DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of claims 1-6 in the reply filed on 8 April 2026 is acknowledged.
Claim Objections
Claims 1, 3 and 6 are objected to because of the following informalities.
Claim 1 recites, in line 23, “4 g/m2/10 min to about 16 g/m2/10 min.” The bolded portion of the units used for the melt flow index is not appropriate. For measuring the melt flow index of a material units of “g/10 min” is traditionally used. This is the case in test method ASTM D1238. To further prosecution, the examiner is interpreting the intent of the applicant was to recite this portion of the claim as “4 g/10 min to about 16 g/10 min” and will be examined on the merits as such.
Claim 1 recites, in line 37, “peaks from about 59°C. to about 100°C;” which appears to contain a typographical error. The examiner suspects the intent of the applicant was to have this portion of the claim recite “peaks from about 59°C to about 100°C;” and will be examined on the merits as such.
Claim 3 ends with improper punctuation “;”. The claim should end in a period.
Claim 6 recites, in line 7, “…one or more of (Pyro-) phosphate, Benzene” which appears to contain grammatical/typographical errors. The examiner suspects the intent of the applicant was to have this portion of the claim recite “…one or more of pyrophosphate, benzene” and will be examined on the merits as such.
Claim 6 recites, in line 8, “sulfonyl, and ethylene diamino;” which appears to contain a typographical error. Upon review of the originally filed specification (paragraph [0094] from US 2014/0272352 – Pre Grant Publication of the oldest parent case of the instant application), pyrophosphate, benzene sulfonyl, and ethylene diamino are described as functional coupling groups added to thermoplastic. Therefore, for more concise claim language, the examiner suspects the intent of the applicant was to have this portion of the claim recite “sulfonyl, and ethylene diamino functional coupling groups;” and will be examined on the merits as such.
Claim 6 recites, in line 9 and 12, “thermo-plastics” in two different instances, which appears to contain a typographical error. The examiner suspects the intent of the applicant was to have this portion of the claim recite “thermoplastics” and will be examined on the merits as such.
Claim 6 recites, in the last line “wherein said wherein said plurality…” which appears to be a typographical error. The examiner suspects the intent of the applicant was to have this portion of the claim recite “wherein said plurality…” and will be examined on the merits as such.
Appropriate corrections are required.
Specification
The disclosure is objected to because of the following informalities: On page 2 of the specification, paragraph [0013] recites "...a physical melt flow index from about 4 g/m²/10 min to about 16 g/m²/10 min." The bolded portion of the units used for the melt flow index is not appropriate. For measuring the melt flow index of a material units of "g/10 min" is traditionally used. This is the case in test method ASTM D1238. Furthermore, the examiner notes the use of the "g/10 min" units for the melt flow index in a separate part of the specification. Please see the 5th and 6th lines from paragraph [0057] on page 9 from the specification, as originally filed in the instant application.
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 1-6 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.
Claim 1 recites, in line 8, “a plurality of mineral nano-particles that are about 100 nm or less in size.” There is no support in the Pre-Grant Publication (US 2014/0272352) of the oldest parent case for the instant application (hereinafter “originally filed disclosure” or “OFD”) for this limitation. The examiner notes there is support for nano-precipitated calcium carbonate which has a size of less than 100 nm. See paragraph [0087] from the OFD. However, this fails to provide sufficient support for: (1) the range being 100 nm or less; and (2) the particle size corresponding to all of the materials listed in the next paragraph, minus the precipitated calcium carbonate.
Claim 1 recites, in lines 30-31, “said one or more polymer bonding agents have crystallinity from about 40% to about 60%.” There is no support in the OFD for this limitation. The examiner notes there is support for the polymer bonding agent(s) of the mineral-containing layer having a crystallinity from about 60% to about 85%, which fails to provide support for the limitation in question. See paragraph [0022] from the OFD.
Claim 2 recites, in the body of the claim: “wherein said crystalline content of said polymer matrix is about 40% to about 70%, and wherein said crystalline content includes: (i) nano-fibrils; (ii) micro-fibrils; (iii) non-fibril bundles having lateral dimensions from about 4 nanometers (nm) to about 30 nm; (iv) highly crystalline nano-whiskers from about 100 nm to about 1,000 nm, with fiber widths from about 3 nm to about 15 nm, having charge densities from about 0.5 meq/g to about 1.5 meq/g; and (v) a nano-cellulose having a stiffness from about 140 GPa to about 220 GPa and a tensile strength from about 400 MPa to about 600 MPa.” There is no support for this limitation in the OFD. The examiner notes it appears support for this limitation came from paragraph [0056] from the OFD; however, this portion of the specification does not support: (1) a crystalline content of the polymer matrix ranging from about 40 to about 70%; and (2) the material of the crystalline content includes elements (i) – (v) from the claim. The OFD teaches (in paragraph [0056]) the components from the claim are directed to a nano-cellulose material contained within a fiber-containing layer, where the claimed mineral-containing layer is disclosed as being applied onto the fiber-containing layer (see paragraphs [0019] and [0056] from the OFD). However, the claims do not reference a fiber-containing layer. Therefore, the limitations from claim 2 are directed to a component not described in the claims.
Similarly, claim 3 recites, in the body of the claim: “wherein said crystalline content of said polymer matrix is about 40% to about 70%, and wherein said crystalline content includes: (1) a nano-cellulose with fiber widths that are from about 3-5 nm to about 5-15 nm, having charge densities from about 0.5 meq/g to about 1.5 meq/g, and with a stiffness from about 140-220 GPa, and with a tensile strength from about 400-600 MPa; (2) nano-fibrils; (3) micro-fibrils; (4) nanofibril bundles, having lateral dimensions from about 0.4 nm to about 30 nm to over several microns; and (5) highly crystalline nano-whiskers from about 100 nm to 1000 nm;” There is no support for this limitation in the OFD. The examiner notes it appears support for this limitation came from paragraph [0098] from the OFD; however, this portion of the specification does not support: (1) a crystalline content of the polymer matrix ranging from about 40 to about 70%; and (2) the material of the crystalline content includes elements (1) – (5) from the claim. The OFD teaches (in paragraph [0098]) the components from the claim are directed to a nano-cellulose material used within a mineral-containing composite layer, where the nano-cellulose material is disclosed as having a crystalline content from about 40%-70%, and includes elements (1) – (5). Therefore, to further prosecution, the examiner suggests amending the body of claim 3 to recite: “wherein the mineral containing layer comprises a nano-cellulose having a from about 40% to about 70%, and wherein said nano-cellulose includes: (1) (3) micro-fibrils; (4) nanofibril bundles, having lateral dimensions from about 0.4 nm to about 30 nm to over several microns; and (5) highly crystalline nano-whiskers from about 100 nm to 1000 nm[[;]].”
Claim 3, in line 3, also recites “…fiber widths that are from about 3-5 nm to about 5-15 nm.” There is no support for this limitation in the OFD. The examiner notes it appears support for this limitation came from paragraph [0098] and claim 14 from the OFD; however, these portions of the OFD only provide support for “fiber widths are from about 3-5 nm and from about 5-15 nm” and “fiber widths from about 3 nm to about 15 nm”, respectfully. The examiner recommends changing the limitation in question to “…fiber widths are from about 3 nm to about 15 nm” which would overcome this rejection.
Claim 4 recites “said plurality of mineral particles comprise diatomaceous earth; wherein said plurality of mineral particles have densities from about 2.4 g/cm3 to about 4.9 g/cm3 and particle sizes from about 100 nm to about 10 µm.” There is no support for the totality of the scope of the claim. While it is noted that the OFD generally teaches mineral particle densities within the polymer matrix of the mineral containing layer may be from about 2.4 g/cm3 to about 4.9 g/cm3 (see paragraph [0006] from the OFD), the OFD fails to teach the broadly disclosed plurality of mineral particles has particle sizes from about 100 nm to about 10 µm. The examiner notes this particular range of particle sizes are directed to the diatomaceous earth embodiment. See paragraph [0056] and claim 7 from the OFD. Therefore, the examiner recommends changing the limitation in question to “said plurality of mineral particles comprise diatomaceous earth; wherein said diatomaceous earth has a density from about 2.4 g/cm3 to about 4.9 g/cm3 and particle sizes from about 100 nm to about 10 µm” which would overcome this rejection.
Claim 6 recites, in line 14: “(i) adhesion to one or more fibers.” There is no support for this limitation in the OFD. The examiner notes it appears support for this limitation came from paragraph [0094] from the OFD; however, this portion of the OFD only provides support for “adhesion to fibers.”
Claim 5 is included in this rejection based on its dependency from 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 2, 3 and 6 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.
Claims 2 and 3 each recite the limitation "said crystalline content of said polymer matrix" in line 1 from each claim respectfully. There is insufficient antecedent basis for this limitation in the claim. There is no reference to a crystalline content for the polymer matrix recited in claim 1, the claim from which each of claims 2 and 3 depend.
The term “highly crystalline” in claims 2 and 3 is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In other words, it is not clear how high the degree of crystallinity must be in order for the nano-whiskers to be classified as being highly crystalline or not.
Claim 3 recites, in line 3, “… fiber widths that are from about 3-5 nm to about 5-15 nm.” However, this portion of the claim is indefinite because it is unclear whether: (1) the “3-5” is an indication of the lower limit of the range, with “5-15” being an indication of the upper limit of the claimed range; or (2) this is a recitation of two completely separate ranges. The examiner recommends amending claim 3 in the same manner as detailed above, with regards to the 35 USC § 112(a) rejection of claim 3.
Claim 3 recites, in element (4) “nanofibril bundles, having lateral dimensions from about 0.4 nm to about 30 nm to over several microns.” First, the term “several” in claim 3 is a relative term which renders the claim indefinite. The term “several” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant application fails to positively identify how many elements are required which may classify said element as being present in the quantity of “several.” Merriam-webster.com defines several as “more than one” or “more than two but fewer than many.” Therefore, the scope of the claim is not clear because this relative term fails to concisely define the metes and bounds of the claims. Second, the range in bold fails to concisely define the upper limit of the lateral dimension. In other words, it is not clear if the upper limit is “about 30 nm” or “over several microns.” Third, the term “over several microns” is indefinite because it fails to establish a concise upper limit to the claimed range, which appears to be scope attempting to be conveyed.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “from about 0.4 nm … to over several microns,” and the claim also recites “from about 0.4 nm to about 30 nm” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6 recites, in the last line, “…wherein said plurality of mineral nano-particles are from 0.01 to 0.25 microns.” However, this portion of the claim is indefinite because the claim does not define the parameter which requires the 0.01 to 0.25 micron range. Upon review of the OFD, specifically paragraph [0094], it appears the claimed range is directed to a particle size of nano-particles. Therefore, the examiner recommends changing the limitation in question to “…wherein said plurality of mineral nano-particles have a particle size
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.
Claim 4 is 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.
Claim 4 contains an embodiment which excludes particle sizes ranging from “about 100 nm or less (for the plurality of mineral nano-particles from the plurality of mineral particles)” and “from about 0.06 microns to 0.10 microns (for the plurality of ultrafine mineral nanoparticles from the plurality of mineral particles).” That is, claim 4 recites “said plurality of mineral particles have … particle sizes from about 100 nm to about 10 µm.” Claim 1, the claim from which claim 4 depends, requires “[the] plurality of mineral particles comprise: (i) a plurality of mineral nano-particles that are about 100 nm or less in size and (ii) a plurality of ultrafine mineral nano-particles ranging in size from about 0.06 microns to 0.10 microns.” As such, claim 4 is inconsistent with claim 1, and, indeed contradicts claim 1. See Multilayer, 831 F.3d at 1362 (“A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid.”) (citing 35 U.S.C. §112(d) (requiring that “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” (emphasis added)). Other cases have held claims invalid under pre-AIA 35 U.S.C. § 112, fourth paragraph for claiming subject matter that was “non-overlapping” with the claim from which it depended. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1391-92 (Fed. Cir. 2006); see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (noting that a dependent claim can be invalid for failing to comply with pre-AIA 35 U.S.C. § 112, fourth paragraph).
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.
Allowable Subject Matter
Claims 1-6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. §§112(a), (b) and (d) as set forth in this Office action.
The reasons for the indication of allowable subject matter.
The closest prior art of record US 2009/0047511, US 2010/0137493, US 2005/0115690, US 2013/0323504, US 2013/0068419, US 2009/0142528, US 2009/0047525, US 2004/0127614, US 2004/0249046, USPN 8,889,228, USPN 6,183,814, USPN 6,416,620, USPN 6,231,970, USPN 6,258,308, USPN 6,143,819, USPN 5,928,741, USPN 5683772, and USPN 3,911,191 while broadly teaching the limitations of the presently claimed invention, do not teach or suggest the combination of limitations as presently claimed in claim 1. Specifically, none of US 2009/0047511, US 2010/0137493, US 2005/0115690, US 2013/0323504, US 2013/0068419, US 2009/0142528, US 2009/0047525, US 2004/0127614, US 2004/0249046, USPN 8,889,228, USPN 6,183,814, USPN 6,416,620, USPN 6,231,970, USPN 6,258,308, USPN 6,143,819, USPN 5,928,741, USPN 5683772, and USPN 3,911,191 when considered alone or in combination teach or reasonably suggest a barrier layer of a packaging or container comprising: a mineral containing layer comprising a polymer matrix, one or more coupling agents, and a crystalline content that comprises a mixture of crystalline, semi-crystalline, and amorphous structures; wherein said polymer matrix comprises a plurality of mineral particles and one or more polymer bonding agents; wherein said plurality of mineral particles comprise: (i) a plurality of mineral nano-particles that are about 100 nanometers or less in size and (ii) a plurality of ultrafine mineral nano-particles ranging in size from about 0.06 microns to 0.10 microns; wherein said plurality of mineral nano-particles are selected from the group of minerals consisting of: wollastonite (hydrated and non-hydrated); magnesium silicate; barium sulfate; barium ferrite; magnesium hydroxide; magnesium carbonate; aluminum trihydroxide; magnesium carbonate; natural silica or sand; cristobalite; diatomite; novaculite; quartz tripoli clay calcined; muscovite; nepheline-syenite; feldspar; calcium sulfate-gypsum; terra alba; selenite; domite; silicon mica; hydrated aluminum silicates; coke; montmorillonite (MMT); attapulgite (AT) carbon black; pecan nut flour; cellulose particles; wood flour; fly ash; starch; titanium dioxide (TiO2); barium carbonate; terra alba; selenite; nepheline-syenite; muscovite; pectolite; chrysotile; borates; sulfates; and precipitated and ground calcium carbonate; wherein the one or more polymer bonding agents have a physical melt flow index from about 4 g/10 min to about 16 g/10 min; wherein said plurality of mineral particles are dispersed within said one or more polymer bonding agents; wherein said one or more polymer bonding agents have a molecular weight (Mz) from about 150,000 to about 300,000; wherein a polymer content weight of said barrier layer is from about 3.5 lbs/3 msf to about 50 lbs/3 msf; wherein said one or more polymer bonding agents have crystallinity from about 40% to about 60%; wherein said one or more coupling agents are from about 0.05% to about 15% by weight of said mineral containing layer; wherein said mineral containing layer contains from about 0.5% to about 10% plastomers and elastomers with densities from about 0.86 g/cm3 to about 0.89 g/cm3; wherein said mineral containing layer has a differential scanning calorimetry (DSC) melting peaks from about 59°C to about 110°C; wherein said mineral containing layer has molecular weight ranges (Mw) from about 10,000 to about 100,000; wherein about 10% to about 70% of said mineral containing layer has a branching index (g′) of about 0.99 or less as measured at a Z-average molecular weight (Mz) of said one or more polymer bonding agents; and wherein said one or more polymer bonding agents have an isotactic run length from about 1 to about 40 per DCS method.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Veronica Ewald can be reached at (571) 272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
Prosecution Insights