DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 25 2025 has been entered.
Receipt of Arguments/Remarks filed on September 25 2025 is acknowledged. Claims 2 and 7 were/stand cancelled. Claim 8 and 22 were amended. Claims 23-28 were added. Claims 1, 3-6 and 8-28 are pending.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23, 25 and 27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
Claims 23, 25 and 27 introduce new matter as the claims recite the limitation: "wherein the concentration of the silver ion coating is 2% and a concentration of citric acid in the silver ion coating is 58%.” There is no support in the specification for this limitation. The limitation of: "the concentration of the silver ion coating is 2% and a concentration of citric acid in the silver ion coating is 58% " was not described in the specification as filed, and person skilled in the art would not recognize in the applicant’s disclosure a description of the invention as presently claimed. The specification discloses (paragraph 037 of the specification as originally filed, paragraph 0040 of the published application as pointed to by Applicants) states 2% silver chloride in solution is mixed with 58% citric acid in solution at a rate of 20% 2% silver chloride in solution and 80% 58% citric acid in solution. But this would not result in 58% of citric acid in the silver ion coating but instead results in 46.4% as the final concentration ((80/100)*58%) and thus does not describe the instantly claimed limitation. Therefore, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
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 23, 25 and 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.
Claims 23, 25 and 27 as currently written are vague and indefinite. Firstly, the claims refer to a concentration of critic acid but the claims depend from claim 1 and claim 6 but neither of these claims indicate that citric acid is present (this only shows up in claims 12, 16 or 20). Secondly, the claim recites the concentration of the silver ion coating is 2% and the concentration of citric acid in the silver ion coating is 58%. However, the concentrations are not clear. As written, it seems like the claim is saying the citric acid is present in 58% of 2% (since the silver ion coating is 2% and the concentration of silver in the coating is 58%). But the instant specification (paragraph 037 of the specification as originally filed, paragraph 0040 of the published application as pointed to by Applicants) states: 2% silver chloride in solution is mixed with 58% citric acid in solution at a rate of 20% 2% silver chloride in solution and 80% 58% citric acid in solution. This suggests the citric acid is in a solution of 58% and this is mixed with a 2% silver chloride solution. But this would not result in 58% of citric acid in the silver ion coating but instead results in 46.4% as the final concentration ((80/100)*58%). Therefore, the scope of the concentration of citric acid and silver is not clear.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3-4, 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. (USPGPUB No. 20070154506, cited in the Office action mailed on April 24 2023) in view of Yang (KR200372808Y1, cited in the Office action mailed on September 9 2024).
Applicant Claims
The instant application claims an absorbable paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion coating has a concentration of 1 to 10% by volume and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product.
The instant application claims a silver-ion containing paper product, comprising: a sheet of material having a first side and a second side; and a coating of silver-ion solution comprising a concentration of 1% to 10% by volume and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product.
Paragraph 018 of the specification as filed states that the term ppm refers to the µg of silver per one gram of the cellulose fiber-based product. This is where support for the instant limitations are found. Therefore 2 to 50 micrograms of silver per gram of the absorbable paper product is the same as 2 to 50 ppm.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Patton et al. is directed to antimicrobial agent to inhibit the growth of microorganisms on disposal products. Claimed is an article comprising a structure having fibers and silver halide particles bound to the fibers (claim 1). The structure can be a shoe liners, paper towels, facial tissues, etc. (claim 16). In general, the articles are disposable health care items (paragraph 0040). Typical levels of silver salt particles in the formulation are from 0.000001% to about 10% (paragraph 0047). The amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating (paragraph 0046).
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
Patton et al. teaches an overlapping range of silver in the coating but does not specify the amount of silver per gram of paper. However, this deficiency is cured by Yang.
Yang (wherein the machine translation is utilized and attached with this office action) is directed to nano silver containing pulp. The pulp is used to make paper products such as toilet paper, paper towels. The silver provides powerful germicidal and antibacterial properties to the paper (abstract). As claimed the silver powder is used in a range of 2 to 999 ppm weight ratio to the pulp-containing raw material. As claimed the silver in the liquid is in an amount from 0.01 to 10% (claims, see also advantageous-effects).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al. and Yang and manipulate the amount of silver in the paper product. Since the silver is taught as antimicrobial by both Patton et al. and Yang, it would have been obvious to one skilled in the art to manipulate the amount in the final paper product to achieve the desired effect. Since Yang teaches concentration in the formulation which overlap with not only the instant claims but also Patton et al. and suggests that the concentration in the paper is in an overlapping range (i.e. 2 to 999 ppm), one skilled in the art would have been motivated to determine the optimal amount of silver. Therefore the amount recited in claims 1, 9 and 14 overlaps with the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Furthermore, it is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Given that applicant did not point out the criticality of silver of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05.
Regarding the claimed first and second side, paper is inherently two dimensional and therefore inherently has a first and second (top and bottom) side.
Regarding the claimed napkin and paper towel, Patton et al. expressly teaches a paper towel. The recitation napkin does not structurally distinguish the claimed paper product from the prior art. It is noted that changes in size and shape are not a patentable modification absent a demonstration of the criticality. MPEP 2144.04.
Claims 1, 3-4, 6, 8-9, 14 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang as applied to claims 1, 3-4, 9 and 14 above in view of Barry et al. (WO 0051477, cited on PTO Form 1449).
Applicant Claims
The instant application claims an anti-microbial paper product, comprising: at least one layer of material having a first side and a second side; at least one rounded corner; and a silver ion coating on at least one side, wherein the silver ion coating has a concentration of 1 to 10% by volume, and wherein an amount of silver in the antimicrobial paper product ranges from 2 to 50 micrograms of silver per gram of the anti-microbial paper product.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Yang are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches disposable paper articles with silver, Patton et al. does not expressly teach a paper product with rounded corners. However, this deficiency is cured by Barry et al.
Barry et al. is directed to a placemat (aka tray mat) having antimicrobial agent. Placemats made of natural material such as paper is taught (page 4, lines 7-10). Antimicrobial metals include silver (page 5, lines 26-32). As shown in figure 1, placemats have rounded corners. It is generally taught that placements can be in contact with bacteria which can be transferred to utensils (page 1).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang and Barry et al. and utilize the paper article of Patton et al. as a placemat. One skilled in the art would have been motivated to utilize the paper article with silver of Patton et al. as a placement in order to reduce bacteria which can be transferred to utensils as taught by Barry et al. Since Barry et al. teaches silver containing placemats there is a reasonable expectation of success.
Regarding claim 18, Since Yang teaches concentration in the formulation which overlap with not only the instant claims but also Patton et al. and suggests that the concentration in the paper is in an overlapping range (i.e. 2 to 999 ppm), one skilled in the art would have been motivated to determine the optimal amount of silver. Therefore the amount recited in claim 18 overlaps with the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Claims 1, 3-5, 9-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang as applied to claims 1, 3-4, 9 and 14 above in view of Bhat et al. (USPGPUB No. 20060042767, cited in the Office action mailed on April 24 2023).
Applicant Claims
The instant application claims the at least one layer of material includes at least one dimple, ridge, bump, or recess. The instant application claims the sheet of material includes at least one preformed fold or perforation. The instant application claims the sheet of material includes a first ply and a second ply.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Yang are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product, Patton et al. does not specify the paper product has a ridge or perforation or the number of ply. However, these deficiencies are cured by Bhat et al.
Bhat et al. is directed to multi-ply paper product with moisture strike through resistance and method of making the same. Taught is a two-ply napkin or paper towel. In an effort to meet divergent demands, paper products are often made from one or more paper plies that are joined together to form the finished product (paragraph 0002-0003). As few as two plies is taught (paragraph 0005). Microembossing of the paper is taught (paragraph 0006). Perforations are taught (paragraph 0091). Plying may be accomplished by several different techniques. One way is a point to point configuration which implies that the plies being glue laminated have been embossed or otherwise marked in some fashion to create points, ridges, waves, lines or some form of protrusion(s) that may be either registered together or nested to form the plied product (paragraph 0074).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang and Bhat et al. and utilize a multi-ply paper product. One skilled in the art would have been motivated to make a multi-ply paper product in an effort to meet divergent demands as taught by Bhat et al. Since Patton et al. teaches a paper product there is a reasonable expectation of success.
Regarding claims 5 and 10, Bhat et al. teaches plying results in embossing which results in ridges or protrusions. Bhat et al. teaches the paper has perforations.
Claims 1, 3-4, 9, 12-14, 20-21, 23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang as applied to claims 1, 3-4, 9 and 14 above and in further view of Djokic (Bioinorganic Chemistry and Application, 2008, cited in the Office action mailed on September 9 2024).
Applicant Claims
The instant application claims the silver ion coating comprises citric acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Yang are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product with silver, Patton et al. does not teach the inclusion of citric acid. However, this deficiency is cured by Djokic.
Djokic teaches that the combination of silver ions with citrate ions can be very attractive for biomedical or pharmaceutical/therapeutic applications. It is reasonable to assume that silver citrate complexes would act synergistically as antimicrobial agents (page 1 last complete paragraph). It was shown that diluted silver citrate/citric acid complexed solutions exhibited very strong bacteriostatic and bactericidal activities (page 7, section 4 and table 2). Concentrated citric acid solution 3 mol/L to 4 mol/L is taught (corresponding to 34.7% to 46%) (page 4).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang and Djokic and utilize citric acid with the silver taught in Patton et al. One skilled in the art would have been motivated to utilize citric acid as it is taught as synergistic with the silver by Djokic. Since the combination exhibits very strong bacteriostatic and bactericidal activities as taught by Djokic there is a reasonable expectation of success in their combination.
Regarding claim 13 and claim 21, Since Yang teaches concentration in the formulation which overlap with not only the instant claims but also Patton et al. and suggests that the concentration in the paper is in an overlapping range (i.e. 2 to 999 ppm), one skilled in the art would have been motivated to determine the optimal amount of silver. Therefore the amount recited in 13 and renumbered claim 21 overlap with the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the claimed concentration in claim 23 and 27, Patton et al. teaches the amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating. Djokic teaches forming solution wherein the silver ion concentration is 100 ppm and teaches 18g/L silver which corresponds to 1.8 vol% and concentrated citric acid solution 3 mol/L to 4 mol/L is taught (corresponding to 34.7% to 46%). Therefore, one skilled in the art would manipulate the concentration of the silver and citric acid in order to obtain the desired level of bacteriostatic and bacteriocidal activities.
Claims 1, 3-4, 6, 8-9, 14, 16-18, 20-21, 23, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang and in further view of Barry et al. as applied to claim 1, 3-4, 6, 8-9, 14 and 18 above and in further view of Djokic (Bioinorganic Chemistry and Application, 2008, cited in the Office action mailed on September 10 2024).
Applicant Claims
The instant application claims the silver ion coating comprises citric acid.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. and Yang are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product with silver, Patton et al. does not teach the inclusion of citric acid. However, this deficiency is cured by Djokic.
Djokic teaches that the combination of silver ions with citrate ions can be very attractive for biomedical or pharmaceutical/therapeutic applications. Silver in its ionic or complexed form is antimicrobially active (page 1, first paragraph) It is reasonable to assume that silver citrate complexes would act synergistically as antimicrobial agents (page 1 last complete paragraph). It is taught that 1 part of silver citrate is soluble in 3500 parts of water which corresponds to 285 ppm of Ag(I) ion in the solution (page 2 first sentence). The bactericidal activity of silver citrate/citric acid solution containing 100 ppm Ag(I) was the target so solution containing 18 g/L (1.8 vol%) silver ions was diluted with 0.1% citric acid solution (page 2, last paragraph). Silver citrate has very little solubility in water but the addition of citric acid increases it solubility (sections 3.2 and 4). It was shown that diluted silver citrate/citric acid complexed solutions exhibited very strong bacteriostatic and bactericidal activities (page 7, section 4 and table 2). Concentrated citric acid solution 3 mol/L to 4 mol/L is taught (corresponding to 34.7% to 46%) (page 4).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang, Barry et al. and Djokic and utilize citric acid with the silver taught in Patton et al. One skilled in the art would have been motivated to utilize citric acid as it is taught as synergistic with the silver by Djokic. Since the combination exhibits very strong bacteriostatic and bactericidal activities as taught by Djokic there is a reasonable expectation of success in their combination.
Regarding 17, 18 and 21, Since Yang teaches concentration in the formulation which overlap with not only the instant claims but also Patton et al. and suggests that the concentration in the paper is in an overlapping range (i.e. 2 to 999 ppm), one skilled in the art would have been motivated to determine the optimal amount of silver. Therefore the amount recited in claims 17-18 and 21 overlap with the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the claimed concentration in claim 23, 25 and 27, Patton et al. teaches the amount of silver particles applied to the target fiber or textile fabric is determined by the desired durability or length of time of antimicrobial properties. The amount of silver particles present in the composition will depend on whether the composition is one being sold in a concentrated form suitable for dilution prior to coating or whether the composition has already been diluted for coating. Djokic teaches forming solution wherein the silver ion concentration is 100 ppm and teaches 18g/L silver which corresponds to 1.8 vol% and concentrated citric acid solution 3 mol/L to 4 mol/L is taught (corresponding to 34.7% to 46%). Therefore, one skilled in the art would manipulate the concentration of the silver and citric acid in order to obtain the desired level of bacteriostatic and bacteriocidal activities.
Claims 1, 3-4, 9, 14-15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang as applied to claims 1, 3-4, 9 and 14 above and in further view of Schmidt (USPGPUB No. 20100255048, cited in the Office action mailed on September 9 2024).
Applicant Claims
The instant application claims the coating comprises an extender configured to retain the coating within the at least one sheet of material, wherein the extender is selected from the group consisting of ground calcium carbonate, precipitated calcium carbonate, kaolin clay, and talc.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product with silver, Patton et al. does not teach the inclusion of kaolin. However, this deficiency is cured by Schmidt.
Schmidt is directed to a web material. Specifically Schmidt claims a web material made of fibrous cellulose material and one or several antimicrobial substances (claim 1). Silver antimicrobials are claimed (claim 2). It is taught that in addition to antimicrobial substances, the web material can contain other additives such as kaolin (paragraph 0010 and claim 8).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang and Schmidt and utilize kaolin with the silver coating solution of Patton et al. One skilled in the art would have been motivated to utilize customary additives such as kaolin as taught by Schmidt. Since Schmidt teaches the use of the kaolin with antimicrobials such as silver there is a reasonable expectation of success.
Claims 1, 3-4, 6, 8-9, 14-15, 18, 19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view of Yang and in further view of Barry et al. as applied to claim 1, 3-4, 6, 8-9, 14 and 18 above and in further view of Schmidt (USPGPUB No. 20100255048, cited in the Office action mailed on September 9 2024).
Applicant Claims
The instant application claims the coating comprises an extender configured to retain the coating within the at least one sheet of material, wherein the extender is selected from the group consisting of ground calcium carbonate, precipitated calcium carbonate, kaolin clay, and talc.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Yang and Barry et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While Patton et al. teaches a paper product with silver, Patton et al. does not teach the inclusion of kaolin. However, this deficiency is cured by Schmidt.
Schmidt is directed to a web material. Specifically Schmidt claims a web material made of fibrous cellulose material and one or several antimicrobial substances (claim 1). Silver antimicrobials are claimed (claim 2). It is taught that in addition to antimicrobial substances, the web material can contain other additives such as kaolin (paragraph 0010 and claim 8).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang, Barry et al. and Schmidt and utilize kaolin with the silver coating solution of Patton et al. One skilled in the art would have been motivated to utilize customary additives such as kaolin as taught by Schmidt. Since Schmidt teaches the use of the kaolin with antimicrobials such as silver there is a reasonable expectation of success.
Claims 1, 3-5, 9-11, 14, 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view Yang and Bhat et al. as applied to claims 1, 3-5, 9-11, and 14 above and in further view of Cabell et al. (US Patent No. 6458447).
Applicant Claims
The instant application claims wherein the first ply is arranged in a first direction and the second ply is arranged in a second direction, wherein the second direction is perpendicular to the first direction.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Yang and Bhat et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While multiple plies are suggested, the plies being in perpendicular directions is not expressly taught. However, this deficiency is cured by Cabell et al.
Cabell et al. is directed to extensible paper web and method of forming. When made into a multiple ply laminate, webs of the present invention may be positioned in any of various configurations. For example, if both webs of a 2-ply laminate are formed with second regions of rib-like elements , the second regions of each may be positioned such that they are in registry in the laminate structure. Alternatively, it may be beneficial to place the second regions of each ply such that they are out of registry when laminated. Similarly, it may be beneficial to form a multiple ply laminate using a first pattern on one web, and a second, different pattern on the other web.
In the event that extensibility of the paper web is not desired, a multiple ply laminate may be made that has essentially double the bulk of each base web without the extensibility of either base web. This may be accomplished by laminating at least two webs of the present invention, each having major rib axes of second regions being generally perpendicular to the major rib axes of the second regions of the other ply (column 12, lines 36-55; claim 13).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang, Bhat et al. and Cabell et al. and utilize multiple plies which are perpendicular. One skilled in the art would have been motivated to make multi-ply paper product in an effort to meet divergent demands as taught by Bhat et al. Cabell et al. teaches that webs of the present invention may be positioned in any of various configuration including perpendicular. Therefore, this orientation is merely selection of known configurations when using more than one ply.
Regarding claims 5 and 10, Bhat et al. teaches plying results in embossing which results in ridges or protrusions. Bhat et al. teaches the paper has perforations.
Claims 1, 3-4, 6, 8-9, 14, 18, 24, 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Patton et al. in view Yang and Barry et al. as applied to claims 1, 3-4, 6, 8-9, 14 and 18 above and in further view of Cabell et al. (US Patent No. 6458447).
Applicant Claims
The instant application claims wherein the first ply is arranged in a first direction and the second ply is arranged in a second direction, wherein the second direction is perpendicular to the first direction.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
The teachings of Patton et al., Yang and Barry et al. are set forth above.
Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.02)
While multiple plies are suggested, the plies being in perpendicular directions is not expressly taught. However, this deficiency is cured by Cabell et al.
Cabell et al. is directed to extensible paper web and method of forming. When made into a multiple ply laminate, webs of the present invention may be positioned in any of various configurations. For example, if both webs of a 2-ply laminate are formed with second regions of rib-like elements , the second regions of each may be positioned such that they are in registry in the laminate structure. Alternatively, it may be beneficial to place the second regions of each ply such that they are out of registry when laminated. Similarly, it may be beneficial to form a multiple ply laminate using a first pattern on one web, and a second, different pattern on the other web.
In the event that extensibility of the paper web is not desired, a multiple ply laminate may be made that has essentially double the bulk of each base web without the extensibility of either base web. This may be accomplished by laminating at least two webs of the present invention, each having major rib axes of second regions being generally perpendicular to the major rib axes of the second regions of the other ply (column 12, lines 36-55; claim 13).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Patton et al., Yang, Barry et al. and Cabell et al. and utilize multiple plies which are perpendicular. Cabell et al. teaches that webs of the present invention may be positioned in any of various configuration including perpendicular. Therefore, this orientation is merely selection of known configurations when using more than one ply.
Response to Arguments
Applicants’ arguments filed September 25 2025 have been fully considered but they are not persuasive.
Applicants argue that (1) Yang describes a ratio different than the claimed ratio. The claimed ratio is between the masses of silver and the paper product. In contrast Yang describes a ratio between silver powder and the pulp-containing raw material. These teachings reveal nothing about how much silver there is relative to a paper product. Yang teaches the pulp contains significant amount of moisture and other ingredients. These differences are critically important and represent a fatal flaw. Yang cannot teach or suggest the amount of silver in the antimicrobial paper product ranges from 2 to 50 micrograms of silver per gram of the antimicrobial paper product as claimed.
Regarding Applicants’ first argument, the instant application claims an absorbable paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion coating has a concentration of 1 to 10% by volume and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product. Patton et al. teaches a concentration of silver particles in concentration of the coating which overlaps the instant claims. Patton et al. is silent to the concentration in the final paper product on a per gram basis. Yang also teaches a concentration of silver in the liquid which is used to form the silver containing paper, which overlaps not only Patton et al. but the instant claims. Yang exemplifies mixing pulp with nanosilver with a certain weight, either 0.01 to 10% by weight of the formulation or PPM of 2 to 999 in the process of preparing a functional paper with antibacterial effect. The paragraph bridging 7-8 expressly states that by blending or mixing ratio of any combination of a fixed weight ratio between the nano silver PPM 2 to 999 PPM range is to create a germicidal and antibiotic force within the paper. The instant specification teaches using a 2% silver chloride solution to make the paper product (example 1). Example 2 (paragraph 055) states that paper mats were treated with 27 ppm of silver.
Therefore, Applicants arguments are not persuasive because, firstly, based on the example and the language utilized in Yang the examiner cannot agree that this isn’t the amount found in the paper. Page 13 of the machine translation teaches that the nanosilver in 2-999 PPM is used in preparing a functional paper with antibacterial properties suggesting a paper with this concentration. Secondly, these amounts are similar to what is used in the instant specification to make the antimicrobial paper. Furthermore, even if these amounts are not exactly the same both Patton and Yang desire the incorporation of an antimicrobal agent in order to inhibit the growth of microorganisms. One skilled in the art would manipulate the amount in order to achieve the desired effect as previously indicated on page 6 of the previous office action. Furthermore, it is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration 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). Given that applicant did not point out the criticality of the concentration of silver of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. NOTE: MPEP 2144.05. Nothing in the instant specification and the remarks indicate there is criticality with regards to the claimed concentration. Differences in concentrations is not sufficient to establish a patentable difference. The prior art provides clear motivation to manipulate the amount of the silver in order to achieve the desired antimicrobial effect. Thus Applicants arguments regarding the amount of silver in the paper is not persuasive.
Applicants argue that (2) Barry, Bhat, Djokic or Schmidt fails to cure the deficiencies of Patton and Yang.
Regarding Applicants’ second argument, the arguments are not persuasive for the reasons set forth above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-6, 8-14, 16-18, 20-21 and 23-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 17534777 (USPGPUB No. 20220159948). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims an anti-microbial paper product, comprising: at least one layer of material having a first side and a second side; at least one rounded corner; and a silver ion coating on at least one side, wherein the silver ion coating has a concentration of 1 to 10% by volume and wherein an amount of silver in the anti-microbial paper product ranges from 2 to 50 micrograms per gram of the anti-microbial paper product.
The instant application claims an absorbable paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion coating has a concentration of 1 to 10% by volume and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product.
The instant application claims a silver-ion containing paper product, comprising: a sheet of material having a first side and a second side; and a coating of silver-ion solution comprising a concentration of 1% to 10% by volume and wherein an amount of silver in the absorbable paper product ranges from 2 to 50 micrograms of silver per gram of the absorbable paper product.
Paragraph 018 of the specification as filed states that the term ppm refers to the µg of silver per one gram of the cellulose fiber-based product. This is where support for the instant limitations are found. Therefore 2 to 50 micrograms of silver per gram of the absorbable paper product is the same as 2 to 50 ppm.
Copending ‘777 claims an absorbable and anti-viral paper product, comprising: at least one layer of material having a first side and a second side; and a silver ion coating on at least one of the first side and the second side, wherein the silver ion coating has a concentration of at least 1% by volume of the silver ion solution and wherein the silver ion solution comprises citric acid. Copending ’777 claims an anti-viral paper product, comprising: at least one layer of material having a first side and a second side; at least one rounded corner; and a silver ion coating on at least one side, wherein the silver ion coating has a concentration of at least 1%. Dependent claim 6 recites a concentration of 1 to 10%. Claim 7 recites a concentration of 1 to 10%. Copending ‘777 claims an antiviral, silver-ion containing paper product, comprising: a sheet of material having a first side and a second side: and a coating of silver-ion solution comprising a concentration of from 1 ppm to 1,000 ppm. Perpendicular plies is claimed. Claimed is 20 to 70 micrograms of silver per gram of the absorbable and antiviral paper product.
Copending ‘777 clams an overlapping silver concentration.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-6 and 8-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 17534777 (USPGPUB No. 20220159948) as applied to claims 1, 3-6, 8-14, 16-18, 20-21, 23-28 above and in further view of Schmidt. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope.
The instant application claims the coating comprises an extender configured to retain the coating within the at least one sheet of material, wherein the extender is selected from the group consisting of ground calcium carbonate, precipitated calcium carbonate, kaolin clay, and talc.
The claims of copending ‘777 are set forth above.
Copending ‘777 does not expressly claim the inclusion of an extender. However, these deficiencies are cured by Schmidt.
Schmidt is directed to a web material. Specifically Schmidt claims a web material made of fibrous cellulose material and one or several antimicrobial substances (claim 1). Silver antimicrobials are claimed (claim 2). It is taught that in addition to antimicrobial substances, the web material can contain other additives such as kaolin (paragraph 0010 and claim 8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Copending ‘777 and Schmidt and utilize kaolin with the silver coating solution of copending ‘777. One skilled in the art would have been motivated to utilize customary additives such as kaolin as taught by Schmidt. Since Schmidt teaches the use of the kaolin with antimicrobials such as silver there is a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ arguments filed September 25 2025 have been fully considered but they are not persuasive.
Applicants argue that Yang, Djokic or Schmidt does not teach the instantly claimed 2 to 50 micrograms of silver per gram of the silver-ion containing paper product.
Regarding Applicants arguments, copending ‘777 has been amended to specifically claim 20 to 70 micrograms of silver per gram of the antiviral, silver-ion containing paper product (see for example claim 18). Therefore, copending ‘777 claims an overlapping concentration.
Conclusion
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