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 .
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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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, 3-5, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuruhara (WO 2020/085110).
Note: since WO 2020/085110 was not published in the English language, citations in this action refer to US 2021/0310194 which is the US national stage application.
Tsuruhara is directed to a barrier laminate comprising, in order, a paper substrate, a water vapor barrier layer, and a gas barrier layer containing a water-soluble polymer (paragraph 0019). The water-soluble polymer may be polyvinyl alcohol or a urethane resin (paragraph 0067). The water-soluble polymer is contained at a concentration of 50 to 100 mass% (paragraph 0069). The gas barrier layer may also contain a layered inorganic compound, such as mica, at a concentration of 1 to 20 parts by mass per 100 parts water-soluble polymer (paragraph 0070). Mica is cited in the instant specification as a swellable layered silicate (see paragraph 0035 on page 24). Sealant layers may be applied to both surfaces of the gas barrier laminate (paragraph 0074). The sealant layers may comprise a water-dispersible thermoplastic resin (paragraph 0075).
While Tsuruhara does not teach the addition of a cationic resin to the gas barrier layer, there is a teaching that the layer may contain the same layered inorganic compound as in the water vapor barrier layer as well as a dispersant (paragraphs 0070-0071). The cationic resin is contained at a concentration of 1 to 300 parts by mass per 100 parts of layered inorganic compound (paragraph 0053). Tsuruhara further teaches that the addition of a cationic resin to the layered compound present in the water vapor barrier breaks the card house structure of the layered inorganic compound, resulting in better dispersion and improved barrier properties (paragraphs 0048-0049).
It would have been obvious to one of ordinary skill in the art to use a cationic resin in the gas barrier layer of Tsuruhara as a dispersant to improve both the dispersing of the layered compound and its barrier properties.
The paper substrate corresponds to the paper substrate of the claims; the gas barrier layer corresponds to the barrier layer of the claims; one sealant layer corresponds to the sealant layer of the claims; the other sealant layer corresponds to the thermoplastic resin layer of the claims; the water vapor barrier layer corresponds to the undercoating of claim 10.
Regarding the concentrations recited in claims 3-5 since (a) the ranges taught by Tsuruhara overlap those set forth in these claims and (b) the courts have held that a prima facie case of obviousness exists for overlapping ranges (see MPEP 2144.05), these claims are prima facie obvious over the teachings of Tsuruhara.
Claims 1-6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shamoto (WO 2021/106891).
Note: since WO 2021/106891 was not published in the English language, citations in this action refer to corresponding EP 4,067,078 (see IDS filed 14 January 2025).
Shamoto is directed to a barrier laminate comprising a paper substrate, a gas barrier layer, and a water barrier layer (paragraph 0019). The gas barrier layer (corresponding to the barrier layer of the claims) contains at least one of a water-soluble resin binder and a water-dispersible resin binder (paragraph 0033). The water-soluble resin binder is preferably polyvinyl alcohol (paragraph 0034), preferably at a content of 50 mass% or more (paragraph 0038). The water-dispersible resin binder is preferably a urethane resin (paragraph 0039), such as one containing metaxylylene diisocyanate structural units (paragraph 0040), preferably at a content of 50 mass% or more. The gas barrier layer preferably further contains a layered inorganic compound at a content of 5 to 70 parts by mass per 100 parts of water-soluble or water-dispersible resin binder (paragraph 0043). The preferred layered inorganic compound is mica (paragraph 0044), which is cited in the instant specification as a swellable layered silicate (see paragraph 0035 on page 24). The gas barrier layer may further comprise a cationic resin (paragraph 0045) at a preferred concentration of 1 to 100 parts by mass per 100 parts layered inorganic compound (paragraph 0048). Sealant layers may be applied to both surfaces of the barrier laminate (paragraph 0088). The sealing layer preferably contains a water-dispersible resin that melts to be adhesive (paragraph 0089). One of ordinary skill in the art would recognize that the resin capable of melting is a thermoplastic resin.
While Shamoto does not exemplify an embodiment of a barrier laminate having sealant layers on both sides of the laminate, it would have been obvious to one of ordinary skill based on the explicit teaching in Shamoto that sealant layers may be applied to both sides.
The paper substrate corresponds to the paper substrate of the claims; the gas barrier layer corresponds to the barrier layer of the claims; one sealant layer corresponds to the sealant layer of the claims; the other sealant layer corresponds to the thermoplastic resin layer of the claims.
Regarding the concentrations recited in claims 3-5, 8 and 9, since (a) the ranges taught by Shamoto overlap those set forth in these claims and (b) the courts have held that a prima facie case of obviousness exists for overlapping ranges (see MPEP 2144.05), these claims are prima facie obvious over the teachings of Shamoto.
Regarding claim 6, Shamoto teaches that the gas barrier layer contains at least one of a water-soluble resin binder and a water-dispersible resin binder - i.e., the gas barrier layer may contain both a water-soluble resin binder and a water-dispersible resin binder. As such, it would have been obvious to one of ordinary skill in the art to employ both a water-dispersible urethane resin and a water-soluble polyvinyl alcohol resin in the gas barrier layer.
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 1-9, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 10 of U.S. Patent No. 12,304,182 in view of Shamoto (WO 2021/106891).
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims, such as claim 6, with the independent claim to yield a laminate exhibiting the benefits conveyed by the limitations of the dependent claims.
Additionally, the claims of U.S. Patent No. 12,304,182 do not recited the presence of a thermoplastic resin layer on the barrier laminate opposite the heat-sealable layer recited in claim 6 or that the layered inorganic compound is a swellable silicate.
Shamoto is directed to a barrier laminate comprising a paper substrate, a gas barrier layer, and a water barrier layer (paragraph 0019). Sealant layer(s) may be applied to one or both surfaces of the barrier laminate (paragraph 0088). The sealing layer preferably contains a water-dispersible resin that melts by heating to be adhesive (paragraph 0089). One of ordinary skill in the art would recognize that the resin capable of melting is a thermoplastic resin.
That is, Shamoto teaches the functional equivalence of sealing layers on one or both sides of a barrier laminate. Therefore, because these two configurations were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to apply sealant layers on both sides of the barrier laminate recited in the claims of U.S. Patent No. 12,304,182.
Regarding claim 7, the limitations of this claim are met since claim 1 of U.S. Patent No. 12,304,182 recites that the barrier layer contains at least one of a water-suspendable polymer and water-soluble polymer (indicating that it may contain both) with ethylene-acrylic acid recited as a water-suspendable polymer as polyvinyl alcohol recited as a water-soluble polymer.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, and 10 of U.S. Patent No. 12,304,182 in view of Shamoto (WO 2021/106891), as applied to claim 1 above, and further in view of Tsuruhara (WO 2020/085110).
Claims 1, 3-6, and 10 of U.S. Patent No. 12,304,182 taken in view of Shamoto suggest all the limitations of claim 10, as outlined above, except for the presence of an undercoating between the paper and the barrier layer.
Tsuruhara is directed to a barrier laminate comprising, in order, a paper substrate, a water vapor barrier layer, and a gas barrier layer containing a water-soluble polymer (paragraph 0019), such as a urethane resin (paragraph 0067). The gas barrier layer may also contain a layered inorganic compound, such as mica, at a concentration of 1 to 20 parts by mass per 100 parts water-soluble polymer (paragraph 0070).
It would have been obvious to one of ordinary skill in the art to apply a water vapor barrier layer between the paper substrate and the barrier layer of the barrier laminate of claimed in U.S. Patent No. 12,304,182 to provide the laminate with additional water vapor barrier properties.
Claims 1-9, 11, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of copending Application No. 18/994,366 in view of Shamoto (WO 2021/106891).
Although the conflicting claims are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims, such as claims 3 (reciting that the flat inorganic compound is a swellable silicate) and 14 (reciting that the sealant layer comprises a polyolefin resin), with the independent claim to yield a laminate exhibiting the benefits conveyed by the limitations of the dependent claims.
Additionally, the claims of copending Application No. 18/994,366 do not recited the presence of a thermoplastic resin layer on the barrier laminate opposite the sealant layer.
Shamoto is directed to a barrier laminate comprising a paper substrate, a gas barrier layer, and a water barrier layer (paragraph 0019). Sealant layer(s) may be applied to one or both surfaces of the barrier laminate (paragraph 0088).
Shamoto teaches the functional equivalence of sealing layers on one or both sides of a barrier laminate. Therefore, because these two configurations were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to apply sealant layers on both sides of the barrier laminate recited in the claims of copending Application No. 18/994,366.
This is a provisional nonstatutory double patenting rejection.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of copending Application No. 18/994,366 in view of Shamoto (WO 2021/106891), as applied to claim 1 above, and further in view of Tsuruhara (WO 2020/085110).
Claims 1 and 3-6 of copending Application No. 18/994,366 taken in view of Shamoto suggest all the limitations of claim 10, as outlined above, except for the presence of an undercoating between the paper and the barrier layer.
Tsuruhara is directed to a barrier laminate comprising, in order, a paper substrate, a water vapor barrier layer, and a gas barrier layer containing a water-soluble polymer (paragraph 0019), such as a urethane resin (paragraph 0067). The gas barrier layer may also contain a layered inorganic compound, such as mica, at a concentration of 1 to 20 parts by mass per 100 parts water-soluble polymer (paragraph 0070).
It would have been obvious to one of ordinary skill in the art to apply a water vapor barrier layer between the paper substrate and the barrier layer of the barrier laminate of claimed in 1 and 3-6 of copending Application No. 18/994,366 to provide the laminate with additional water vapor barrier properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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