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 .
Summary
The Applicant’s arguments and claim amendments received on January 2, 2026 are entered into the file. Currently, claims 1, 3, and 4 are amended; claim 2 is cancelled; claims 15-22 are new; resulting in claims 1 and 3-22 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/17/2025 has been considered by the examiner.
Claim Objections
Claims 11, 14, and 15 are objected to because of the following informalities:
Regarding claim 11, the limitation reciting “wherein the paper layer has…a tear strength of 20 to 600 gf” in claim 11 is redundant in view of the identical limitation set forth in lines 4-5 of claim 1.
Regarding claim 14, in the claim set filed 01/02/2026, claim 14 is shown with the claim status “Currently Amended” with markings indicating that amendments were made relative to the prior claim set. However, the amendments to claim 14 shown in the 01/02/2026 claim set were previously made in the preliminary amendment filed 09/30/2024. The current claim markings and claim status for claim 14 are incorrect, but do not materially affect the claim.
Regarding claim 15, it is suggested to amend the limitation reciting “wherein the first repeat unit and the second repeat unit, each being derived from…” to --wherein the first repeat unit and the second repeat unit are each derived from…-- in order to clarify the language of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 3, 4, 16-19, 21, and 22, the limitations reciting “the polyhydroxyalkanoate (PHA) comprises” a homopolymer, a copolymer, or a polymer are considered new matter that is not supported by the original disclosure.
In looking to the instant specification, the polyhydroxyalkanoate (PHA) employed in the film layer is said to be either a homopolymer obtained by using one monomer as a reactant or a copolymer obtained by using two or more monomers as a reactant (see [0049] of the pg-pub). In all embodiments of the instant invention, the PHA is said to be a homopolymer or a copolymer, and there is no disclosure of the PHA containing a mixture of more than one type of PHA. Although the instant specification discloses that the film layer (12) may be composed of PHA alone or may further comprise a biodegradable resin in addition to the PHA ([0046]), there is no disclosure of the PHA including any components other than the PHA which is a homopolymer or a copolymer. The current language of the claim is therefore broader than the original disclosure because the claim encompasses embodiments for which the inventor has not shown possession, e.g., in which the PHA comprises both a homopolymer and a copolymer or in which the PHA comprises more than one type of homopolymer or more than one type of copolymer.
Regarding claims 5-15 and 20, the claims are rejected based on their dependency on claim 1.
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 16, 17, 19, 21, and 22 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.
Regarding claims 16 and 17, the limitations reciting “wherein the polyhydroxyalkanoate (PHA) comprises a homopolymer comprising a repeat unit derived from monomers including 4-hydroxybutyrate (4HB)” (claim 16) and “wherein the polyhydroxyalkanoate (PHA) comprises a homopolymer comprising a repeat unit derived from monomers including 3-hydroxybutyrate (3HB)” (claim 17) are indefinite because the phrase “monomers including” implies that the repeat unit can be derived from additional monomers other than 4HB or 3HB.
The common definition of the term “homopolymer” is a polymer consisting of identical monomer units (see https://www.merriam-webster.com/dictionary/ homopolymer). Based on this definition, it is understood that the homopolymer can only consist of a single repeat unit, and that monomers other than the single repeat unit are specifically excluded from the homopolymer. The aforementioned limitations therefore appear to intend to require that the PHA comprises a homopolymer comprising a repeat unit derived from 4-hydroxybutyrate (claim 16), or derived from 3-hydroxybutyrate (claim 17). Absent further clarification, the claims will be interpreted as such for the purpose of applying prior art.
Regarding claim 19, the limitation reciting “wherein the polyhydroxyalkanoate (PHA) comprises a polymer comprising repeat units derived from monomers including 4-hydroxybutyrate (4HB) and 3-hydroxybutyrate (3HB)” is indefinite because it is not clear what scope is encompassed by the phrase “monomers including”. For example, it is not clear based on the current language of the claim whether the monomers following the word “including” are merely exemplary, or if the word “including” is meant to require that both of the 4HB and 3HB monomers are present in the polymer.
Specifically, it is not clear whether the limitation of claim 19 is intended to require that the polymer comprises:
(1) repeat units derived from 4HB and 3HB (i.e., where the polymer is a 4HB-3HB copolymer);
(2) repeat units derived from 4HB and 3HB, but open to including other monomers (e.g., where the polymer is a terpolymer such as 4HB-3HB-3HV);
(3) repeat units derived from any monomers, where 4HB and 3HB are merely exemplary (e.g., where the polymer is a copolymer such as 3HV-3HH); or
(4) repeat units derived from monomers selected from the group consisting of 4HB, 3HB, and combinations thereof (i.e., where the polymer is a 4HB homopolymer, a 3HB homopolymer, or a 3HB-4HB copolymer).
It is noted that the language presented in option (4) is most similar to the language used throughout the instant specification (see, e.g., [0050] of the pg-pub). Absent further clarification from the Applicant, the limitation of claim 19 will be interpreted according to option (4) set forth above for the purpose of applying prior art.
Regarding claims 21 and 22, the limitations reciting “wherein the polyhydroxyalkanoate (PHA) comprises a copolymer including a first repeat unit and a second repeat unit, each being derived from a monomer including 3-hydroxybutyrate (3HB), wherein the first repeat unit and the second repeat unit are different from each other” (claim 21) and “wherein the polyhydroxyalkanoate (PHA) comprises a copolymer including a first repeat unit and a second repeat unit, each being derived from a monomer including 4-hydroxybutyrate (4HB), wherein the first repeat unit and the second repeat unit are different from each other” (claim 22) are indefinite because it is not clear how the first and second repeat units can be different if they are derived from the same monomer.
It is not clear whether the aforementioned limitations are intended to require that the PHA comprises a homopolymer including repeat units derived from 3HB (or 4HB), or if the claims are intended to require that the PHA comprises a copolymer including a first repeat unit derived from 3HB (or 4HB) and a second repeat unit which is different from the first repeat unit. In the former case, it is not clear how the PHA can be a homopolymer if the first and second repeat units are different. In the latter case, the instant specification does not provide any disclosure of a copolymer comprising first and second repeat units which are different from each other but which are derived from the same monomer.
The instant specification broadly discloses that the PHA may be a copolymer comprising at least one repeat unit (A) derived from a monomer selected from the group consisting of 3HB, 3HP, 4HB, 3HV, 5HV, 3HH, 6HH, and 3HO, further disclosing that the copolymer may comprise a first repeat unit (B) derived from a monomer selected from the group consisting of 3HB, 3HP, 4HB, 3HV, 5HV, 3HH, 6HH, and 3HO, and a second repeat unit (C) derived from a monomer selected from the group consisting of 3HB, 3HP, 4HB, 3HV, 5HV, 3HH, 6HH, and 3HO, where the first and second repeat units are different from each other ([0050], [0052]).
The instant specification therefore envisions a variety of embodiments in which the PHA is a copolymer including a first repeat unit and a second repeat unit, wherein the first repeat unit is derived from 3HB (or 4HB), and the second repeat unit is different from the first repeat unit. Absent further clarification, the claims will be interpreted as such for the purpose of applying prior art. Due to the indefiniteness of the current claim language, a written description rejection under 35 U.S.C. 112(a) will not be made at this time but may be appropriate later in prosecution as the indefiniteness issues are addressed.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 3 and 4, in the claim set filed January 2, 2026, claim 2 is canceled, and claims 3 and 4 are written as being dependent on claim 2. Therefore, claims 3 and 4 are of improper dependent form for being dependent upon a cancelled claim. For the purposes of examination, claims 3 and 4 will be treated as being dependent upon claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 6, 8, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Park ‘575 (KR 2023-0027575, machine translation previously provided).
Regarding claim 1, Park ‘575 teaches an eco-friendly laminated film comprising a film layer (100) and a paper layer (200) ([0036], Figs. 1-4). The paper layer has a biocarbon content of 70% or more and has a tear strength of 50 gf to 1000 gf ([0066], [0148]), which overlaps the claimed range of 20 gf to 600 gf. The film layer may include polyhydroxyalkanoate (PHA) ([0037]), wherein the PHA is necessarily either a homopolymer or a copolymer including different first and second repeat units.
The thickness of the laminated film may be 50 µm to 400 µm, while the thickness of the film layer may be 10 µm to 250 µm ([0042]-[0043]). The thickness of the film layer is therefore less than 75% of the total thickness of the laminated film (e.g., 10 µm / 50 µm = 20%, and 250 µm / 400 µm = 62.5%). Further, the film layer thickness overlaps the claimed range of 8 to 70 µm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Park ‘575 teaches that the paper layer has a wet tensile strength of 300 gf/15 mm to 7000 gf/15 mm so that the paper layer is not easily torn when packaging liquid contents and in order to maintain good printability and processability ([0073]), the reference does not expressly teach a tensile strength of the paper layer expressed in MPa (or gf/mm2).
Park ‘575 does, however, further teach that the amount of coniferous pulp used in forming the paper layer affects the printability and mechanical properties such as tensile strength, where too much coniferous pulp lowers the printability, and too little lowers the tensile strength [0055]. It would, therefore, have been obvious to one of ordinary skill in the art to set the tensile strength of the paper layer to a desired value, such as within the claimed range, in order to achieve the necessary balance between mechanical properties and the printability and processability of the paper layer for an intended application thereof.
Regarding claims 5 and 13, Park ‘575 teaches all of the limitations of claim 1 above. With respect to the biocarbon content of the film layer, Park ‘575 teaches that the film layer may be made of polyhydroxyalkanoate (PHA) ([0119]), which is a bioplastic and thus would be expected to have a biocarbon content within the broadly claimed range of 40% or more.
With respect to the biocarbon content of the laminate, Park ‘575 further teaches that the biocarbon content of the paper layer is 70% or more so that it is environmentally friendly [0067]. The laminate film of Park ‘575 composed of the bioplastic PHA film layer and the paper film having a biocarbon content of 70% or more therefore would be expected to have a biocarbon content within the broadly claimed range of 25% or more.
Regarding claim 6, Park ‘575 teaches all of the limitations of claim 1 above and further teaches that the laminate film may have an oxygen permeability of 0.05 cc/m2-day to 10 cc/m2-day, and a moisture permeability of 0.05 g/m2-day to 10 g/m2-day ([0020]), which overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 8, Park ‘575 teaches all of the limitations of claim 1 above and further teaches that the film layer may include at least one selected from the group containing polyhydroxyalkanoate (PHA), polylactic acid (PLA), and the like [0037].
Regarding claim 11, Park ‘575 teaches all of the limitations of claim 1 above and further teaches that the paper layer has a basis weight of 30 g/m2 to 250 g/m2 ([0057], [0148]), which falls within the claimed range of 30 to 350 g/m2. The paper layer has a tear strength of 50 gf to 1000 gf ([0066], [0148]), which overlaps the claimed range of 20 gf to 600 gf. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Park ‘575 teaches that the paper layer has a wet tensile strength of 300 gf/15 mm to 7000 gf/15 mm so that the paper layer is not easily torn when packaging liquid contents and in order to maintain good printability and processability ([0073]), the reference does not expressly teach a tensile strength of the paper layer expressed in MPa (or gf/mm2).
Park ‘575 does, however, further teach that the amount of coniferous pulp used in forming the paper layer affects the printability and mechanical properties such as tensile strength, where too much coniferous pulp lowers the printability, and too little lowers the tensile strength [0055]. It would, therefore, have been obvious to one of ordinary skill in the art to set the tensile strength of the paper layer to a desired value, such as within the broadly claimed range of 8 MPa to 100 MPa, in order to achieve the necessary balance between mechanical properties and the printability and processability of the paper layer for an intended application thereof.
Regarding claim 12, Park ‘575 teaches all of the limitations of claim 1 above but does not expressly teach a peel strength of the laminate. Park ‘575 does, however, further teach that the paper layer and the film layer do not easily peel off in high temperature and high humidity conditions ([0045]), such that it would have been obvious to one of ordinary skill in the art to set the peel strength between the paper layer and the film layer to a value within the claimed range in order to prevent delamination between the layers of the laminate film.
Regarding claim 14, Park ‘575 teaches all of the limitations of claim 1 above and further teaches that the laminated film may be used to form an eco-friendly packaging material ([0001], [0133]).
Claims 3, 4, 7, 9, 10, and 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Park ‘575 (KR 2023-0027575, machine translation previously provided) as applied to claim 1 above, and further in view of Krishnaswamy (US 2013/0065046, previously cited).
Regarding claims 3, 4, 9, and 15-22, Park ‘575 teaches all of the limitations of claim 1 above. Although Park ‘575 teaches that the film layer may include at least one selected from polyhydroxyalkanoate (PHA), polylactic acid (PLA), and the like ([0037]), the reference does not expressly teach that the PHA is a homopolymer or copolymer comprising repeat units derived from the monomers specified in claims 4, 9 and 15-22, or that the PHA is a copolymer comprising first and second repeat units present in the amounts specified in claims 3 and 4.
However, in the analogous art of biopolymer films, Krishnaswamy teaches compositions of polymer blends of PLA and PHA which exhibit increased toughness relative to compositions of PLA (Abstract, [0029]). Similar to the film layer in the laminated film of Park ‘575, Krishnaswamy teaches that the PLA/PHA blends can be used to produce films that are used to make laminates, for example by coating or co-extruding the composition onto a paper layer [0039].
Krishnaswamy teaches that the PHA can be a homopolymer (where all monomer units are the same), such as poly 3-hydroxypropionate (P3HP), poly 3-hydroxybutyrate (P3HB), poly 3-hydroxyvalerate (P3HV), poly 4-hydroxyburtyrate (P4HB), poly 4-hydroxyvalerate (P4HV), or poly 5-hydroxyvalerate (P5HV) ([0032], [0059]). The fully amorphous PHAs and mostly amorphous phase or rubber phase PHAs include polymers of 4HB, 3HH, 5HV, and 3HO, wherein the amorphous rubbery PHA serves to impart a toughening effect when blended with other polymers ([0032]-[0033]).
The PHA can also be a copolymer such as PHB3HP, P3HB4HB, PHB4HV, PHB3HV, PHB3HH, or PHB5HV [0060]. By selecting the monomer types and controlling the ratios of monomer units in a given PHA copolymer, a wide range of material properties can be achieved [0061]. For example, the PHA may comprise a copolymer of 3HB (first repeat unit) and 4HB (second repeat unit) with a 4HB weight% of about 25% to about 50% ([0009], [0151]-[0155]), indicating that the 3HB weight% is about 50% to about 75%. The 4HB content in the P3HB4HB copolymer suppresses the crystallinity of the 3HB component to produce an amorphous, rubbery copolymer which imparts a toughening effect (i.e., improvements in tensile toughness and elongation) on the overall PLA/PHA blend ([0012], [0033]-[0034]).
Given that Park ‘575 recognizes that high elongation and tensile strength are desirable for films used for packaging beverages ([0002]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the laminated film of Park ‘575 by using a PLA/PHA polymer blend as taught by Krishnaswamy to form the film layer. One of ordinary skill in the art would be motivated to use a PLA/PHA polymer blend comprising a PHA copolymer comprising the claimed amounts of repeat units of 3HB and 4HB, or comprising a PHA homopolymer selected from P3HP, P3HB, P3HV, P4HB, P4HV, or P5HV, as the material of the film layer in order to impart good tensile toughness and elongation to the laminated film.
Regarding claim 7, Park ‘575 teaches all of the limitations of claim 1 above and further teaches that the laminated film comprises layers laminated with a sealing strength of 1.0 kg or more [0021]. Although Park ‘575 teaches that the film layer may include at least one selected from polyhydroxyalkanoate (PHA), polylactic acid (PLA), and the like ([0037]), Park ‘575 differs from the claimed invention in that the reference does not expressly teach a tensile strength of the film layer.
However, in the analogous art of biopolymer films, Krishnaswamy teaches compositions of polymer blends of PLA and PHA which exhibit increased toughness relative to compositions of PLA (Abstract, [0029]). Similar to the film layer in the laminated film of Park ‘575, Krishnaswamy teaches that the PLA/PHA blends can be used to produce films that are used to make laminates, for example by coating or co-extruding the composition onto a paper layer [0039]. Krishnaswamy further teaches that PLA has high tensile strength, and that the addition of PHA thereto is used to toughen PLA at the expense of tensile strength, where the tensile strength achieved by PLA/PHA blends is within the range of about 19 to 39 MPa ([0002]-[0006], Table 1).
Given that Park ‘575 teaches that the paper layer has a high tensile strength, which is the strength at which the paper begins to tear ([0076]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the laminated film of Park ‘575 by setting a tensile strength of the film layer within the claimed range, such as by adjusting the relative amounts of PLA and PHA within the film layer, as taught by Krishnaswamy, in order to achieve the desired balance of tensile strength and toughness. Furthermore, it is noted that Krishnaswamy teaches a range for the tensile strength of the film layer which overlaps the broadly claimed range of 5 MPa or more. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 10, Park ‘575 teaches all of the limitations of claim 1 above but is silent to an average molecular weight of the polyhydroxyalkanoate (PHA).
However, in the analogous art of biopolymer films, Krishnaswamy teaches compositions of polymer blends of PLA and PHA which exhibit increased toughness relative to compositions of PLA (Abstract, [0029]). Similar to the film layer in the laminated film of Park ‘575, Krishnaswamy teaches that the PLA/PHA blends can be used to produce films that are used to make laminates, for example by coating or co-extruding the composition onto a paper layer [0039]. Krishnaswamy further teaches that the weight average molecular weight of the PHA ranges between about 100,000 to about 600,000, where the physical properties and rheological properties depend on the molecular weight and distribution of the polymer ([0044], [0047]). In particular, Krishnaswamy teaches that the PHA is a beneficial material for improving the toughness properties of PLA while maintaining the overall biodegradability or decomposition of the polymer blend [0033].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the laminated film of Park ‘575 by setting an average molecular weight of the PHA within the claimed range, as taught by Krishnaswamy, in order to impart good physical and rheological properties to the PHA and to the laminated film. Furthermore, it is noted that Krishnaswamy teaches a range for the weight average molecular weight of the PHA which falls within the broadly claimed range of 30,000 to 1,000,000 g/mol. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claims 1, 5, 6, 8, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Park ‘742 (KR 102388742, cited on IDS and ISR, machine translation previously provided) in view of Grenmark et al. (US 2023/0182989, previously cited).
Regarding claims 1 and 14, Park ‘742 teaches an eco-friendly packaging material (1; laminate) comprising a paper layer (11), a film layer (12), and an adhesive layer (13) between the paper layer and the film layer ([0068], Fig. 1). The film layer may include polyhydroxyalkanoate (PHA), polylactic acid (PLA), and the like ([0032]), wherein the PHA is necessarily either a homopolymer or a copolymer including different first and second repeat units.
The thickness of the packaging material may be 50 µm to 250 µm, while the thickness of the film layer is preferably 20 µm to 140 µm ([0117]-[0118]). The thickness of the film layer is therefore less than 75% of the total thickness of the laminated film (e.g., 20 µm / 50 µm = 40%, and 140 µm / 250 µm = 56%). Further, the film layer thickness overlaps the claimed range of 8 to 70 µm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Park ‘742 teaches that the paper layer may have a biocarbon content of 80% to 100% and a basis weight of 30 g/m2 to 250 g/m2 ([0060]), the reference does not expressly teach a tensile strength or a tear strength of the paper layer.
However, in the analogous art of packaging materials, Grenmark et al. teaches a laminated strip of strong paper used for wrapping and enclosing goods, such as food items ([0008], [0112]-[0114]). Grenmark et al. teaches that the surface weight of the paper may be selected in dependence on the tensile strength to which the bag will be exerted when in use, where paper used as the material of the bag because it is biodegradable and environmentally friendly ([0248]-[0249]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the packaging material of Park ‘742 by adjusting the tensile strength and tear strength of the paper layer, such as to a value within the claimed range, as suggested by Grenmark et al. One of ordinary skill in the art would be motivated to determine optimum values for the tensile and tear strength properties of the paper layer in order to ensure that the packaging material of Park ‘742 has sufficient strength necessary for use in a particular application, e.g., depending on the size and/or weight of the products that will be contained therein.
Regarding claim 5, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Park ‘742 further teaches that the film layer may have a total biocarbon content of at least 20%, preferably 30% to 80% ([0093]), which overlaps the claimed range of 40% or more. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 6, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Park ‘742 further teaches that the packaging material has an oxygen barrier of 1 cc/m2-day or less, and a moisture barrier of 0.5 cc/m2-day to 1.5 cc/m2-day ([0053], [0075], [0156]), which overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 8, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above, and Park ‘742 further teaches that the film layer may include at least one selected from PBAT, PBS, PLA, PHA, TPS, Bio-PE, PCL, and the like [0032].
Regarding claim 11, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. As noted above, although Park ‘742 teaches that the paper layer has a basis weight of 30 g/m2 to 250 g/m2 ([0060]), which falls within the claimed range, the reference does not expressly teach a tensile strength or a tear strength of the paper layer.
However, Grenmark et al. teaches a laminated strip of strong paper used for wrapping and enclosing goods, such as food items ([0008], [0112]-[0114]). Grenmark et al. teaches that the surface weight of the paper may be selected in dependence on the tensile strength to which the bag will be exerted when in use, where paper used as the material of the bag because it is biodegradable and environmentally friendly ([0248]-[0249]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the packaging material of Park ‘742 in view of Grenmark et al. and Okada et al. by adjusting the tensile strength and tear strength of the paper layer, such as to values within the claimed ranges, as suggested by Grenmark et al. One of ordinary skill in the art would be motivated to determine optimum values for the tensile and tear strength properties of the paper layer in order to ensure that the packaging material of Park ‘742 has sufficient strength necessary for use in a particular application, e.g., depending on the size and/or weight of the products that will be contained therein.
Regarding claim 12, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Park ‘742 teaches that the adhesive layer serves to adhere the paper layer and the film layer ([0114]), but does not expressly teach a peel strength of the laminate. It would, however, have been obvious to one of ordinary skill in the art to set the peel strength between the paper layer and the film layer to within the claimed range, such as by selecting an appropriate material and/or coating amount of the adhesive layer, in order to prevent delamination between the layers of the packaging material.
Regarding claim 13, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Park ‘742 teaches that the packaging material has a high biocarbon content in order to reduce the raw material carbon dioxide emissions and so that the packaging material is biodegradable [0043]. In particular, the paper layer has a biocarbon content of 80% to 100%, and the film layer has a biocarbon content of 30% to 80% ([0060], [0093]).
The adhesive layer may include a polyolefin, polyurethane, polyvinyl alcohol, acryl, ethylene vinyl acetate, or epoxy, but is applied at a coating amount of 1 g/m2 to 8 g/m2 ([0113], [0115]). Given that the paper layer has a basis weight of 30 g/m2 to 250 g/m2, the film layer has a thickness of 10 µm to 250 µm, and the total thickness of the packaging material is 50 µm to 250 µm ([0060], [0117]-[0118]), the packaging material is composed primarily of the materials of the paper layer and the film layer and includes a relatively small amount of adhesive material. The packaging material would therefore be expected to have a biocarbon content within the broadly claimed range of 25% or more.
Claims 3, 4, 9, 10, 15, 17, and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Park ‘742 (KR 102388742, cited on IDS and ISR, machine translation previously provided) in view of Grenmark et al. (US 2023/0182989, previously cited) as applied to claim 1 above, and further in view of Okada et al. (US 2024/0391225, previously cited).
Regarding claims 3, 4, 9, 15, 17, and 19-22, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Although Park ‘742 teaches that the film layer may include at least one selected from polyhydroxyalkanoate (PHA), polylactic acid (PLA), and the like ([0032]), the reference does not expressly teach that the PHA is a homopolymer or copolymer comprising repeat units derived from the monomers specified in claims 4, 9, 15, 17, and 19-22, or that the PHA is a copolymer comprising first and second repeat units present in the amounts specified in claims 3 and 4.
However, in the analogous art of biopolymer films, Okada et al. teaches a laminated article comprising a substrate layer and a sealant layer, wherein the substrate layer is paper and the sealant layer is formed from polyhydroxyalkanoate resin [0008]. Similar to Park ‘742, Okada et al. teaches that the laminated article may be used to form a packaging material, wherein the materials of the substrate layer and sealant layer are chosen to achieve excellent biodegradability ([0004], [0006], [0008]). Okada et al. teaches that the PHA resin of the sealant layer preferably contains 50 mol% or more of 3-hydrohyalkanoate structural units, in particular 3-hydroxybutyrate (3HB), preferably in combination with other structural units ([0027], [0030]-[0031], [0033]). Examples of the PHA resin include P3HB (homopolymer), P3HB3HV, P3HB3HH, and P3HB4HB (copolymer), where the ratio between the constituent monomers can be varied to change the melting point and crystallinity and to adjust the physical properties such as Young’s modulus and heat resistance [0032]. The use of a PHA copolymer such as P3HB3HH allows for the laminated article to be heat sealed at a relatively low temperature in order to prevent the substrate from discoloring due to heat during heat sealing [0032].
Given that Park ‘742 teaches that the film layer may be heat sealed when used in pouch-type packaging materials ([0105]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the packaging material of Park ‘742 in view of Grenmark et al. by using a PHA homopolymer such as P3HB or a PHA copolymer formed of 3HB as a first repeat unit and 3HV, 3HH, or 4HB as a second repeat unit in the claimed amounts to form the film layer, as taught by Okada et al., in order to enable the packaging material to be heat sealed at a relatively low temperature to prevent the paper layer from discoloring during heat sealing.
Regarding claim 10, Park ‘742 in view of Grenmark et al. teaches all of the limitations of claim 1 above. Although Park ‘742 teaches that the film layer may include a polyhydroxyalkanoate (PHA) ([0032]), the reference is silent to an average molecular weight of the PHA.
However, in the analogous art of biopolymer films, Okada et al. teaches a laminated article comprising a substrate layer and a sealant layer, wherein the substrate layer is paper and the sealant layer is formed from polyhydroxyalkanoate resin [0008]. Similar to Park ‘742, Okada et al. teaches that the laminated article may be used to form a packaging material, wherein the materials of the substrate layer and sealant layer are chosen to achieve excellent biodegradability ([0004], [0006], [0008]). Okada et al. teaches that the weight-average molecular weight of the PHA resin component is preferably from 10x104 to 150x104 in order to achieve the desired mechanical properties and heat sealability ([0035]-[0036]).
Given that Park ‘742 teaches that the film layer may be heat sealed when used in pouch-type packaging materials ([0105]), it have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the packaging material of Park ‘742 in view of Grenmark et al. by setting a weight-average molecular weight of the PHA within the claimed range, as taught by Okada et al., in order to obtain the desired mechanical properties and heat sealability of the laminate. Furthermore, ti is noted that Okada et al. teaches an average molecular weight of the PHA which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Response to Arguments
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see page 5 of the remarks filed January 2, 2026, have been fully considered but they are not persuasive.
With respect to Park ‘575 and Park ‘742, the Applicant argues that the film layers of Park ‘575 and Park ‘742 employ polyolefin materials, such that the laminates disclosed in these references would not have the claimed tensile strength or tear strength as set forth in the claims.
This argument is not persuasive, as the argument is not commensurate in scope with the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a tensile strength or a tear strength of the laminate) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Although claim 1 sets forth limitations directed to the tensile strength and tear strength of the paper layer, the claim does not recite any limitations on the tensile strength or tear strength of the laminate.
With respect to the Applicant’s argument that the film layers of Park ‘575 and Park ‘742 actually employ polyolefin materials, such as polyethylene and polypropylene, it is noted that Park ’575 and Park ‘742 each disclose a variety of different materials which can be used for the film layer, including polylactic acid (PLA), polyhydroxyalkanoate (PHA), bio-based polyethylene (bio-PE), and bio-based polypropylene (bio-PP), among others (Park ‘575, [0037]; Park ‘742, [0032]). The PHA materials disclosed by Park ‘575 and Park ‘742 read on the polyhydroxyalkanoate (PHA) in the claimed film layer.
With respect to the secondary reference to Krishnaswamy, used in combination with Park ‘575, the Applicant argues that Krishnaswamy does not use any paper substrate.
This argument is not persuasive. First, it is noted that Krishnaswamy is applied in the prior art rejections as a secondary reference only to address the limitations directed to the PHA in the film layer, while the primary reference to Park ‘575 teaches the structure of the laminate comprising a paper layer and a film layer. However, as explained in the rejections above, Krishnaswamy does also teach a similar biodegradable laminate structure in which the PLA/PHA polymer blend is co-extruded or coated onto a paper layer [0039].
With respect to the secondary reference to Grenmark et al., used in combination with Park ‘742, the Applicant argues that Grenmark relates to a system or container for transporting goods and mentions a biodegradable intermediate material and its tensile strength, but that its structure is entirely different from that of the claimed laminate including a PHA-based film layer and a paper layer.
This argument is not persuasive. Similar to the above, it is noted that Grenmark et al. is applied in the prior art rejections as a secondary reference only to address the limitations directed to the tensile and tear strength of the paper layer, while the primary reference to Park ‘575 teaches the structure of the laminate comprising a paper layer and a PHA-based film layer. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Nevertheless, it is noted that Grenmark et al. does teach a packaging material, such as a bag, having a similar structure to that of the claimed laminate, in which a polymer membrane layer comprising a biodegradable plastic such as PHA is coated or extruded onto a paper layer ([0278], [0280]-[0282]). The teachings of Grenmark et al. relied upon to render obvious the claimed tensile and tear strength of the paper layer are therefore reasonably applicable to the eco-friendly packaging of Park ‘742.
Conclusion
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785