Detailed Office Action
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/2026 has been entered.
Claims 1 and 2 have been amended. Claims 21-25 are new. Claims 7-13 have been canceled. Claims 1-6 and 14-25 are pending with claims 14-20 have been withdrawn from consideration
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
The applicant argued that the prior art discloses at most 50% BSG and the remainder other papermaking fibers. The Examiner has withdrawn the prior reference in lieu of STEHLIN which discloses papermaking with only brewer spent grains and hops without the necessary addition of other papermaking fibers.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 144,294 STEHLIN, hereinafter STEHLIN.
As for claims 1, 5, and 6, STEHLIN discloses taking used grains and hops and from a brewery and processing them to form paper [col. 2 lines 20-22]. The “serves as packaging for one or more other products” is an intended use of the shaped material. Nevertheless, paper can be used as packaging to wrap things or in a box as cushioning.
STEHLIN discloses only hops and grain and does not mention “spices” which the Examiner has interpreted as meaning ‘0’ spices by weight which falls within the claimed range. Further, it would be obvious to not have any spices in beers as they are optional additives and in some styles of beer not allowed (German beer purity law, Reinheitsgebot limiting beer to water, hops, barely, and yeast).
STEHLIN does not give the exact concertation divide between the grains and hops. However, differences in concentration will not support non-obvious absent evidence of criticality. In the instant case the applicant’s specification has not shown criticality.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
(Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
Further, the Examiner doubts the applicant could show criticality because of the broad recitation of ‘grains’. The type of grains used will have different effects on the final product (barley, wheat, rice) each with different fiber sizes.
Alternatively, STEHLIN recognizes that the hops are thinner fibers [col. 2 par. 1] and therefore would look to optimize the paper properties via optimizing the amount of thin fibers through routine experimentation.
In addition to the above as for claim 5, STEHLIN discloses malt as one of the grains [col. 1]. The Examiner takes Official Notice that wheat is a known grain used in beer making including wheat beers. At the time of the invention it would be obvious to obtain brewer spent grains from all types of styles of beers including those made with wheat. It is prima facie obvious to combine one known grain intended for making beer with another known grain intended for making beer.
Claims 2-4 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 144,294 STEHLIN, hereinafter STEHLIN, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 2, 21, 24, and 25, STEHLIN teaches the features as per above. STEHLIN discloses a roller treatment of hops and grains [col. 1 par. 3] which the Examiner interprets as shredding under BRI in light of the specification [instant specification discloses gears which are rotating mechanical features which crush the fibers]. STEHLIN additionally teaches that the fibers are diluted to form a pulp prior to papermaking [col. 2 par. 1 “pulpy mass”].
The Examiner has argued that the roll press reads on “shredding”. In the alternative SMOOK discloses beating and refining [pg. 195 col. 2 section 13.2]. SMOOK discloses that beating and refining increases the strength of paper made the fibers. The refiners use blades [bars, pg. 204 Figure 13-21 and decrease fiber size [pg. 197 table 13-1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to refine the pulp of STEHLIN as suggested by SMOOK. The person of ordinary skill in the art would be motivated to do so by SMOOK to increase tensile and burst strength [pg. 206 figure 13-23 and 13-24].
As for claim 3, 4, 22, and 23, STEHLIN discloses papermaking but does not disclose how papermaking occurs. SMOOK discloses that papermaking is done on a fourdrinier paper machine. SMOOK discloses that the pulp is sprayed [pg. 228 col. 2 par. 2] from the headbox onto a forming screen pressed and dried [press and drying are curing; pg. 228 Figure 16-1]. The paper is then collected onto a roll after being produced [pg. 228 Figure 16-1].
At the time of the invention it would have been obvious t the person of ordinary skill in the art to make the paper of STEHLIN by combining with the convention papermaking process of SMOOK. The papermaking process of SMOOK and the pulp making process of STEHLIN both perform the same functions as they would have separately [MPEP 2143 (I) (A) (2)]. The person of ordinary skill in the art would expect success as fourdrinier papermaking is the known and convention papermaking process since the early 1800’s [pg. 228 col. 1 par. 2].
Conclusion
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.
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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
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