 6, US ‘855 does not specifically state that the second fibrous layer, i.e., paper layer, comprises a portion of a component derived from the sealing coating layer. However, paper is a known porous fibrous material and during the coating application of the sealing coating layer at least some sealant would be expected to penetrate the porous paper layer.
Regarding claim 7, US ‘855 discloses that the sealant layer can be PHA (claim 5).
Regarding claim 8, US ‘855 discloses a barrier layer can be interposed between the first and second paper layers (#318, #322).
Regarding claims 9 and 10, US ‘855 discloses that the barrier layer can be PHA (claim 29), PVOH, or EVOH (claim 8).
Regarding claim 12, US ‘855 discloses that the multilayer packaging materials has an oxygen and moisture permeability within the present claimed ranges [0051].
Regarding claim 13, US ‘855 discloses that the heat seal layer may employ heat seal promoters as known in the art to increase the heat seal strength [0035] and uses the same materials for the sealing coating layer as the present claims. As set forth in MPEP 2112, “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Thus, it is reasonable to conclude that the claimed heat seal strength range is inherent to the heat seal layer of US ‘855. Alternatively, it would have been obvious to the skilled artisan to have discovered optimum or workable ranges of the seal strength through routine experimentation. See MPEP 2144.05, which states “"[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).
Regarding claim 14, with respect to the limitation that the surface coating layer has a surface energy of 38 dyne/cm or more, US ‘134 discloses that it is known to provide a paper laminate with a surface layer having a surface energy of greater than 38 dyne/cm (Table 3). US ‘134 discloses that such a coating provides excellent oil and grease resistance properties to the multilayer coated paper laminate. It would have been obvious to the skilled artisan to have included the surface coating layer of US ‘134 to the multilayer paper laminate of US ‘855, motivated by the desire to impart excellent oil and grease resistance properties to the multilayer coated paper laminate.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cham et al. (US Pub 2013/0101855) in view of Mongrain (US Pub 2019/0291134) and Andersson et al. (WO00/030846).
Modified US ‘855 discloses a process of preparing a multilayer packaging material comprising the layers set forth in claims 15-17, but does not disclose the claimed process of coating the surface coating on one side of the first paper layer to prepare a first fibrous film, coating the sealing coating on one side of the second paper layer, and laminating the two fibrous films together, wherein a barrier layer is either interposed or coating in between the fibrous films. WO ‘846, which is also directed to the multilayer coated paper art, discloses a process of independently coating two paper layers with a polymer by a liquid film coating technique, followed by the addition of a polymer material between both coated layers so that the paper layers are laminated (pg 25, lines 13-23; Figure 6). It would have been obvious to the skilled artisan to have prepared the multilayer packaging material of modified US ‘855 using the process detailed in WO ‘846, motivated by the desire to obtain a multilayer packaging material prepared by a known manufacturing process.
Response to Arguments
Applicant's arguments filed August 21, 2026 have been fully considered but they are not persuasive.
The previous rejections under 35 U.S.C. 112(b) and 35 U.S.C. 102(a)(1)/(a)(2) are withdrawn in view of the present amendment and arguments.
Regarding the rejection under 35 U.S.C. 103 over Cham et al. (US Pub 2013/0101855) in view of Mongrain (US Pub 2019/0291134), it is agreed that US ‘134 discloses a low 30 minute Cobb value for the surface of the coated single paper-based substrate and does not disclose a packaging material having a first fibrous layer and a second fibrous layer with a surface coating layer formed on one side of first fiber layer and a seal coating formed on one side of the second fiber layer. However, as set forth in the above obviousness rejection, it is US ‘855 that is relied upon to disclose the packaging laminate structure and US ‘134 is simply relied upon to show that it would have been obvious to have provided the multilayer packaging material of US ‘134 with a low Cobb sizing degree motivated be the desire to impart desired barrier and resistance properties to the packaging material.
The argument with respect to inherency is not persuasive. While the rejection does set forth that US ‘855 discloses that the packaging material exhibits low water vapor transmission rates [0021] and functions as a water barrier [0026], which is indicative of a material having a low Cobb sizing dress, it is US ‘134 that is relied upon to specifically teach the claimed Cobb sizing degree property.
The argument that US ‘855 discloses a laminate having two paper layers whereas US ‘134 has a laminate having a single paper layer is not persuasive, as the Cobb sizing degree property would be affected by the outer exposed layer in the laminate structure of US ‘134. Accordingly, the disclosure to use a material having a low Cobb value as the outer layer would be recognized by one skilled in the art to be desirable for multi-paper layer laminates as well as single paper packaging laminates.
The arguments with respect to unexpected results are not persuasive for the following reasons. First, the claims are not commensurate in scope the Examples, which show specific paper and coating materials. Second, the comparative example uses a distinct paper material than Examples 1 and 2. And, third, the comparative examples exhibits a Cobb sizing value within the presently claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The newly cited U.S. Publications are cited to show that it is well known in the art to prepare multilayer packaging materials having a Cobb sizing degree within the presently claimed range.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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