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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/15/2025 has been entered.
Response to Arguments
Applicant’s arguments, filed 10/15/2025, have been fully considered and are persuasive. The previous examiner mischaracterized the disclosure of Lepo as indicating that an amount of 1.0 to 10.0 kg/t of starch is added to the paper. Lepo expressly states “Dosing of the sizing agent composition into surface sizing starch is from 0.1 to 10 kg/t, preferably from 0.5 to 5 kg/t as dry actives.” [0075]. Lepo fails to disclose the amount of starch added to the paper. In addition, the surface sizing composition of Lepo comprising a polymeric sizing agent, starch and lignosulfonate is applied to the surface of a paper or board rather than incorporated in the furnish used to make the paper or board. As such, the starch containing surface sizing composition would have remained on the surface of the paper or board with minor or no penetration into the body of the paper or board as opposed to being uniformly distributed throughout the paper or board as would be expected in the claimed paper or board.
The rejections of claims over the prior art have been withdrawn. However, upon further consideration, new grounds of rejection are made as detailed herein.
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 14, 16-19, 21-23 and 26-27 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 14 recites the limitation “A paper comprising cellulose fibers dosed with 1.0 to 1.5% in weight of microfibrillated cellulose and starch in an amount of 1.0 to 10.0 kg/ton of pulp”. It is not clear if the 1.0 to 1.5% in weight of microfibrillated cellulose is based on the weight of the cellulose fibers or on the weight of the paper
Claim 14 also recites the limitation “the paper is made from a cellulose pulp”. It is not clear if a cellulose pulp refers to the cellulose fibers recited earlier in the claim or to a different cellulose pulp.
Claim 16 recites the limitation “mixing 1.0 to 1.5% in weight of microfibrillated cellulose (MFC) and 1.0 to 10.0 kg/t of starch with a cellulose pulp”, It is not sure if the weight percentage of microfibrillated cellulose is based on the weight of pulp, the pulp mixture or the weight of the paper made. It is also not clear if the weight per ton of starch is based on the weight of pulp, the pulp mixture or the weight of the paper made.
The remaining claims depend from and inherit the indefiniteness of a rejected claim and are also rejected.
Allowable Subject Matter
Claims 14 and 16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 17-19, 21-23 and 26-27 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Tajvidi et al is the nearest prior art. The prior art fails to disclose a paper and process for making the paper having the composition as currently claimed the prior art further provides no motivation to one of ordinary skill in the art to modify the paper of Tajvidi et alto obtain make a paper having the claimed composition with an expectation of gaining an advantage.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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.
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.
/DENNIS R CORDRAY/ Primary Examiner, Art Unit 1748