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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/29/2025 has been entered.
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 1, and 3-18 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.
Re claim 1, the phrase “the water-soluble polymer other than the polyurethane resin” is misleading as polyurethane is not water-soluble.
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, 3-12, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210310194 A1 to TSURUHARA et al. in view of US 20210292503 A1 to KAMINAGA et al. and further in view of US 20220025582 A1 to Nyflött et al.
Re claims 1, 3-4, 6, 8-11, 14, and 18, Tsuruhara essentially teaches the claimed invention save the polyurethane and its placement. Tsuruhara discloses a laminate comprising paper layer/water vapor barrier layer/gas barrier layer/water-dispersible resin [0017] in sealant [0019]. The gas barrier layer comprises resins such as a polyurethane [0067] while the water vapor barrier layer comprises the inorganic compound, cationic resin, and anionic binder such as styrene butadiene, i.e. claimed water-suspendable polymer [0019, 0020], vinyl alcohol [0022] and wax [0077] as claimed. Tsuruhara teaches overlapping ranges of the cationic resin and ratios of claims 9-10 [0053-0054] the content of the cationic resin may be appropriately selected depending on the kind of the layered inorganic compound and the anionic binder to be used in the water vapor barrier layer and is, from the viewpoint of improving barrier properties, preferably 1 to 300 parts by mass relative to 100 parts by mass of the layered inorganic compound, more preferably 1 to 250 parts by mass, even more preferably 10 to 150 parts by mass, especially more preferably 20 to 150 parts by mass, and most preferably 20 to 100 parts by mass. [0054] Also the content of the cationic resin is preferably 0.1 to 20 parts by mass relative to 100 parts by mass of the anionic binder in the water vapor barrier layer (overlapping claimed 1-20% by mass cationic resin per claim 4). See further Table 1. Abstract, [0017], [0041-0042], the aspect ratio of the layered inorganic compound is 50 or more, the thickness of the layered inorganic compound is 200 nm or less (overlapping applicant’s requirements of 50 nm or less and 200 or more). [0018] teaches the content of the layered inorganic compound is 0.1 to 800 parts by mass relative to 100 parts by mass of the anionic binder (overlapping 5 to 35% per claim 6). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Tsuruhara fails to disclose the polyurethane in the same layer as the inorganic compound.
Kaminaga teaches an aqueous polyurethane into the coating water vapor barrier layer including inorganic minerals [0056], [0088], [0094-0095] and [0124] used to impart flexibility and gas barrier properties, in particular, oxygen barrier properties, to the gas barrier layer [0114].
It would have been obvious to one having ordinary skill in the art to have modified the water vapor barrier inorganic layer of Tsuruhara with polyurethane with a hydroxy unit for imparting flexibility and gas barrier properties as taught by Kaminaga.
The combination doesn’t teach a different polymer in the barrier from 1-20 wt%; however, Nyflött et al. teaches [38-39] up to 5 wt% (overlapping the ranged claims).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claim 3, Tsuruhara doesn’t teach the silicate.
[0232], Kaminaga teaches typical examples of the inorganic layered mineral include hydrous silicates such as phyllosilicate minerals, inorganic layered minerals may be used singly or in combination of two or more.
It would have been obvious to one having ordinary skill in the art to have modified the water vapor barrier inorganic layer of Tsuruhara with silicates as they are typical examples to include in the inorganic layer as taught by Kaminaga.
Re claim 5, Tsuruhara fails to disclose the 30-80% polyurethane.
[0250] Kaminaga teaches overlapping ranges of polyurethane in that the sum (total concentration) of the urethane group concentration and the urea group concentration of the acid group-containing polyurethane resin is preferably 15 mass % or more, and more preferably in a range of 20 to 60 mass %, from the viewpoint of gas barrier properties. When the total concentration is the lower limit or more, higher gas barrier properties are obtained. When the total concentration is the upper limit or less, the gas barrier layer is easily prevented from becoming rigid and brittle. The same overlapping ranges rationale applies here. See MPEP 2144.05.
Re claim 7, Kaminaga discloses various points of water-suspendable polymer to water-soluble polymer in Table 1 within the claimed ratio 20:1 to 1:2. The same rational to overlapping ranges applies. See MPEP 2144.05.
Re claim 12, Tsuruhara teaches hydrocarbon polyolefin wax in [77].
Claims 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210310194 A1 to TSURUHARA et al. in view of US 20210292503 A1 to KAMINAGA et al. in view of US 20220025582 A1 to Nyflött et al. and further in view US 20230312202 A1 to MULLER et al.
The combination is relied upon above.
Re claims 13 and 15-17, The combination doesn’t teach the various waxes as claimed with resins.
Muller teaches a paper barrier with similar resins containing hydrocarbon natural waxes including microcrystalline and carnauba wax [24-26, 40-42] for blocking certain material within barrier layers wherein the amount of wax is less than 99% (overlapping 1% - 30 % as claimed in 17) being the remainder of the resin from 1 to 100% [43].
It would have been obvious to one having ordinary skill in the art to have modified the wax of Kaminaga and substitute it for hydrocarbon, microcrystalline and/or carnauba wax within overlapping ranges to benefit barrier functionality of paper with the respective resin. Same overlapping rationale applies herein.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered. Applicant’s amendment is now mitigated by the new reference. See Office Action above. Applicant’s arguments are moot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure including the written opinion and international search report.
US 20230235510 A1 to CARUSO et al. [0118], Caruso teaches in water based resin surface coatings, natural wax like beeswax and candelilla may be added to increase durability of a paper layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 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, Callie Shosho can be reached on 571-272-1123. 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.
TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787