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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/12/2026 has been entered.
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Applicant argues (pg.7) that Spender fails to disclose the newly claimed “wherein a weight ratio of the one or more glycerides to the one or more fatty acid salts is from about 10:90 to about 90:10”. This is met by a 102/103 rejection below. 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.
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Alternatively, where it is found that Spender does inherently meet the claimed wherein a weight ratio of the one or more glycerides to the one or more fatty acid salts is from about 10:90 to about 90:10. It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to prepare the solution from soybean oil, which comprises 26 wt. % triglycerides as taught by Spender [0118] and varying the reaction completeness to achieve at least 10 wt% triglycerides in the final product to optimize the various constituents found and achieve low viscosity, see [0118].
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 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) 1, 4, 6, 8, 12, 19, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over 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 composition may be comprised of saccharide fatty acid ester compounds, [0115] and the solution to include additives such as calcium stearate [0133], which meets the claimed fatty acid salt as defined in claim 19 below)
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 meets wherein a weight ratio of the one or more glycerides to the one or more fatty acid salts is from about 10:90 to about 90:10
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.
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The limitation “wherein a weight ratio of the one or more glycerides to the one or more fatty acid salts is from about 10:90 to about 90:10” is treated as a previously unappreciated property of a prior art composition because it is apparent that 40-60% by weight unreacted glycerides are present, 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).
Spender further meets 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]).
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 to about 1.0 g/m2).
Alternatively, where it is found that Spender does inherently meet the claimed wherein a weight ratio of the one or more glycerides to the one or more fatty acid salts is from about 10:90 to about 90:10.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to prepare the solution from soybean oil, which comprises 26 wt. % triglycerides as taught by Spender [0118] and varying the reaction completeness to achieve at least 10 wt% (10:90) triglycerides in the final product to optimize the various constituents found and achieve low viscosity, see [0118].
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(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
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.
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/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744
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