DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 06/18/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-15 are examined on the merits in this office action.
Claim Objections
Claim 2 is objected to because of the following informalities: Claim 2, lines 1-2 recite “the polyolefin”, which should be “the recycled polyolefin”. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Claim 5, line 2 recites “the polyolefin”, which should be “the recycled polyolefin”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses). It is noted that the disclosures of Xu I et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1 and 2, Xu I et al. disclose a composite paper material comprising a first stone paper layer 20, wood pulp paper layer 10 and a second stone paper layer 30 (see Abstract, Figures 1 and 2 and page 3, paragraph 1). The stone paper layers 20 and 30 comprises up to 80 wt% of stone powder such as calcium carbonate and at most 20 wt% of high density polyethylene (see page 3, paragraph 2). It is well known as evidenced by Xometry that high density polyethylene has density of 0.93-0.97 g/m3 (see page 4, What is the Density of High-Density Polyethylene?). The stone paper layers comprising high density polyethylene and calcium carbonate read on a packaging material as presently claimed.
Xu I et al. disclose that the composite paper material can be used as a packaging paper, carton, carton paper, etc. i.e. packaging material (see page 3, paragraph 2). Xu I et al. do not disclose that the polyolefin is recycled polyolefin made from waste polyolefin. Xu I et al. do not disclose that the packaging material is for cigarettes.
Although Xu I et al. do not disclose “the polyolefin is recycled polyolefin made from waste polyolefin”, 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 Xu I et al. meets the requirements of the claimed product, Xu I et al. clearly meet the requirements of present claims.
Xu I et al. do not disclose that the packaging material is for cigarettes.
However, the recitation in the claims that the packaging material is “for cigarettes” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Xu I et al. disclose packaging material as presently claimed, it is clear that the packaging material of Xu I et al. would be capable of performing the intended use, i.e. for cigarettes, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 9 and 10, Xu I et al. disclose a composite paper material comprising the first stone paper layer 20 (inner liner), the wood pulp paper layer 10 (outer package layer) and the second stone paper layer 30 (outer package layer) as noted above. Further, the stone paper layers comprising high density polyethylene and calcium carbonate read on a packaging material as presently claimed as noted above. The first stone paper layer reads on an inner liner. The wood pulp paper layer and the second stone paper layer together read on an outer package on the inner liner, wherein the outer package comprises paper on the packaging material.
Accordingly, the inner liner made of the first stone paper layer read on the inner liner comprising the packaging material as presently claimed. The outer package comprising the paper and the second stone paper layer read on the outer package comprising the packaging material as presently claimed.
While Xu I et al. disclose the composite paper material can be used as packaging paper, carton, carton paper, etc., Xu I et al. do not disclose the composite paper material is a cigarette case.
While there is no disclosure that the composite paper material is a cigarette case as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. cigarette case, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art composite paper material and further that the prior art structure which is a composite paper material identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses). It is noted that the disclosures of Xu I et al. are based on a machine translation of the reference which is included in this action.
Regarding claim 5, Xu I et al. disclose the composite paper material as set forth above. Xu I et al. also disclose that the stone paper layers 20 and 30 comprise up to 80 wt% of stone powder such as calcium carbonate and at most 20 wt% of high density polyethylene (see page 3, paragraph 2), wherein the high density polyethylene and calcium carbonate read on a packaging material as presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In light of the overlap between the claimed composite paper material and that disclosed by Xu I et al., it would have been obvious to one of ordinary skill in the art to use a composite paper material that is both disclosed by Xu I et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 12, Xu I et al. disclose the inner liner comprising the packaging material comprising high density polyethylene and calcium carbonate. Given that the inner liner including the packaging material comprising high density polyethylene and calcium carbonate is identical to that utilized in the present invention, with the amounts of high density polyethylene and calcium carbonate overlapping with that presently claimed, within the overlapping ranges, the inner linear necessarily inherently has a moisture permeability as presently claimed.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 1 above, further in view of Pohl et al. (CN 103534207 A). It is noted that the disclosures of Pohl et al. are based on a machine translation of the reference which is included in this action.
Regarding claim 3, Xu I et al. disclose the packaging material comprising the polyolefin and the calcium carbonate as set forth above. Xu I et al. do not disclose the calcium carbonate as presently claimed.
Pohl et al. disclose precipitated calcium carbonate as a filler in paper or plastic materials that has high opacity and high brightness (see paragraphs 0007-0008). Further, the precipitated calcium carbonate includes those having a whiteness of 88 to 94% measured according to ISO 2469 (see paragraph 0075).
In light of motivation for using precipitated calcium carbonate having whiteness of 88 to 94% disclosed by Pohl et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use precipitated calcium carbonate having whiteness of 88 to 94% including that presently claimed as the calcium carbonate in the first stone paper layer and the second stone paper layer in Xu I et al. in order to provide high opacity, high brightness and high whiteness, and thereby arrive at the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 1 above, further in view of Spiegel et al. (EP 3124436 A1).
Regarding claim 4, Xu I et al. disclose the packaging material comprising the polyolefin and the calcium carbonate as set forth above. Xu I et al. do not disclose the calcium carbonate as presently claimed.
Spiegel et al. disclose a precipitated calcium carbonate with improved resistance to structural breakdown, especially improved resistance to compression, thereby improving mechanical properties such as stiffness of products in which it is used (see paragraphs 0001 and 0011).
In light of motivation for using precipitated calcium carbonate disclosed by Spiegel et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use precipitated calcium carbonate as the calcium carbonate in the first stone paper layer and the second stone paper layer in Xu I et al. in order to improve resistance to compression as well as to improve mechanical properties such as stiffness of the first stone paper layer and the second stone paper layer, and thereby arrive at the claimed invention.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 1 above, further in view of Wang (US 2006/0229410 A1).
Regarding claims 6-8, Xu I et al. disclose the packaging material comprising the polyolefin and the calcium carbonate as set forth above. Xu I et al. do not disclose the packaging material comprising stearic acid as presently claimed.
Wang discloses a masterbatch comprising over 85 wt% of calcium carbonate, 13 wt% of polyethylene and 2 wt% of composite assisting agent such as stearic acid (see Abstract). The addition of 2 wt% of composite assisting agent enables kneading together a large quantity of inorganic calcium carbonate and a small amount of organic polyethylene (see paragraph 0010). The masterbatch enables quick and complete degradation of plastic products, thereby contributing to environmental protection (see paragraph 0002, 0008 and 0034). Based on 85 wt% of calcium carbonate and 13 wt% of polyethylene, the composite assisting agent is present in 2 wt% based on 98 wt% of calcium carbonate and polyethylene. Accordingly, the amount of composite assisting agent is 2.04 parts by weight based on 100 parts by weight of calcium carbonate and polyethylene (2.04 = 100/98 x 2), which to one significant digit (similar to the recitation of the amount in the claims) is 2 parts by weight based on 100 parts by weight of calcium carbonate and polyethylene.
In light of motivation for using stearic acid disclosed by Wang as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use such stearic acid in the first stone paper layer and the second stone paper layer of Xu I et al. in order to provide quick and complete degradation of plastic products, and contribute to environmental protection as well as to assist kneading together large amount of inorganic calcium carbonate with small amount of organic high density polyethylene, and thereby arrive at the claimed invention.
Accordingly, Xu I et al. in view of Wang discloses the packaging material as presently claimed. Given that the packaging material including high density polyethylene, calcium carbonate and stearic acid is identical to that utilized in the present invention, with the amounts of high density polyethylene, calcium carbonate and stearic acid overlapping with that presently claimed, within the overlapping ranges, the packaging material necessarily inherently has a biodegradability as presently claimed.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 1 above, further in view of Wang (US 2006/0229410 A1).
Regarding claims 6-8, Xu I et al. disclose the packaging material comprising the polyolefin and the calcium carbonate as set forth above. Xu I et al. do not disclose the packaging material comprising stearic acid as presently claimed.
Wang discloses a masterbatch comprising over 85 wt% of calcium carbonate, 13 wt% of polyethylene and 2 wt% of composite assisting agent such as stearic acid (see Abstract). The addition of 2 wt% of composite assisting agent enables kneading together a large quantity of inorganic calcium carbonate and a small amount of organic polyethylene (see paragraph 0010). The masterbatch enables quick and complete degradation of plastic products, thereby contributing to environmental protection (see paragraph 0002, 0008 and 0034). Based on 85 wt% of calcium carbonate and 13 wt% of polyethylene, the composite assisting agent is present in 2 wt% based on 98 wt% of calcium carbonate and polyethylene. Accordingly, the amount of composite assisting agent is 2.04 parts by weight based on 100 parts by weight of calcium carbonate and polyethylene (2.04 = 100/98 x 2).
In light of motivation for using stearic acid disclosed by Wang as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use such stearic acid in the first stone paper layer and the second stone paper layer of Xu I et al. in order to provide quick and complete degradation of plastic products, and contribute to environmental protection as well as to assist kneading together large amount of inorganic calcium carbonate with small amount of organic high density polyethylene, and thereby arrive at the claimed invention.
The only deficiency of Wang is that Wang disclose the use of “2.04 parts by weight” of stearic acid, while the present claims require “2 parts by weight” of stearic acid.
It is apparent, however, that the instantly claimed amount of stearic acid and that taught by Wang are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of stearic acid disclosed by Wang and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of stearic acid disclosed in the present claims is but an obvious variant of the amounts disclosed in Wang, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Accordingly, Xu I et al. in view of Wang discloses the packaging material as presently claimed. Given that the packaging material including high density polyethylene, calcium carbonate and stearic acid is identical to that utilized in the present invention, with the amounts of high density polyethylene, calcium carbonate and stearic acid meeting that presently claimed, the packaging material necessarily inherently has a biodegradability as presently claimed.
Claims 9, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U) in view of Xu II et al. (CN 201394946 Y), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses). It is noted that the disclosures of Xu I et al. and Xu II et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 9, 10 and 13, Xu I et al. disclose a composite paper material comprising a first stone paper layer 20, wood pulp paper layer 10 and a second stone paper layer 30 (see Abstract, Figures 1 and 2 and page 3, paragraph 1). The stone paper layers 20 and 30 comprises up to 80 wt% of stone powder such as calcium carbonate and at most 20 wt% of high density polyethylene (see page 3, paragraph 2). It is well known as evidenced by Xometry that high density polyethylene has density of 0.93-0.97 g/m3 (see page 4, What is the Density of High-Density Polyethylene?). The stone paper layers comprising high density polyethylene and calcium carbonate read on a packaging material as presently claimed.
Xu I et al. disclose that the composite paper material can be used as a packaging paper, carton, carton paper, etc. i.e. packaging material (see page 3, paragraph 2). Xu I et al. do not disclose that the polyolefin is recycled polyolefin made from waste polyolefin. Xu I et al. do not disclose that the packaging material is for cigarettes.
Although Xu I et al. do not disclose “the polyolefin is recycled polyolefin made from waste polyolefin”, 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 Xu I et al. meets the requirements of the claimed product, Xu I et al. clearly meet the requirements of present claims.
Xu I et al. do not disclose that the packaging material is for cigarettes.
However, the recitation in the claims that the packaging material is “for cigarettes” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Xu I et al. disclose packaging material as presently claimed, it is clear that the packaging material of Xu I et al. would be capable of performing the intended use, i.e. for cigarettes, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Xu I et al. disclose a composite paper material comprising the first stone paper layer 20 (first mineral paper), the wood pulp paper layer 10 (first paper layer) and the second stone paper layer 30 (second mineral paper) as noted above. Further, the stone paper layers comprising high density polyethylene and calcium carbonate read on a packaging material as presently claimed as noted above. The first stone paper layer, the wood pulp paper layer and the second stone paper layer together read on an outer package, wherein the outer package comprises a paper on the packaging material.
Further, Xu I et al. disclose an adhesive layer can be used to bond the first stone layer, the wood pulp paper layer and the second stone paper layer (see page 3, paragraph 2). That is, Xu I et al. disclose the outer package comprising the first stone paper layer (first mineral paper)/ adhesive layer/ wood pulp paper layer (first paper)/adhesive layer/ second stone paper layer (second mineral paper).
While Xu I et al. disclose the outer package comprising the first mineral paper/ adhesive layer/first paper/adhesive layer/second mineral paper, Xu et al. I do not disclose the second paper. Xu I et al. do not disclose an inner liner.
Xu II et al. disclose a composite paper comprising a first layer of paper and a second layer of paper (mineral paper), wherein the first layer of paper is an ethylene-acrylic acid modified copolymer (EAA) layer and the second layer of paper comprises 10 to 20 wt% of high density polyethylene and 80 to 90 wt% of calcium carbonate (see Abstract). The composite layer has good ink absorption, good toughness, good writing and printing performance (see Abstract).
In light of motivation for using the composite paper comprising a first layer of paper comprising EAA copolymer and a second layer of paper comprising high density polyethylene and calcium carbonate disclosed by Xu II et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a layer of paper comprising EAA copolymer laminated on each of the first stone paper layer and the second stone paper layer in Xu I et al. in order to provide good ink absorption, good toughness, good writing and printing performance, and thereby arrive at the claimed invention.
Accordingly, Xu I et al. in view of Xu II et al. disclose a laminate of the first paper layer comprising EAA copolymer/the first stone paper layer (first mineral paper)/ adhesive layer/ wood pulp paper layer (first paper)/adhesive layer/ second stone paper layer (second mineral paper)/the second paper layer comprising EAA copolymer. The first paper layer comprising EAA copolymer reads on an inner liner. The second paper layer comprising EAA copolymer reads on the second paper of the outer package. That is, the first stone paper layer (first mineral paper)/ adhesive layer/ wood pulp paper layer (first paper)/adhesive layer/ second stone paper layer (second mineral paper)/the second paper layer comprising EAA copolymer together read on the outer package, wherein the adhesive layer is disposed between the first paper and the second mineral paper, and the first mineral paper and the second mineral paper comprises the same packaging materials.
While Xu I et al. disclose the composite paper material can be used as packaging paper, carton, carton paper, etc., Xu I et al. in view of Xu II et al. do not disclose the composite paper material is a cigarette case.
While there is no disclosure that the composite paper material is a cigarette case as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. cigarette case, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art composite paper material and further that the prior art structure which is a composite paper material identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U) in view of Xu II et al. (CN201394946Y), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 13 above, further in view of Stimpson et al. (US 2008/0058450 A1).
Regarding claims 14 and 15, Xu I et al. in view of Xu II et al. disclose the cigarette case comprising the outer package as set forth above. While Xu I et al. in view of Xu II et al. disclose adhesive layer disposed between the first paper and the second mineral paper, Xu I et al. in view of Xu II et al. do not disclose the adhesive layer as presently claimed.
Stimpson et al. disclose an adhesive composition comprising a vinyl acetate polymer such as an ethylene vinyl acetate copolymer and a plasticizer such as C4 to C8 alkyl terephthalate (see Abstract and paragraphs 0006, 0015, 0020). The composition comprises about 50 to about 90 wt% of vinyl acetate polymer and at least about 6 wt% of the plasticizer (see paragraphs 0006, 0013). According, to the present claim the amount of the plasticizer is 1 to 9 wt% (1 = 1/101 x 100 and 9 = 10/110 x 100) and the amount of the ethylene vinyl acetate copolymer is 91 to 99 wt% (91 = 100/110 x 100 and 99 = 1/101 x 100). The amount of “about 90 wt%” of ethylene vinyl acetate copolymer meets the amount of 91 wt% of ethylene vinyl acetate copolymer as presently claimed. The adhesive composition can be used in paper packaging (see paragraphs 0010 and 0029). The adhesive composition containing the vinyl acetate polymer and the plasticizer has lower minimum film forming temperatures and higher viscosities (see paragraph 0004).
In light of motivation for using adhesive composition disclosed by Stimpson et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use the adhesive composition of Stimpson et al. to prepare the adhesive layer disposed between the first paper and the second mineral paper in Xu I et al. in view of Xu II et al. in order to provide lower minimum film forming temperatures and higher viscosities, and thereby arrive at the claimed invention.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu I et al. (TW M568204 U) in view of Xu II et al. (CN201394946Y), taken in view of evidence by Xometry (High-Density Polyethylene (HDPE): Definition, Properties, and Uses) as applied to claim 13 above, further in view of Stimpson et al. (US 2008/0058450 A1).
Regarding claims 14 and 15, Xu I et al. in view of Xu II et al. disclose the cigarette case comprising the outer package as set forth above. While Xu I et al. in view of Xu II et al. disclose adhesive layer disposed between the first paper and the second mineral paper, Xu I et al. in view of Xu II et al. do not disclose the adhesive layer as presently claimed.
Stimpson et al. disclose an adhesive composition comprising a vinyl acetate polymer such as an ethylene vinyl acetate copolymer and a plasticizer such as C4 to C8 alkyl terephthalate (see Abstract and paragraphs 0006, 0015, 0020). The composition comprises about 50 to about 90 wt% of vinyl acetate polymer and at least about 6 wt% of the plasticizer (see paragraphs 0006, 0013). According, to the present claim the amount of the plasticizer is 1 to 9 wt% (1 = 1/101 x 100 and 9 = 10/110 x 100) and the amount of the ethylene vinyl acetate copolymer is 91 to 99 wt% (91 = 100/110 x 100 and 99 = 1/101 x 100). The adhesive composition can be used in paper packaging (see paragraphs 0010 and 0029). The adhesive composition containing the vinyl acetate polymer and the plasticizer has lower minimum film forming temperatures and higher viscosities (see paragraph 0004).
In light of motivation for using adhesive composition disclosed by Stimpson et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use adhesive composition of Stimpson et al. to prepare the adhesive layer disposed between the first paper and the second mineral paper in Xu I et al. in view of Xu II et al. in order to provide lower minimum film forming temperatures and higher viscosities, and thereby arrive at the claimed invention.
The only deficiency of Stimpson et al. is that Stimpson et al. disclose the use of “about 90 wt%” of ethylene vinyl acetate copolymer, while the present claims require “91 wt%” of ethylene vinyl acetate copolymer.
It is apparent, however, that the instantly claimed amount of ethylene vinyl acetate copolymer and that taught by Stimpson et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of ethylene vinyl acetate copolymer disclosed by Stimpson et al. and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of ethylene vinyl acetate copolymer disclosed in the present claims is but an obvious variant of the amounts disclosed in Stimpson e al., and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Response to Arguments
Applicant's arguments filed 06/18/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above.
Applicants argue that Xu I is describing that the material is capable of being recycled after the fact. Xu I does not disclose that the materials in the package are previously recycled. Further, Xu I does not disclose or suggest a packaging material that includes "a recycled polyolefin produced from waste polyolefin," as recited in claim 1.
However, although Xu I et al. do not disclose “the polyolefin is recycled polyolefin made from waste polyolefin”, 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 Xu I et al. meets the requirements of the claimed product, Xu I et al. clearly meet the requirements of present claims.
In light of amendments, 112(b) paragraph rejection is withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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