Detailed Action
The communications received 07/07/2026 have been filed and considered by the Examiner.
Claims 1-29 and 31 are pending.
Claims 29 and 31 are withdrawn.
Election/Restrictions
Applicant’s election of Group I claims 1-28 in the reply filed on 07/07/2026 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Claims 29 and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected barrier paper produced according to a method and a package, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2026.
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 4, 8-9, 11-12, 14-17, 19-21, 23, and 28 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 4, 9, 11-12, 14-17, and 28 the phrases "particularly" and “in particular” render the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination they are understood to mean “optionally”.
Regarding claims 8-9, 14, 19-21, 23, and 28 the phrase “preferably” render the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination they are understood to mean “optionally”.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 10, 12, and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hartmann et al (US 2013/0330527) hereinafter HAR.
As for claim 1 HAR teaches:
A barrier paper [Abstract] comprising at least
A base paper (paper or paperboard) [Abstract]
At least one coating colour layer S1 applied directly or indirectly to the base paper (first water vapor layer which can have a pigment) [Abstract; 0048],
At least one barrier layer B1 applied directly or indirectly to the S1 layer (biopolymer layer, which has barrier properties) [Abstract; 0050],
A coating B2 applied directly or indirectly to the B1 layer (a second water vapor barrier layer) [Abstract].
As for claim 2, HAR teaches claim 1 and that the S1 layer includes water vapour barrier properties [Abstract].
As for claim 3, HAR teaches claim 1 and that the S1 layer includes at least one water-soluble/dispersible polymer (latex, polysaccharides, polyvinyl alcohol, nitrocellulose) [0042-43].
As for claim 4, HAR teaches claim 3 and that the water-soluble/dispersible polymer is polyvinyl alcohol and/or nitrocellulose [0043].
As for claim 10, HAR teaches claim 3 and mixtures [0043].
As for claim 12, HAR teaches claim 1 and that the barrier layer consists of metals (titanium dioxide, zinc oxide, silica) [0054].
As for claim 15, HAR teaches claim 1 and that the coating B2 comprises a polymer which includes (the second water vapor composition is formed from the same composition as the first, this includes polyolefins, polyvinyl alcohol, nitro-cellulose, which is a bio-based polymer, polyesters which are non-biobased polymers, styrene-butadiene copolymer latexes which form latices, acrylate latices) [0011; 0041-44].
As for claim 16, HAR teaches claim 1 and the B2 coating provides sealable, additional barrier property, and water and moisture resistance (as a water vapor barrier) [0048-49].
As for claim 17, HAR teaches claim 1 and it is understood that by default there will be at least some buckling resistance of at least one barrier property.
As for claim 18, HAR teaches claim 1 and as the pigment are clay based it is understood that they can be removed [0048].
As for claim 19, HAR teaches claim 18 and it is understood that the limitations pertain to how the barrier paper is treated/used which does not further limit the barrier paper [MPEP 2114-2115].
As for claim 20, HAR teaches claim 1 and that the first layer can include a calcium carbonate in combination with a polymeric binder [0044]. Therefore a precoat can merely be construed as a layer that is applied before the rest of the layer is applied and in this manner the precoat can merely be a layer applied as one of the at least two layers applied to form one layer. In addition, the precoat can be understood to be the first water vapor barrier, S1 can be one of the first biopolymer layers applied, B1 can be the second barrier layer applied, and S1 can be the second water vapor barrier layer applied especially as the biopolymer layer can also be a color layer as it includes pigments [0010].
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.
Claim(s) 14, 21-22, and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR.
As for claim 14, HAR teaches claim 1 and the barrier layer is applied to produce a dry coat weight of 2 g/meters squared or less [0036] which would result in a layer that overlapped in thickness of greater than or equal to 5 nm especially as the pigment can have sizes up to 2 um which with one deposition of a particle would result in a thickness greater than 5 nm [0048-49;0054-55].
As for claim 21, HAR teaches claim 1 and that the basis weight of the coating colour layer and the coating B2 is 1-10 g/meters squared which overlaps the claimed range [0034].
As for claim 22, HAR teaches claim 1 and is silent to halogenated organic compounds as required components.
As for claim 26-28, HAR teaches claim 1 but fails to teach the tan Delta of the dynamic mechanical thermal analysis of the barrier paper however, the Examiner notes that the barrier paper has a similar composition as claimed by applicant, (i.e. the composition of layers) which would result in the claimed property (the tan Delta of the dynamic mechanical thermal analysis of the barrier paper, the temperature differences, and the like). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the barrier paper product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
25. Claim(s) 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Fernandez Alex et al (WO 2015040015A2 refer to the supplied English translation) hereinafter FER.
As for claims 5-9, HAR teaches claim 3 but fails to teach that the polyvinyl alcohol would be saponified.
FER teaches a coating composition usable in paper [1-3] and which employs a partially saponified polyvinyl alcohol which is saponified to a degree of 83-97% and has a molecular weight of 10,000 – 250,000 g/mol (Daltons) [33-34] both of which overlap the claimed ranges and a viscosity in the range of 10-150 mPa-s which overlaps the claimed range [34]. These polyvinyl alcohols contribute to good binder properties [9-11].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the saponified polyvinyl alcohol of FER as the polyvinyl alcohol of HAR as the polyvinyl alcohol of FER contributes to good binder properties.
For claims 5-8 the Examiner notes that the saponified polyvinyl alcohol has a similar composition as claimed by applicant, (i.e. degree of saponification and molecular weight) which would result in the claimed property (temperature). The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the saponification polyvinyl alcohol product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Okamoto et la (US 2019/0308786) hereinafter OKA.
As for claim 11, HAR teaches claim 1 but fails to teach a surface tension.
OKA teaches coating used to form paper barrier layers (15-60 mN/m which overlaps the claimed range) [Abstract; 0083-84]. This surface tension is useful in a helping to improve the uniformity of the barrier layer [0082].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the surface tension amounts of OKA for the coating color layer of S1 of HAR in order to improve the uniformity of the barrier layer. As both OKA and HAR pertain to paper barrier. They are analogous art and one of ordinary skill in the art expects success in the combination.
25. Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Rasetto et al (US 2022/0275582) hereinafter RAS.
As for claim 13, HAR teaches claim 1 but fails to teach vacuum deposition.
RAS teaches that one option of applying a layer onto a barrier layer which includes a metal (of which the pigments in HAR are) includes vacuum deposition [0060]. The vacuum deposition can reach adequate barrier performance [0004].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the vacuum deposition method of RAS to impart the layer of HAR as this is a means of achieving adequate barrier performance. As HAR and RAS both pertain to barrier substrates they are analogous art and one of ordinary skill in the art expects success in the combination.
25. Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Saiki et al (US 2019/0039357) hereinafter SAI.
As for claim 23, HAR teaches claim 1 but fails to teach a basis weight.
SAI teaches that a usable product that incorporates a barrier paper can have the paper base of the barrier layer include a basis weight of 300 g/meters squared or less which overlaps the claimed range [Abstract; 0029]. As basis weight of below this amount achieves resource saving, weight reduction and cost reduction [0004].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the basis weight of SAI as the basis weight of the paper of HAR in order to achieve resource saving, weight reduction and cost reduction. As both HAR and SAI pertain to barrier papers they are analogous art and one of ordinary skill in the art expects success in the combination.
25. Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Zitturi et al (US 2014/0137880) hereinafter ZIT.
As for claim 24, HAR teaches claim 1 but fails to teach the amounts of long and short fiber.
ZIT teaches that when making barrier paper [Abstract] that one key parameter to adjust is the amount of long fiber compared to short fiber used as this determines the oil resistance of the resultant barrier [0059] however this is weighed against the costs of long fiber and relative improvement of oil resistance against the cheaper short fiber. Therefore the short and long fibers are routinely optimized variables.
In accordance with the MPEP "[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) [MPEP: 2144.05(II)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to range of short fibers and long fibers as claimed as the long fibers and short fibers are derived via routine experimentation and therefore the ranges are obvious.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over HAR in view of Bras et al (US 2023/0405983) hereinafter BRA.
As for claim 25, HAR teaches claim 1 but fails to teach that the base paper comprises up to 90% recycled fibers.
BRA teaches that one acceptable pulp to use for base papers in multiplayer packaging with barrier properties is recycled pulp which falls within the range of 90% as 100% (entirely of) [Abstract; 0033].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used recycled pulp to entirely form the base paper of HAR as BRA teaches that this is a pulp capable of accomplishing the task of forming a barrier paper. As both HAR and BRA pertain to multilayer barrier papers they are analogous art and one of ordinary skill in the art expects success in the combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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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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/E.V./Examiner, Art Unit 1748
/RITA P ADHLAKHA/Primary Examiner, Art Unit 1711
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