DETAILED ACTION
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over the patented claims of U.S. Patent Nos. 7,560,168; 12,030,286; 12,071,288; 12,090,734; 12,107,198; 12,269,240; 12,269,241; 12,371,236; 12,497,493; 12,502,877; 12,534,585; 12,539,657; 12,612,231; and 12,649,303 in view of Kaminaga (WO 2020/116544 A1), cited herein according to US PG Pub. No. 2021/0291501, which is an English language translation.
Claims 1-10 are also provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the copending claims of Application Nos. 18/127,344; 18/696,423; and 19/396,104, in view of Kaminaga.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented or copending claims of each reference recite a product explicitly including, inherently having, and/or rendering obvious due to overlapping numerical ranges (see MPEP 2144.05) each feature of instant claims 1-10 (in particular, each recites a gas barrier laminate including a plastic or polymer substrate, an anchor layer, a silica and/or alumina oxide deposition layer, and a coating layer corresponding in location and similar in composition to the recited “gas barrier coating layer”), with the exceptions of the patented claims not reciting one or more of a polypropylene-containing substrate or a coating layer (i.e. the instantly claimed “gas barrier coating layer”) of the instantly claimed thickness that exhibits the recited X-ray photoelectron spectroscopy (“XPS”) behavior. The patented claims also do not recite a packaging container and/or packaged product including a gas barrier laminate and sealant layer, as claimed, that is filled with contents.
However, the patented claims do recite that their claimed laminates include a resin or plastic substrate, a coating corresponding in location to the instantly recited “gas barrier coating layer” including a composition similar to that of the instant claims, and the recited intervening layers. Kaminaga further teaches a gas barrier laminate including a gas barrier coating layer, a thickness in the range of 0.05 to 5 µm (i.e. 50 to 5000 nm), that may be formed by combining solutions of a water-soluble polymer, such as polyvinyl alcohol (“PVA”), a first silicon compound comprising a silicon alkoxide compound, such as tetraethoxysilane (Si(OCH2H5)4; i.e. “TEOS”), and a hydrolysate thereof, and a second silicon compound, such as the silane coupling agent tris-(trimethoxysilylpropyl)isocyanurate (i.e. “1,3,5-tris(3-methoxysilylpropyl)isocyanurate” ) to form a cured composite coating comprising 15-50 wt. % of the water-soluble polymer, 40 to 70 wt. % of the first silicon compound and/or a hydrolysate thereof, and 1 to 15 wt. % of the second silicon compound (par. 247, 250, 252, 253, 255, 256, 262, 291), which, as discussed further in the rejections made under 35 U.S.C. 103 below, renders obvious (see MPEP 2144.05) a gas barrier coating with a composition meeting the requirements of the instant claims.
Kaminaga also teaches that his barrier laminate, which includes a polypropylene substrate, the just-discussed gas barrier coating, a sealant layer, and the instantly recited intervening layers advantageously has high transparency, bending resistance, and stretch resistance, does not generate harmful substances such as dioxins, and is useful in packaging materials that exhibit sufficient adhesion strength or sealing strength even after boiling and retort treatments (par. 293). Therefore, it would have been obvious to one of ordinary skill in the art to configure the gas barrier coating layer of the patented claims to include the composition and be of the thickness disclosed by Kaminaga, which meets or renders obvious (see MPEP 2144.05) the instantly claimed XPS, Si compound formula, and thickness requirements, and to make a packaged product comprising a packaging container filled with contents and including a packaging film comprising the above-discussed gas barrier laminate, wherein the resin substrate layer comprises polypropylene (i.e. a thermoplastic) and the gas barrier coating comprises Kaminaga’s just-discussed composition, and a sealant layer (as recited in the patented claims and disclosed by Kaminaga) because Kaminaga discloses that such barrier laminates beneficially have high transparency, bending resistance, and stretch resistance, do not generate harmful substances such as dioxins, and are useful in packaging materials, which are intended to house contents, that exhibit sufficient adhesion strength or sealing strength even after boiling and retort treatments.
As noted above, the rejections made in view of Application Nos. 18/127,344; 18/696,423; and 19/396,104 are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor regards as the invention.
Claim 1 is indefinite because it recites a “gas barrier laminate comprising: a substrate layer containing a thermoplastic resin, a deposition layer, and a gas barrier coating layer in this order” in lines 1-3. This portion of the claim is indefinite because it is unclear from the claim construction if the listed components are generally part of the “gas barrier laminate” or if the “substrate” contains all of “a thermoplastic resin, a deposition layer, and a gas barrier coating layer”. For the sake of compact prosecution, and because Figures 1 and 2 appear to show the deposition layer (3) and gas barrier coating layer (4) as being separate entities from the substrate (1), the recited components are interpreted herein as being part of the laminate, as a whole, rather than the substrate. Appropriate correction is required.
Claim 1 is further indefinite because it recites limitations about experimental results obtained by performing X-ray photoelectron spectroscopy (“XPS”) without reciting any parameters about the instrument settings. As evidenced by Pinder (Pinder, et al. App. Surf. Sci. Adv. , 2024, 19, 100534, p. 1-29), who teaches that a large number of different factors and parameters including, for example, the type, energy, and power of the X-ray source, the geometry of the measurement taken, and the dwell time, pass energies, and resolutions of scans taken, among several others, are required for scientists to be able to interpret, evaluate, and reproduce XPS results (p. 24, “Not recording and reporting experimental details”), it is not possible to determine from the very limited XPS parameters claimed if a sample would demonstrate the recited XPS results or not. For the sake of compact prosecution, a gas barrier coating layer made from a composition commensurate to what is instantly disclosed is considered herein to meet the claim requirements. Appropriate correction is required.
Claims 2-10 are also rejected under 35 U.S.C. 112(b) because they depend from or require all of the limitations of claim 1.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaminaga (WO 2020/116544 A1), cited herein according to US PG Pub. No. 2021/0291501, which is an English language translation.
Regarding claims 1, 2, 4, 6, and 7, Kaminaga teaches a gas barrier laminate comprising a polypropylene substrate layer, an aluminum oxide layer (i.e. “deposition layer”) formed by a deposition method on the substrate, and a gas barrier coating layer on the inorganic oxide layer (Ex. 10; par. 340, 341, 348).
The gas barrier coating layer comprises a mixture of polyvinyl alcohol (PVA), a tetraethoxysilane ((Si(OCH2H5)4; i.e. “TEOS”) as a first silicon compound, and γ-glycidoxypropyltrimethoxysilane (“GPTMS”) as a second silicon compound with a PVA:TEOS:GPTMS weight ratio of 40:50:10 (par. 340). As the instant disclosure teaches that the recited/disclosed gas barrier coating can be a cured composite film comprising 20 to 60 wt. % of a water-soluble polymer, which may be PVA, 25-70 wt. % of the first silicon compound, which may be TEOS, and 3-20 wt. % of the second compound, which may be GPTMS (Applicant’s published application, par. 81-83, 84-87, 94-96; 154, 155, 156, 164), Kaminaga teaches a coating composition meeting the compositional requirements of a gas barrier film that is instantly disclosed to perform as claimed. The instant disclosure also teaches that Kaminaga’s first and second silicon compounds meet the silicon compound formula requirements of claim 4 (Applicant’s published application, par. 84-87, 94-96; 154, 155, 156, 164, 180). Therefore, Kaminaga teaches a gas barrier coating meeting the requirements of the instant claims.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (WO 2021/020400 A1), cited herein according to US PG Pub. No. 2022/0153006, which is an English language translation.
Regarding claims 1-4, 6, and 7, Tanaka teaches a gas barrier laminate comprising a polypropylene substrate layer, an adhesive layer (i.e. “anchor coat layer”) on the substrate layer, an silicon oxide layer (i.e. “deposition layer”) formed by a deposition method on the adhesive layer, and a gas barrier coating layer on the inorganic oxide layer (par. 125, 127).
The gas barrier coating layer comprises a mixture of polyvinyl alcohol (PVA), hydrolyzed tetraethoxysilane ((Si(OCH2H5)4; i.e. “TEOS”) as a first silicon compound, and 1,3,5-tris (3-trialkoxysilylpropyl) isocyanurate (i.e. a silane coupling agent, “SC”) as a second silicon compound with a PVA:TEOS:SC weight ratio of 25:65:10 (par. 120-123). As the instant disclosure teaches that the recited/disclosed gas barrier coating can be a cured composite film comprising 20 to 60 wt. % of a water-soluble polymer, which may be PVA, 25-70 wt. % of the first silicon compound, which may be TEOS, and 3-20 wt. % of the second compound, which may be 1,3,5-tris(3-methoxysilylpropyl)isocyanurate (Applicant’s published application, par. 81-83, 84-87, 94-96; 154, 155, 156, 164, 180, Tables 1, 2), Tanaka teaches a coating composition meeting the compositional requirements of a gas barrier film that is instantly disclosed to perform as claimed. The instant disclosure also teaches that Tanaka’s first and second silicon compounds meet the silicon compound formula requirements of claim 4 (Applicant’s published application, par. 84-87, 94-96; 154, 155, 156, 164, 180). Therefore, Tanaka teaches a gas barrier coating meeting the requirements of the instant claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kaminaga.
Regarding claims 1, 3, 4, and 6, Kaminaga teaches a gas barrier laminate comprising a polyolefin substrate layer (20, including 22-24; i.e. “substrate layer containing a thermoplastic”), an underlayer (27; i.e. “anchor layer”) on the substrate layer, an inorganic oxide layer (28; i.e. “deposition layer”) formed by a deposition method on the underlayer, and an oxygen barrier coating layer (25; i.e. “gas barrier coating layer”) on the inorganic oxide layer (par. 192, 193, 200, 243, 247, 249).
Although Kaminaga does not disclose what results would be obtained if his oxygen barrier coating was analyzed with X-ray photoelectron spectroscopy (“XPS”), Kaminaga does teach that the coating may be formed by combining solutions of a water-soluble polymer, such as polyvinyl alcohol (“PVA”), a first silicon compound comprising a silicon alkoxide compound, such as tetraethoxysilane (Si(OCH2H5)4; i.e. “TEOS”), and a hydrolysate thereof, and a second silicon compound, such as the silane coupling agent tris-(trimethoxysilylpropyl)isocyanurate (i.e. “1,3,5-tris(3-methoxysilylpropyl)isocyanurate”), to form a cured composite coating comprising 15-50 wt. % of the water-soluble polymer, 40 to 70 wt. % of the first silicon compound and/or a hydrolysate thereof, and 1 to 15 wt. % of the second silicon compound (par. 247, 250, 252, 253, 255, 256, 262). As the instant disclosure teaches that the recited/disclosed gas barrier coating can be a cured composite film comprising 20 to 60 wt. % of a water-soluble polymer, which may be PVA, 25-70 wt. % of the first silicon compound, which may be TEOS, and 3-20 wt. % of the second compound, which may be 1,3,5-tris(3-methoxysilylpropyl)isocyanurate (Applicant’s published application, par. 81-83, 84-87, 94-96; 154, 155, 156, 164, 180, Tables 1, 2), Kaminaga teaches a coating composition that renders obvious due to overlapping compositional ranges (see MPEP 2144.05) a gas barrier film that is instantly disclosed to perform as claimed. The instant disclosure also teaches that Kaminaga’s first and second silicon compounds meet the silicon compound formula requirements of claim 4 (Applicant’s published application, par. 84-87, 94-96; 154, 155, 156, 164, 180). Kaminaga also discloses several other silane coupling agents (par. 256-257), which may be used in his coating, that the instant disclosure teaches (Applicant’s published application, par. 94) to meet the requirements of claim 4. Therefore, Kaminaga teaches or at least renders obvious a gas barrier coating meeting the requirements of the instant claims.
Regarding claim 2, Kaminaga teaches that the polyolefin resin of his substrate layer may comprise polypropylene (par. 193, 200).
Regarding claim 5, Kaminaga’s oxygen barrier film (i.e. “gas barrier coating layer”) has a thickness in the range of 0.05 to 5 µm (i.e. 50 to 5000 nm) (par. 291). The instantly claimed layer thickness is encompassed and rendered obvious by Kaminaga. See MPEP 2144.05.
Regarding claim 7, Kaminaga’s inorganic oxide layer (i.e. “deposition layer”) may comprise aluminum oxide and/or silicon oxide (par. 244).
Regarding claims 8-10, the teachings of Kaminaga might be considered to differ from the current invention in that he does not explicitly exemplify a packaged product comprising a packaging container filled with contents and including a packaging film comprising the above-discussed gas barrier laminate and a sealant layer. However, Kaminaga does teach laminating a sealant layer onto his material for use as a packaging and discloses using his gas barrier laminate as a packaging material that enhances retention of the quality of its contents (par. 293, 397). Kaminaga also teaches that his barrier laminate advantageously has high transparency, bending resistance, and stretch resistance, does not generate harmful substances such as dioxins, and is useful in packaging materials that exhibit sufficient adhesion strength or sealing strength even after boiling and retort treatments (par. 293). Therefore, it would have been obvious to one of ordinary skill in the art to make a packaged product comprising a packaging container filled with contents and including a packaging film comprising the above-discussed gas barrier laminate and a sealant layer because Kaminaga teaches doing so to be appropriate and because Kaminaga discloses that his barrier film beneficially has high transparency, bending resistance, and stretch resistance, does not generate harmful substances such as dioxins, and is useful in packaging materials that exhibit sufficient adhesion strength or sealing strength even after boiling and retort treatments.
Claims 5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka, as applied to claim 1 above.
Regarding claim 5, Tanaka discloses that the thickness of the gas barrier coating layer discussed above is “0.3” without specifying a unit of measurement, which, although being presumed to be a typographical error, is a difference from the current invention. Tanaka also teaches that such gas barrier coatings may have a thickness in the range of 50 to 1000 nm to achieve the desired barrier performance while retaining sufficient flexibility (par. 65). Therefore, it would have been obvious to one of ordinary skill in the art to configure the gas barrier coating layer in the gas barrier laminate discussed above to have a thickness in the range of 50 to 1000 nm, including 300 nm, because Tanaka teaches that such a range is appropriate for his products and in order to achieve a desirable balance of gas barrier performance and flexibility. The instantly claimed thickness range is encompassed and rendered obvious by Tanaka’s range. See MPEP 2144.05.
Regarding claims 8-10, the teachings of Tanaka might be considered to differ from the current invention in that he does not explicitly exemplify a packaged product comprising a packaging container filled with contents and including a packaging film comprising the above-discussed gas barrier laminate and a sealant layer. However, Tanaka does disclose that his teachings are directed to forming a packaging bag including gas barrier laminates according to his teachings, that a sealing layer imparts sealability to the laminate (and bag) when it is heat sealed, wherein the thickness of the sealant layer is determined by the mass of the contents to be contained in the bag and shape of the bag, and that such bags (i.e. which are packaging products) can be used to house food product contents (par. 19, 25, 78, 81, 100, 101). Therefore, it would have been obvious to one of ordinary skill in the art to make a packaged product comprising a packaging container filled with contents, such as food, and comprising a packaging film including the gas barrier laminate discussed above and a sealant layer because Tanaka’s teachings are clearly directed to such uses and makes clear that such a use is appropriate for his gas barrier laminates, such as the one discussed above, and in order to seal the packaging containing and packaged product, thereby making the container appropriate for use as a food container.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights