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Claims 20-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/17/2026.
Applicant's election with traverse of Claims 1-19 and 39-40 in the reply filed on 03/17/2026 is acknowledged. The traversal is on the ground(s) that the present method claims do not require a specific order of the recited steps, and therefore the reordered steps in the requirement for restriction do not constitute a materially different process. This is not found persuasive because Claim 20, line 9, reads "attaching a polymer layer to the second surface of the inner paper layer" and the second surface of the inner paper layer is defined in lines 6-7 as opposite the first surface of the inner paper layer, which in turn is defined as facing the second surface of the outer paper layer. Therefore, the step as recited in line 9 cannot occur until the paper layers have been laminated to one another as in line .
Applicant further argues that there would be no serious burden to the examiner, if restriction were not required.
However, the examiner has established that there would be a serious burden to search as set forth in paragraph 3 of the Restriction Requirement mailed 2/20/2026.
The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-10, and 17-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 7-10 of co-pending Application No. 18/882048. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claims 1-4, 6-8, and 17-19, co-pending ‘048 claims a recyclable, paper-based packaging article formed of a laminated web, comprising: a first paper ply; a second ply; and a first adhesive layer disposed between the first paper ply and the second ply, the first adhesive layer securing the first paper ply and the second ply (Claim 1); wherein the second ply comprises a polymer film layer (Claim 9); and further comprising: a third paper ply; and a second adhesive layer disposed between the third paper ply and the first paper ply, the second adhesive layer securing the third paper ply to the first paper ply; and wherein the first paper ply and the third paper ply taken together comprise about 80% to about 99% of the total weight of the laminated web (Claim 7).
While, co-pending ‘048 does not recite the web is thermoformable as presently claimed, or that a surface of the third paper ply defines an exterior-facing surface of the laminated web and a surface of the second ply defines an interior-facing surface of the laminated web, co-pending ‘048 recites a web comprising all the limitations of the present claims including the materials as presently claimed, which would necessarily be thermoformable, and does not require additional layers outside of these surfaces, and therefore reads on embodiments wherein.
While co-pending ‘048 further claims the first adhesive layer is selectively applied in a predefined pattern to create non-adhesive regions between the first paper ply and the second ply, whereby air gaps are created between the first paper ply and the second ply; and claims a recyclable, paper-based packaging article formed of the laminated web (Claim 1), which is not recited in Present Claim 1, it is clear that the web of co-pending ‘501 falls within the broader web of the present claims, and therefore the claims are not considered patentably distinct.
Regarding Claim 9, co-pending ‘048 further claims the polymer material of the polymer film layer of the inner ply comprises a barrier coating (Claim 10).
Regarding Claim 10, co-pending ‘048 further claims the third paper ply may be the same or different from the first paper ply, formed of a paper having a basis weight in the range of from about 65 g/m2) to about 244.2 g/m2 (Claim 8).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-13, 16-19, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Larsson et al. (US 2018/0119358 A1).
Regarding Claims 1, 3, and 17-19, Larsson discloses a coated paper material comprising a paper substrate coated with a composition (para 0056). The paper substrate may comprise a top paper layer (i.e. inner paper layer) and a bottom paper layer (i.e. outer paper layer), and the top paper layer is coated with the composition (para 0057). The two paper layers are adhered to each other with an adhesive layer (i.e. first bonding layer (para 0059). The composition comprises an acrylic binder and forms a coating layer (i.e. polymer layer) (para 0007-0008, 0070). The coated paper is thermoformable (para 0118).
The grammage of the paper substrate (the combined grammage of the two paper layers) may be 80-550 g/m2 (para 0060), the grammage of the adhesive layer between the paper layers may be 2-35 g/m2 (para 0059), and the grammage of the coating layer may be 4-40 g/m2 (para 0058). No other layers are required. Therefore the two paper layers may together comprise 52-99 wt% (80/(80+35+40) to 550/(550+2+4)) of the coated paper material.
Since no additional layers are required, the surface of the bottom paper layer that is opposite the adhesive layer would define an exterior-facing surface as claimed, and the surface of the coating layer that is not facing the top paper layer would define an interior-facing surface as claimed.
In light of the overlap between the claimed article and that disclosed by Larsson, it would have been obvious to one of ordinary skill in the art to produce an article that is both disclosed by Larsson and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 2, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson does not disclose or require anything disposed between the adhesive layer and the two paper layers in the paper substrate (para 0059). Therefore it would have been obvious to use paper substrate having adhesive layer that is attached directly to the opposing surfaces of the two paper layers.
Regarding Claim 4, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson further discloses the coating layer may comprise two or more sublayers (para 0058).
Regarding Claim 5, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson does not disclose or require anything disposed between the top paper layer and the coating layer. Therefore it would have been obvious produce the coated paper material having coating layer that is attached directly to the top paper layer.
Regarding Claims 6-8, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson further discloses an embodiment wherein a barrier layer may be applied to the coating layer (para 0110). The barrier layer may comprise a polymer material (para 0112). In this embodiment, the barrier layer corresponds to the claimed polymer layer, and the coating layer corresponds to the claimed second bonding layer which is an adhesive layer, and which may attach directly to the top paper layer and the barrier layer.
Regarding Claim 9, Larsson discloses all the limitations of the present invention according to Claim 1 above, including the coating layer (i.e. polymer layer) which is a nonbarrier film layer as claimed.
Larsson further discloses an embodiment wherein a barrier layer may be applied to the coating layer (para 0110). In this embodiment, the barrier layer corresponds to the claimed polymer layer which is a barrier film layer as claimed.
Regarding Claim 10, Larsson discloses all the limitations of the present invention according to Claim 1 above, including the grammage of the paper substrate (the combined grammage of the two paper layers) may be 80-550 g/m2 (para 0060). The top paper layer and bottom paper layer, for instance, can have grammage of 150 g/m2 and 100 g/m2, respectively (paras 0249 and 0251).
Regarding Claim 11, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson further discloses a barrier layer (i.e. polymer layer) may be applied to the coating layer (para 0110). The barrier layer may comprise sublayers, such as a layer of EVOH, which is a gas barrier, sandwiched between two layers of polyolefin (para 0114).
Although Larsson does not disclose the film is coextruded, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Larsson meets the requirements of the claimed article, Larsson clearly meets the requirements of present claims.
Regarding Claim 12, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson further discloses the polyolefin sublayers of the barrier layer may be polyethylene (para 0114).
Regarding Claim 13, Larsson discloses all the limitations of the present invention according to Claim 11 above. Larsson further discloses the adhesive layer between the two paper layers may be a layer of polyethylene (i.e. polyolefin) (para 0059).
Although Larsson does not disclose the adhesive layer is extruded, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Larsson meets the requirements of the claimed article, Larsson clearly meets the requirements of present claims.
Regarding Claim 16, Larsson discloses all the limitations of the present invention according to Claim 1 above, including that the coated paper material is thermoformable (para 0118).
Although there is no disclosure in Larsson of depth of thermoformability, given that Larsson discloses coated paper material as presently claimed including paper layers, bonding layer, and polymer layer as presently claimed, it is clear that the coated paper material of Larsson would inherently have depth of thermoformability as presently claimed.
Regarding Claims 39-40, Larsson discloses all the limitations of the present invention according to Claim 1 above. Larsson further discloses a thermoformed blister back (i.e. packaging article) formed from the coated paper material (para 0126).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Larsson as applied to claim 11 above, and further in view of Fehlker (EP 4,265,405 A1).
Regarding Claims 14-15, Larsson discloses all the limitations of the present invention according to Claim 11 above. Larsson further discloses the adhesive layer between the two paper layers may be a layer of polyethylene (i.e. polyolefin) (para 0059).
Larsson does not disclose the adhesive layer between the two paper layers comprising barrier layer as claimed.
Fehlker discloses a multi-layered thermoformable packaging material for food packaging (para 0001) comprising a first and second paper layer and at least one polymer layer comprising water-soluble thermoplastic polymer between the first and second paper layers (para 0009). A functional layer comprising polyethylene and/or EVOH may be applied to the outside of one of the paper layers (paras 0040-0041). The water-soluble thermoplastic polymer between the first and second paper layers increases recyclability of the paper layers of the packaging material, while maintaining stability (para 0010), and is a biopolymer such as EVOH copolymers (para 0036).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Larsson to incorporate the teachings of Fehlker and produce the coated paper material of Larsson further comprising the water-soluble thermoplastic polymer layer of Fehlker, comprising EVOH copolymer, in between the two paper layers of Larsson, including between the top paper layer (i.e. inner paper layer) and the polyethylene adhesive layer. Doing so would increase recyclability of the paper layers of the packaging material, while maintaining stability.
Although Larsson in view of Fehlker does not disclose the water-soluble thermoplastic polymer layer and polyethylene adhesive layer are coextruded, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Larsson in view of Fehlker meets the requirements of the claimed article, Larsson in view of Fehlker clearly meets the requirements of present claims.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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