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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 7/7/2026 is acknowledged.
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 3-13 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.
Claim 3 contains the limitation “the functional agent” in line 1. It is unclear which of the “one or more functional agents” in line 2 of claim1, from which claim 3 depends, this is intended to refer to. For the purposes of examination, “the functional agent” will be considered to mean “one of the one or more functional agents”.
Claim 4 depends from claim 3 and, therefore, also contains this limitation.
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 4 recites the broad recitation “from about 0.01 wt% to about 50 wt% of the barrier composition” in line 2, and the claim also recites “from about 0.01 wt% to about 15 wt% of the barrier composition” in line 3 which is the narrower statement of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower range will be considered to be optional.
Claim 5 contains the limitation “the functional agent” in line 1. It is unclear which of the “one or more functional agents” in line 2 of claim1, from which claim 5 depends, this is intended to refer to. For the purposes of examination, “the functional agent” will be considered to mean “one of the one or more functional agents”.
Claim 6 recites the limitation "the barrier agent" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the barrier agent” will be considered to mean “a barrier agent”.
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 6 recites the broad recitation “from greater than 0 wt% up to about 50 wt% of the barrier composition” in line 2, and the claim also recites “from about 0.5 wt% to about 30 wt% of the barrier composition” in line 3 which is the narrower statement of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower range will be considered to be optional.
Claim 7 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 7 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
Claim 8 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 8 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
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 8 recites the broad recitation “from about 5 wt% to about 99.9 wt%” in line 2, and the claim also recites “from about 10 wt% to about 85 wt%” in line 2 and “from about 20 wt% to about 70 wt%” in line 3 which are the narrower statements of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower ranges will be considered to be optional.
Claim 9 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 9 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
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 9 recites the broad recitation “from about 5 to about 10” in line 2, and the claim also recites “from about 5.5 to about 8.5” in lines 2-3 which is the narrower statement of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower ranges will be considered to be optional.
Claim 10 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 10 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
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 10 recites the broad recitation “at least about 5 m2/g” in line 2, and the claim also recites “at least about 10 m2/g” in line 2 which is the narrower statement of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower ranges will be considered to be optional.
Claim 11 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 11 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
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 11 recites the broad recitation “less than about 1 micron” in line 2, and the claim also recites “less than about 0.1 micron” in line 2 which is the narrower statement of the range/limitation. The claim(s) are 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. For the purposes of examination, the narrower ranges will be considered to be optional.
Claim 12 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 12 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
Claim 13 contains the limitation “the nanocellulose” in line 1. It is unclear which of the “one or more nanocelluloses” in line 3 of claim 1, from which claim 13 depends, this is intended to refer to. For the purposes of examination, “the nanocellulose” will be considered to mean “one of the one or more nanocelluloses”.
Claim 13 contains the limitation “the functional agent” in lines 1-2. It is unclear which of the “one or more functional agents” in line 2 of claim 1, from which claim 13 depends, this is intended to refer to. For the purposes of examination, “the functional agent” will be considered to mean “one of the one or more functional agents”.
Claim 13 contains the limitation “greater than about 10:1 to 1:10” in line 3. It is unclear what range this limitation is intended to cover, e.g. the lower limit is intended to be greater than 10:1 and the upper limit is 1:10, the range is intended to be greater than the entire range of “10:1 to 1:10”, etc. For the purposes of examination, “greater than about 10:1 to 1:10” will be considered to mean “greater than about 10:1”.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-7, 11-12, and 14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Luo et al. (U.S. Patent Application Publication 2024/0344272, hereafter Luo ‘272).
Claim 1: Luo ‘272 teaches a barrier coating composition (abstract) comprising:
an aqueous dispersion comprising one or more functional agents (abstract, [0018]-[0020], [0039]-[0041]); and
one or more nanocelluloses (abstract, [0047]-[0051]).
Claim 2: Luo ‘272 teaches that the functional agents can be a combination of sizing agents and wax dispersions, which correspond to the claimed barrier agents ([0018]-[0020]).
Claim 3: Luo ‘272 teaches that the functional agents can comprise a rosin sizing agent ([0020]).
Claim 4: Luo ‘272 teaches that the sizing agent is present in a first dispersion in an amount of 1 to 12 wt% ([0035]) where the first dispersion is present in the barrier coating composition in an amount of 30 to 90 wt% ([0063]). This gives a sizing agent content of 0.3 to 10.8 wt% of the barrier coating composition.
Claim 5: Luo ‘272 teaches that the functional agent can comprise wax dispersions, which correspond to the claimed barrier agents ([0019]).
Claim 6: Luo ‘272 teaches that the wax dispersion barrier agent can be present in a first dispersion in an amount of 35 to 45 wt% ([0035]) where the first dispersion is present in the barrier coating composition in an amount of 30 to 90 wt% ([0063]). This gives a wax dispersion barrier agent content of 10.5 to 40.5 wt% of the barrier coating composition.
Claim 7: Luo ‘272 teaches that the nanocellulose can be micro-fibrillated cellulose ([0050]).
Claim 11: Luo ‘272 teaches that the nanocellulose can have an average width of 0.1 to 1 µm (0055]).
Claim 12: Luo ‘272 teaches that the nanocellulose can be present in a suspension ([0047]-[0051], [0166]).
Claim 14: Luo ‘272 teaches that the barrier coating composition can further comprise a thermoplastic polymer comprising polyesters (abstract, [0170]).
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.
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.
Claim(s) 8 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. ‘272 as applied to claim 1 above.
Claim 8: Luo ‘272 teaches the limitations of claim 1, as discussed above. Luo ‘272 further teaches that the nanocellulose can be present in an amount of 0.1 to 10 wt% of the barrier coating composition ([0050], [0066]).
With respect to claim 8, Luo ‘272 does not explicitly teach that the nanocellulose is present in an amount of 5 wt% to 99.9 wt%.
However, the claimed nanocellulose content range of 5 wt% to 99.9 wt% is obvious over the nanocellulose content range of 0.1 to 10 wt% taught by Luo ‘272 because they overlap. See MPEP 2144.05.
Claim 13: Luo ‘272 teaches the limitations of claim 1, as discussed above. Luo ‘272 further teaches that the nanocellulose can be present in an amount of 0.1 to 10 wt% of the barrier coating composition ([0050], [0066]), and that the functional agents can be a combination of sizing agents and wax dispersions barrier agents ([0018]-[0020]), where the sizing agent is present in a first dispersion in an amount of 1 to 12 wt% ([0035]), where the wax dispersion buffer agent is present in the first dispersion in an amount of from 20 to 60 wt% ([0034]), and where the first dispersion is present in the barrier coating composition in an amount of 30 to 90 wt% ([0063]). This gives a functional agent content of 6.3 to 64.8 wt% of the buffer coating composition.
Therefore, the mass ratio of nanocellulose to functional agent is about 0.0015:1 to about 1.6:1.
With respect to claim 13, Luo ‘272 does not explicitly teach that the mass ratio of nanocellulose and functional agent is greater than about 1:1.
However, the claimed mass ratio of nanocellulose and functional agent of greater than about 1:1 is obvious over the mass ratio of nanocellulose and functional agent of about 0.0015:1 to about 1.6:1 because they overlap. See MPEP 2144.05.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. ‘272 as applied to claim 1 above, and further in view of Nasiri et al. (U.S. Patent Application Publication 2017/0305797, hereafter Nasiri ‘797).
Claim 9: Luo ‘272 teaches the limitations of claim 1, as discussed above. Luo ‘272 further teaches that the nanocellulose can be present in a suspension ([0047]-[0051], [0166]).
With respect to claim 9, Luo ‘272 does not explicitly teach that the suspension has a pH from about 5 to about 10.
Nasiri ‘797 teaches a barrier coating composition (title, abstract). Nasiri ‘797 teaches that the pH of a composition affects the dispersibility of materials in the composition ([0037]). Both Nasiri ‘797 and Lui ‘272 teach barrier coating compositions (‘272, abstract; ‘797, title, abstract).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pH of the suspension in the composition taught by Luo ‘272 because the pH of a composition affects the dispersibility of materials in the composition, as taught by Nasiri ‘797. See MPEP 2144.05.II.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. ‘272 as applied to claim 1 above, and further in view of Malmborg et al. (U.S. Patent Application Publication 2019/0300677, hereafter Malmborg ‘677).
Claim 10: Luo ‘272 teaches the limitations of claim 1, as discussed above. Luo ‘272 further teaches that the nanocellulose can be micro-fibrillated cellulose ([0050]).
With respect to claim 10, Luo ‘272 does not explicitly teach that the nanocellulose has a BET surface area of at least about 5 m2/g.
Malmborg ‘677 teaches a barrier coating composition comprising micro-fibrillated cellulose (title, abstract, [0036]). Malmborg ‘677 teaches that the micro-fibrillated cellulose can have a specific surface area of from 1 to 100 m2/g (abstract, claim 6). Both Malmborg ‘677 and Luo ‘272 teach barrier coating composition comprising micro-fibrillated cellulose (‘272, abstract, [0050]; ‘677, title, abstract, [0036]).
Luo ‘677 is silent with respect to the surface area of the micro-fibrillated cellulose.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the micro-fibrillated cellulose specific surface area of from 1 to 100 m2/g taught by Malmborg ‘677 as the surface area of the micro-fibrillated cellulose in the barrier coating composition taught by Luo ‘272 because it is a suitable surface area for micro-fibrillated cellulose in a barrier coating composition, as taught by Malmborg ‘677.
Further, it would have been a simple substitution that would have yielded predictable results.
With respect to claim 10, the modified teachings of Luo ‘272 do not explicitly teach that the nanocellulose has a BET surface area of at least about 5 m2/g.
However, the claimed surface area range of at least about 5 m2/g is obvious over the surface area range of from 1 to 100 m2/g taught by the modified teachings of Luo ‘272 because they overlap. See MPEP 2144.05.
Conclusion
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/BG/
/SHAMIM AHMED/ Primary Examiner, Art Unit 1713
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