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 .
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
Applicant argues (pg.7) that “Spender discloses that specific sucrose fatty acid esters may be prepared by trans-esterification of sucrose from methyl ester feedstocks which have been prepared from glycerides” and (pg. 8) “Spender does not disclose that such triglycerides are present in the composition including the saccharide fatty acid esters disclosed therein” are not found persuasive. In fact, Table 1 of the instant specification, exert below, discloses that formulations marketed as “saccharide fatty acid ester” are found to contain 40 to 60% by weight unreacted glycerides. Thus, it appears that the present claims describe a new property of the previously disclosed composition. Applicant has not provided evidence that the prior art composition is 100% free of glyceride.
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Examiner notes that the claim 1 is met by even trace amounts of glycerides and claim 33 is met by of “one or more glycerides and/or one or more fatty acid salts is from about 0.1:99.9”. Examiner notes that the product of Spender can be presumed to have at least trace amounts of glyceride given the disclosure of the instant specification that similar products contain 40 to 60% by weight glycerides, while being labeled as fully reacted into a different product.
This limitation is treated as a previously unappreciated property of a prior art composition, see §MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP §2112.01. Therefore, the claimed presence of glycerides is presumed inherent, given that Table 1 of the instant specification discloses that formulations marketed as saccharide fatty acid ester are found to contain 40 to 60% by weight unreacted glycerides.
Applicant argues (pg. 10) that the claimed “wherein the blend of the one or more glycerides and the one or more fatty acid salts is present at a coating weight of at least about 0.05 g/m2 on the substrate” is not met by Spender. Spender paragraph [0120] teaches a coating weight of at least about 0.1 g/m2 about 1.0 g/m2. Examiner contends the difference between “about 0.05” and “about 0.1” overlaps given the instant claims and specification do not give a definition of the term “about”. Overlapping or touching ranges anticipates the prior art if the prior art discloses the claimed ranged with sufficient specificity, see MPEP § 2131.03(II).
Applicant argues (pg. 10) that “to the extent Spender discloses a coating weight, it is simply with respect to a saccharide fatty ester on a cellulose-based material and not with respect to a blend as presently claimed” but this is not found persuasive. Spender para. [0114] discloses “ [a]s used herein the terms “saccharide fatty acid esters” and “sucrose fatty acid ester” include compositions possessing different degrees of purity as well as mixtures of compounds of any purity level.”. Thus is appears that Spender is disclosing a mixture applied to have a total coating of about 0.1 to about 1.0 g/m2-.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 4, 6, 8, 12, 19, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spender et al. (US 2018/0066073 A1).
Regarding claim 1, Spender meets the claimed method of imparting a hydrophobic and/or lipophobic (increased hydrophobicity and/or lipophobicity [0008]) barrier properties to a substrate, the method comprising: preparing a formulation for imparting the hydrophobic and/or lipophobic barrier properties to the substrate, the formulation comprising a blend of one or more glycerides (Spender teaches preparing the solution from soybean oil, which comprises 26 wt. % triglycerides [0118], which meets the claimed glycerides as defined in claim 12 below) and/or one or more fatty acid salts; (Spender teaches the solution to include additives such as calcium stearate [0133], which meets the claimed fatty acid salt as defined in claim 19 below) wherein the salt is a calcium salt, (calcium stearate) a potassium salt, or a sodium salt and contacting a surface of the substrate with the formulation to impart the hydrophobic and/or lipophobic barrier properties to the substrate. (be applied to cellulosic fibers or pre-formed materials, [0008], to cause the bound cellulose-based material to exhibit a water contact angle of equal to or greater than 90°, see [0009]) wherein said substrate comprises a cellulosic substrate. (be applied to cellulosic fibers or pre-formed materials, [0008]).
The limitation “one or more glycerides” is treated as a previously unappreciated property of a prior art composition, see §MPEP 2112 “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP §2112.01. Therefore, the claimed presence of glycerides is presumed inherent, given that Table 1 of the instant specification discloses that formulations marketed as saccharide fatty acid ester are found to contain 40 to 60% by weight unreacted glycerides.
Spender further teaches the claimed wherein the blend of the one or more glycerides and the one or more fatty acid salts is present at a coating weight of at least about 0.05 g/m2 on the substrate. (Spender paragraph [0120] teaches a coating weight of at least about 0.1 g/m2 about 1.0 g/m2). Examiner contends the difference between “about 0.05” and “about 0.1” overlaps given the instant claims and specification do not give a definition of the term “about”. Overlapping or touching ranges anticipates the prior art if the prior art discloses the claimed ranged with sufficient specificity, see MPEP § 2131.03(II).
Regarding claim 4, Spender meets the claimed wherein the step of contacting comprises forming a solution of the formulation and cellulose fiber. (the cellulose-based material is a solution containing cellulose fiber, the SFAE is present at a concentration of at least 0.025% (wt/wt) of the total fiber present [0011])
Regarding claim 6, method claim 4, further comprising forming a solid article using the solution, the solid article (the resulting solid cellulose-containing material is contained cellulosic material… that is molded, [0021]) possessing the hydrophobic and/or lipophobic barrier properties. (provides increased hydrophobicity and/or lipophobicity, [0008]).
Regarding claim 8, Spender meets the claimed wherein the step of contacting comprises coating the surface (be applied to cellulosic fibers or pre-formed materials, [0008], coating on the cellulose-based material [0011]) of the substrate with the formulation.
Regarding claim 12, Spender meets the claimed method of claim 1, wherein the one or more glycerides comprises one or more monoglycerides, one or more diglycerides, and one or more triglycerides. (Spender teaches preparing the solution from soybean oil, which comprises 26 wt. % triglycerides [0118])
Regarding claim 19, Spender meets the claimed method of claim 1, wherein the one or more fatty acid salts comprises one or more of calcium oleate, calcium stearate,(calcium stearate [0133]) and calcium palmitate.
Regarding claim 22, Spender meets the claimed method of claim 1, wherein the formulation further comprises one or more saccharide fatty acid esters. (the composition may be comprised of saccharide fatty acid ester compounds, [0115]).
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spender et al. (US 2018/0066073 A1) in view of Krzysik et al. (US 2003/0077962 A1).
Regarding claim 13, Spender does meet the claimed the method of claim 1, wherein the one or more glycerides comprises tripalmitin and/or tristearin.
Krzysik teaches wherein the one or more glycerides comprises tripalmitin and/or tristearin. (natural fat or oil or a mixture [0043] including tripalmitin, tristearin,[0044])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to select the tripalmitin or tristearin glyceride of Krzysik for coating cellulose products in the cellulose coating composition of Spender because they are suitable natural fats or oils materials Krzysik [0043] and Spender teaches a glyceride from natural sources [0118].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spender et al. (US 2018/0066073 A1) in view of Mizukami et al. (US 2019/0177916 A1).
Regarding claim 16, Spender meets the claimed 16. (original): The method of claim 1, wherein the one or more fatty acid salts comprises one or more of sodium oleate, sodium stearate, sodium palmitate.
Spender teaches the composition to include additives such as calcium stearate, lecithin oleate [0133].
Mizukami meets the claimed wherein the one or more fatty acid salts comprises one or more of sodium oleate, sodium stearate, sodium palmitate. (Examples of the anionic surfactant include sodium oleate, potassium oleate, [0106]).
The courts have held that simple substitution of one known element for another to obtain predictable results would have been obvious to one of ordinary skill in the art before the effective filing date of the present application, see MPEP § 2143(I).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to substitute the sodium oleate of Mizukami in place of the lecithin oleate of Mizukami because it yields the predictable result of facilitating the penetration of a materials in a cellulose fiber-containing material, see Mizukami [0103].
Claim(s) 23, 27, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spender et al. (US 2018/0066073 A1).
Regarding claim 23, Spender meets the claimed method of claim 1, wherein the formulation further comprises one or more saccharide fatty acid esters, (the composition may be comprised of saccharide fatty acid ester compounds, [0115]) the substrate comprises cellulose fiber, (cellulose-based material [0120]).
Spender does not explicitly teach a concentration of the saccharide fatty acid esters is 10% (wt/wt) to 25% (wt/wt) of the total cellulose fiber present in the formulation.
Spender teaches saccharide fatty acid ester compounds about 5.0% (wt/wt) to about 10% (wt/wt), about 10% (wt/wt) to about 50% (wt/wt) of the total fiber present, see [0120].
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the wt/wt ratio of saccharide fatty acid ester to the cellulose fiber to achieve the claimed 10% to 20% in order to achieve optimal hydrophobicity depending on the form of the cellulose-based material, see [0120].
Regarding claim 27, Spender as modified meets the claimed method of claim 23, wherein the formulation further comprises one or more pigments, (pigments [0133]) and the one or more pigments have been pre-treated by contacting the pigment with a glyceride, a fatty acid salt, and/or a saccharide fatty acid ester (the SFAE may be crosslinked to a surface (e.g., activated clay/pigment particles), see [0105]) for a sufficient time to bind the glyceride, fatty acid, and/or saccharide to pigment. (Examiner notes the method of Spender inherently includes sufficient time, when teaching the SFAE is crosslinked to the pigment particle).
Regarding claim 33, Spender meets the claimed wherein the formulation further comprises a cationic polymer, (cationic glyoxylated resins, [0087]).
Spender does not teach a weight ratio in the formulation of the cationic polymer to the blend of one or more glycerides and/or one or more fatty acid salts is from about 0.1:99.9 to about 20:80.
Spender teaches the wet strength is typically effected by wet strength additives such as cationic glyoxylated resins, [0087].
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary the amount of cationic polymer to achieve the claimed 0.1:99.9 to about 20:80 in order to achieve optimal wet strength, see Spender [0087].
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et al. (CN 107287976 A) teaches e mentioned a kind of napkin paper with high quality, wherein the softening agent in step (1) is tristearin, diethylenetriamine and dimethyl sulphate in the any one kind of, see claim 4.
Chen et al. (CN 106835855 A) A corrosion-proof wall paper of the invention, comprising a substrate layer coated with tristearin… applied to preparing waterproof layer can effectively increase the hydrophobic property of the waterproof, see Abstract.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL M. ROBINSON whose telephone number is (571)270-0467. The examiner can normally be reached Monday-Friday 9:30AM-6PM.
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, Sam Zhao can be reached on (571)270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744