Detailed Office Action
The communication dated 11/7/2025 has been entered and fully considered.
Claim 2, 3, 5, 7-10, 13-17, 19-24, 26-27, 30-31, 35-36, 39, and 45-47 have been canceled. Claims 1, 4, 6, 18, 25, 29, 32-34, 44, 50, and 52 have been amended. Claims 1, 4, 6, 11, 12, 18, 25, 28, 29, 32-34, 37, 38, 40-44, and 48-52 are pending.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
ADS
It appears that there is a typo in the applicant’s assignee. The ‘x’ should be an ‘n’.
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Response to Arguments
In light of cancelation the rejections towards claims 22, 24, 45, and 47 have been withdrawn.
In light of amendment the rejection towards claim 29 has been withdrawn.
Applicant argues that XU does not describe “Specifically, Xu does not describe, suggest, or hint that a deposition inhibitory composition should or could be formulated to be "effective (1) to increase pulp drainage characteristics of the treated virgin dried pulp by more than 5%, (2) to improve tensile strength by more than 5% of sheets produced from the treated virgin pulp, or (3) both, as compared to similar...dried...pulp that was not enzyme treated, after the treated...dried...pulp is repulped”
XU treats the pulp with a formulation containing cellulase just as the applicant and at an amount that falls within the amount of the instant specification. Each of these specific properties are dependent on how the pulp sheets are made into paper. For example drainage aids or starch could be added in lower amounts in the comparison pulp made into paper or the comparison pulp could be refined at different levels.
Further, the applicant argues that not all cellulase treatments results in an improvement in freeness.
In response the claims only require at least one of increase in tensile or freeness. Each and every example given by the applicant with cellulase increases the strength by over 5%. Specifically even ‘D’ which is cellulase alone increases tensile by over 5%. Likewise as the Examiner commented above this comparison is wholly dependent on how the paper is made. When testing drainage aids or starch could be added in lower amounts in the comparison pulp made into paper or the comparison pulp could be refined at different levels.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 6, 25, 34, and 34 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 4, 6, and 34 limit the pulp virgin pulp at a virgin pulp mill. However, independent claims 1 and 33 already claim that the pulp is virgin pulp (and hence at a virgin pulp mill). Further claim 1 already discloses market pulp sheets, bales of market pulp sheets or dried crumble pulp. Therefore it is not clear how these claims further narrow the independent claims.
Claims 25 limits the pulp to market pulp sheets, bales of market pulp sheets, or dried crumble pulp. However, independent claims 1 already claims market pulp sheets, bales of market pulp sheets, or dried. Further in claim 1 the addition of enzymes is prior to manufacture of paper at a paper making plant.
Claim 32 limits the pulp to market pulp sheets, bales of market pulp sheets, or dried crumble pulp. However, independent claims 1 already claims market pulp sheets, bales of market pulp sheets, or dried. Therefore it is not clear how these claims further narrow the independent claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 4, 6, 11, 12, 18, 25, 28, 29, 32-34, 37, 38, 40-44, and 48-52, are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. 2008/0169073 XU et al., hereinafter XU, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK, as evidenced by U.S. 2011/0253333 BAN et al., hereinafter BAN.
As for claims 33 and 34, XU teaches that pulp can be dried on a pulp machine [0028]. A pulp machine makes pulp sheets. Specifically, XU has a reel on the pulp machine [0028]; a reel is a roll of wound-up sheet of paper or pulp. XU discloses bleached hardwood kraft pulp [0036] which is a virgin pulp [0034]. XU teaches treating the pulp before dewatering/drying at the headbox [0030; note both paper machines and pulp machines have headboxes]. XU teaches one of enzyme including cellulases, pectinases, and hemicellulases [claim 2]. XU discloses up to 10,000 ppm per ton of pulp combined enzyme/cationic agent (1% or less enzyme) [0026]; the enzyme is used at a much higher concentration than the surfactant [pg. 4 Table 1]. Further, XU disclose the specific amount of 250 ppm enzyme or 0.025% [pg. 4 Table 1]. Although unclaimed the applicant applies 0.001% to 0.4% enzyme [instant spec pg. 13 lines 5 to 10]. Therefore, XU uses an effective amount of enzyme (wherein the administered enzyme formulation is effective (1) to increased increase pulp drainage characteristics of the treated virgin dried pulp by more than 5%, (2) to improve tensile strength by more than 5% of sheets produced, or (3) both, as compared to similar virgin dried pulp that was not enzyme treated, after the treated virgin dried pulp is repulped at a paper making plant,).
As substantially the same enzymes are used it is the examiners position that at least one of increasing drainage or improving sheet strength when repulped will occur (wherein the administered enzyme formulation is effective (1) to increased increase pulp drainage characteristics of the treated virgin dried pulp by more than 5%, (2) to improve tensile strength by more than 5% of sheets produced, or (3) both, as compared to similar virgin dried pulp that was not enzyme treated, after the treated virgin dried pulp is repulped at a paper making plant). XU need not recognize that this feature is present as it in fact forms the product that is claimed. Nevertheless, the prior art recognizes that cellulase increase drainage as evidenced by BAN [0003].
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.
Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)
Notably, the applicant is claiming differences in paper made from the pulp sheets. There is nothing in the claims that limits the presence of strength agents or drainage aids being added during papermaking [SMOOK pg. 220 Table 15-1] or performing different amounts of refining [SMOOK pg. 206 Figure 13-23].
As XU teaches treating pulp after bleaching with the same claimed enzymes before dewatering/drying on a pulp machine it is the examiners position that substantially the same product will be made.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion.
In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.
In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983)
The applicant claims strength of the enzymes used (herein the enzyme formulation has cellulase activity ranging from about 5 to 600 units of cellulase enzymatic activity per 100 gram oven dried fiber, and wherein the enzyme composition does not contain lipase). However, claiming the strength of the enzyme used without the amount of the enzyme, properties of the starting pulp, and treatment conditions does not result in a patentable difference. To put it in a simple analogy, it would be like claiming concentration of a sulfuric acid and not claiming the starting pH of the of the mixture which the sulfuric acid is being added to, or the total amount of sulfuric acid added.
In the alternative, the differences between the claimed product by process and product of XU are obvious through routine changes to pulping or bleaching or refining.
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith."
In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
XU discloses a pulp machine. A pulp drying machine can either produce dry lap or wetlap. Therefore the person of ordinary skill in the art would instantly envisage either wetlap or drylap pulp.
The Examiner argued that a pulp machine can make both wetlap or drylap pulp and therefore the claim limitation is anticipated. In the alternative SMOOK discloses that a pulp machine can make wetlap or drylap. At the time of the invention the person of ordinary skill in the art would be motivated to make drylap pulp when the shipping distances are large and wetlap pulp when the shipping distances are small (while saving the cost of drying) by SMOOK [pg. 126 section 9.9]. The person of ordinary skill in the art would expect success as both methods are known pulp shipping methods.
XU discloses a pulp machine with a reel. A reel implies that the pulp produced is in a roll and not individualized bales or sheets. SMOOK discloses that pulp machines can produce dried rolls of pulp or sheets [pg. 126 col. 1 section 9.9]. At the time of the invention it would be obvious to cut the pulp of XU into sheets substituted for rolls. It is prima facie obvious to substitute one known method for pulp storage for another known method for pulp storage absent evidence of unexpected results. The person of ordinary skill in the art would expect both rolls of pulp or sheets of pulp to be shippable to a paper mill for making paper.
As for claims 37 and 38, these are product by process limitations. Whether the enzyme was a liquid or solid before being added to an aqueous furnish should not affect the final product. In any case XU discloses that the formulation can be added as a powder or an aqueous solution [0032].
As for claims 40-43, these are product by process limitations. The applicant must show that they change the product formed. In any case XU discloses 25 to 90 degrees C which falls within the claimed range [0027]. XU discloses a pH of 4.5 to 9.5 which falls within the claimed range [0027]. The time from adding the enzyme in the headbox to complete pressing/drying would be over 1 minute. Further, the enzymes would remain with the pulp on the reel to further processing. XU discloses adding to the headbox. A headbox has a consistency of about 1% which falls within the claimed range [as evidenced by SMOOK].
As for claim 44, as the product of XU is treated in substantially the same way and future products made from the pulp of XU will have altered properties.
As for claim 48, this is a future intended use of the pulp product of XU and is not limiting.
As for claims 1, 25, 32, and 52, XU teaches all the features as per above including adding the claimed enzymes at the headbox before dewatering and drying in a pulp machine. In claims 1 and 52 applicant claims that the enzyme is added after dewatering and drying. This is a product by process limitation and is not limiting unless the applicant shows the product is different when the enzyme is added before dewatering and drying.
Nevertheless, XU discloses adding the enzyme to the surfaces where can be exposed to pitch [0028]. This includes rolls and felts which are part of dewatering and drying. XU further states all surfaces to the reel of the pulp machine [0028]. The reel is after the dryer section. When the composition is placed on these surfaces some will transfer to the surface of the pulp; thereby meeting the product by process limitation.
As for claim 4, 6, 50, and 51, XU discloses a virgin hardwood pulp [0010, 0036].
As for claims 11 and 12, these are product by process limitations. Whether the enzyme was a liquid or solid before being added to an aqueous furnish should not affect the final product. In any case XU discloses that the formulation can be added as a powder or an aqueous solution [0032].
As for claim 18, as the product of XU is treated in substantially the same way and future products made from the pulp of XU will have altered properties.
As for claim 28 and 49, this is a future intended use of the pulp product of XU and is not limiting.
As for claim 29, XU discloses one or more enzymes [claim 2].
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748