DETAILED ACTION
Response to Amendment
The amendment filed on 04/28/2025 has been entered. In it, the subject matter of claim 14 is incorporated into the base claim and thus, claim 14 is canceled. Claims 6, 22, 23 and 35 have been cancelled without prejudice. Applicant's amendment fails to overcome 35 U.S.C. 103 rejection previously set forth in the Office Action mailed on 12/30/2024 as described hereinafter.
Response to Arguments
Applicant's arguments filed on 04/28/2025 have been fully considered but they are not persuasive. As a reminder, all of the Applicant’s arguments by previous “Applicant’s Attorneys” in the response dated 11/28/2023 were addressed in the previous Office Action. The new “Applicant’s Attorneys” in the response dated 04/28/2025 is harking back substantially on the same issues previously discussed.
Applicant’s amendment to independent claim 1 by incorporating the previously rejected claim 16 into base claim does not overcome the rejection under 35 U.S.C. 103 as noted hereinbefore.
That being said, on page 7, 1st and 2nd paragraphs, Applicant contends: “Specifically, Applicant submits that Leach discloses specific pulp compositions comprising agricultural fibres and recycled wood fibres in Table 19A, while Table 19B discloses the mechanical properties of these compositions. The compositions of Table 19A are blends of old corrugated containers (OCC) with one or more of hemp, corn, or wheat. None of these compositions comprises barley at 10-30% by weight as required by now amended claim 1.
Examples 3-5 in the present application show that pulps made with barley at 10-30%by weight and recycled wood fibres have good mechanical properties, many of which are better than a composition made entirely from virgin wood fibres.” (Emphasis added).
While Examiner neither agrees nor disagrees with the underlined statements, nevertheless, the composition of pulp in the cited references is substantially similar to that of the claimed invention. The cited reference on para [0119] indeed teaches “By way of example, corn or wheat fibers from corn stover, wheat straw…” the use without exactly specifying the amount or percentage of barley or wheat straw fibres in the whole composition in which one skilled in the art could readily obtain that by following the road map or proverbial guideposts provided by the cited reference to arrive at the claimed invention as discussed hereinbefore. Assuming “pulps made with barley at 10-30% by weight and recycled wood fibres have good mechanical properties”, but the instant claimed invention is directed to a composition of pulp and thus under obviousness rejection, it is the composition limitations of instant claim reads on the cited reference regardless of its properties and their advantages thereof. It is well known that it is desirous for manufactures of papermaking/paperboard or similar products to make changes or even improvements to their products for various commercial and/or marketability purposes, but those changes or improvements have nothing to do with the rejection of claimed invention that is related to patentability analysis of the claimed invention in view of prior art.
Since the composition of pulp disclosed in the cited references is substantially identical to the claimed product, it is a well settled case law where the claimed and prior art product are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). (Emphasis is added). Irrespective of the advantages such as mechanical properties, the composition of the pulp in the cited reference is substantially similar to that of the claimed invention and thus, both the claimed invention and the cited reference is directed to a product (i.e., paperboard) having nearly the same composition. The differences in the mechanical properties of the paperboard does not impart patentability.
The Applicant is respectfully reminded that repeating the same arguments without substantially amending the scope of the claimed invention do not advance the prosecution of instant application in a favorable direction. Therefore, the rejection is maintained.
Claim Rejections - 35 USC § 103
3. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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:
4. 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.
5. Claims 1, 4-5, 7-9, 11-13, 15, 24-34, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Miles Leach et al. US 20220389657 A1 in view of Adam James Burt; et al. US 20170021589 A1.
Regarding claim 1, Leach discloses: A pulp composition (Throughout the disclosure such as abstract, para [0008-0009], [0079], and [0107].) comprising: a mixture of a first component comprising barley straw fibres in an amount of from 10 to 30% by weight based on the total weight of the pulp composition wherein the average length of the barley straw fibres is at least 0.5mm; and a second component comprising recycled wood fibres (Throughout the disclosure such as para [0118-0119] discloses feedstock mixtures and blends with the fiber length on para [0119] discloses “By way of example, corn or wheat fibers from corn stover, wheat straw (1st component) or similar cereals may have a fiber length that is relatively short, such as about 1 mm (e.g., 0.1 mm to 1.5 mm, or 0.5 mm to 1 mm). Hemp fibers may be significantly longer, e.g., from 3-6 mm in length.” And recycled wood fiber on para [0004], [0338], and para [0009] discloses “The present methods and systems are specifically directed to overall far simpler, less complex, and less expensive systems that allow conversion of agricultural feedstock materials into an agricultural fiber pulp product at costs that would be competitive to either virgin wood pulp (whether derived from softwood, or hardwood), or even old corrugated containers (OCC) [2nd component], which is generally the least expensive of typically employed pulp materials.” With respect to amount of from 10 to 30%, referring to para [0030], [0070], and [0155], it is obvious that an artisan could readily modify and/or change the amount of cellulose in the claimed invention.).
Although, Leach discloses on para [014] the ratios of “pulp components may vary widely, depending on the particular application”, nonetheless, does not expressly disclose: wherein a ratio of a length to a width of the barley straw fibres is from 50:1 to 200:1.
In the same field of art, Burt is directed to a fibrous web structure comprises an intermixed and/or entangled blend of at least two different materials wherein at least one of the materials comprises filaments, such as spun polymer filament (e.g., filaments spun from polypropylene resin), and at least one other material, different from the first material, comprises fibers. In one example, a co-formed fibrous web structure comprises fibers, such as cellulose or wood pulp fibers, and filaments, such as spun polypropylene filaments. A co-formed fibrous web structure may also comprise solid particulate additives such as but not limited to absorbent gel materials, filler particles, particulate spot bonding powders or clays. With that in mind, Burt discloses wherein a ratio of a length to a width of the barley straw fibres or wheat straw fibres is from 50:1 to 200:1 (Para [0039] discloses ““Fiber” means an elongate particulate having a limited length exceeding its width or diameter, i.e. a length to width ratio of no more than 200. For purposes of the present disclosure, a “fiber” is an elongate particulate as described above that has a length of less than 3 cm. Fibers are typically considered discontinuous in nature. Non-limiting examples of fibers include hardwood and softwood pulp fibers; hemp bast; bagasse; bamboo; corn stalk; cotton; cotton stalk; cotton linters; esparto grass; flax tow; jute bast; kenaf bast; reed; rice straw, sisal; switch grass; wheat straw;…” (Emphasis added). Since Burt discloses an elongate particulate having a limited length exceeding its width or diameter, i.e. a length to width ratio of no more than 200, then it would have been obvious for one of ordinary skill in the art to optimize the ratio of the length to the width of the barley straw fibres or wheat straw fibres to 50:1 to 200:1, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233 (MPEP 2144.05 (II-A)).
Moreover, it would also have been obvious to one having ordinary skill in the art at the time the invention was filed to look to the prior art and select a cellulose pulp composition of Leach by using a length to width ratio of no more than 200 as disclosed in Burt so as to improve properties such as tensile strength of the structure as noted in para [0004], [0007], [0055], and so on. Similarly, one of ordinary skill in the art would have been reasonably motivated to look to the prior art and select fibers having specific length vs. width such as 50:1 to 200:1 so as to achieve the required strength of the barley straw fibres or wheat straw fibres for its intended purpose.
Regarding claims 4-5, Leach in view of Burt discloses all of the limitations of its based claim. Leach further discloses: wherein the wood fibres are one or more selected from the group consisting of softwood fibres, hardwood fibres, and recycled wood fibres or wherein the recycled wood fibres comprise old corrugated container (OCC) fibres (Throughout the disclosure such as para [0009], [0014], [0020], [0051], [006], and the claims.).
Regarding claims 7 and 24, Leach in view of Burt discloses all of the limitations of its based claim. Leach further discloses: wherein a ratio of the first component to the second component is from 1:15 to 2:1 by weight or wherein a ratio of the first component to the second component is from 1:10 to 1.5:1 by weight (Throughout the disclosure such as para [0014], [0155], and Tables such as 18-19, and 25.).
Regarding claims 8 and 25-26, Leach in view of Burt discloses all of the limitations of its based claim. Leach further discloses: wherein the average length of the barley straw fibres is from 0.5 to 5 mm or wherein the average length of the barley straw fibers is from 0.6 to 2 mm or wherein the average length of the barley straw fibers is from 0.8 to 1.1 mm (Para [0119] discloses “By way of example, corn or wheat fibers from corn stover, wheat straw or similar cereals may have a fiber length that is relatively short, such as about 1 mm (e.g., 0.1 mm to 1.5 mm, or 0.5 mm to 1 mm). Hemp fibers may be significantly longer, e.g., from 3-6 mm in length.”).
Regarding claim 9, Leach in view of Burt discloses all of the limitations of its based claim. since Burt does not disclose the average width of the barley straw fibers or wheat straw fibers: wherein the average width of the barley straw fibers is from 5 to 30 µm (Para [0045]. As noted previously, using a disclosed length to width ratio and length of fibers, the width of the barley straw fibers or wheat straw fibers can be calculated. For example, width (L:W) ratio of 200:1 with the length of about 1 mm such as L/L:W = W, the width is calculated by 1/200 =0.005 mm or 5 μm.).
Regarding claims 28-29, Leach in view of Burt discloses all of the limitations of its base claim 1. Burt further discloses: wherein a ratio of the length to the width of the barley straw fibers is from 75:1 to 150:1 or wherein a ratio of the length to the width of the barley straw fibres is from 100:1 to 120:1 (Throughout the disclosure such as para [0039]. The cellulosic fibres are considered to be straw fibres. Further explanation is provided hereinbefore with respect to the ratio of the length to the width in the base claim and will not be repeated again to avoid redundancy.).
Regarding claim 11 and 30-31, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach further discloses: wherein the coarseness of the barley straw fibres is less than 1 mg/m or wherein the coarseness of the barley straw fibres is less than 0.9 mg/m or wherein the coarseness of the barley straw fibres is less than 0.1 mg/m (It is well known coarseness (weight per unit length) of the fibers in a pulp may be ascertained by counting the crossings of a known weight of fibers per unit area on a prepared slide over lines of known length and by referring to para [0131], [0147], and table 26A, it is obvious an artisan having all the properties of the fiber provided therein could readily reproduce it, accordingly. To support what is just stated, it is also evidenced by Young, JR. et al. US 2013/0306260, paragraph [0018], which is directed to using fibers produced from soy stalks and wheat straw and teaches the following: “The digested fibers are then refined to various degrees of coarseness appropriate to the end use application.” And “…the lower coarseness fibers are suitable for smooth, strong paper and paper board.” This provides a teaching that the coarseness is a result effective variable and lower coarseness is desired for smoothness and strength. Therefore, the artisan would find it obvious to obtain a low coarseness as claimed by routine optimization to obtain a desired strength.).
Regarding claim 12 and 32-33, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach further discloses: wherein the barley straw fibres comprise a-cellulose in an amount of from 15 to 40% by weight or wherein the barley straw fibres comprise a-cellulose in an amount of from 19 to 35% by weight or wherein the barley straw fibres comprise a-cellulose in an amount of from 31 to 34% by weight (Throughout the disclosure such as para [0030], [0070], and [0155]. Knowing the aforementioned taught by the cited reference, it is obvious that an artisan could readily modify and/or change the amount of cellulose in the claimed invention. To support what is just stated, it is also evidenced by Singh et al “Determination of Alpha-, Beta- and Gamma- Cellulose in Bagasse and Wheat Straw: Lignin Recovery, Characterization and Depolymerization.”, a copy of which attached herein, teaches on page 8, Fig. 1 shows the amount of alpha-cellulose and the amount of lignin in a sample of wheat straw (WS) to be about 40% by mass and 20% by mass, respectively. The amounts correspond to the claimed amounts.).
Regarding claims 13, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach further discloses: wherein the barley straw fibres comprise lignin in an amount less than 20% by weight (Throughout the disclosure such as para [0007] discloses “The present processes are directed to solutions for non-wood pulp materials that do in fact include lignin which needs to be removed (e.g., such as corn stover) or para [0011], [0015], [0120-0125], and [0139-0144]. To support what is just stated, it is also evidenced by Singh et al “Determination of Alpha-, Beta- and Gamma- Cellulose in Bagasse and Wheat Straw: Lignin Recovery, Characterization and Depolymerization.”, a copy of which attached herein, teaches on page 8, Fig. 1 shows the amount of alpha-cellulose and the amount of lignin in a sample of wheat straw (WS) to be about 40% by mass and 20% by mass, respectively. The amounts correspond to the claimed amounts.).
Regarding claim 15, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach does not expressly teach the limitation of this claim. However, Burt further discloses: further comprising one or more additives, wherein the additive is selected from the group consisting of: sizing agents; silicas; pigments and dyes; non-ionic, cationic or anionic retention aids; adhesives; acidity regulators; bleaches; fillers; binders; and, bonding agents (Throughout the disclosure such as para [0037], [0056], and in particular para [0120] discloses “…color agents, dyes,…” the same as pigments and dyes.). Therefore, it would also have been obvious to one having ordinary skill in the art at the time the invention was filed to look to the prior art and select an additive as disclosed in Burt so as to improve surface treatment as noted in para in para [0037], [0056], and [0119]. Similarly, one of ordinary skill in the art would have been reasonably motivated to look to the prior art and select fibrous web structure that may include additives such as softening agents, temporary wet strength agents, permanent wet strength agents, bulk softening agents, silicones, wetting agents, latexes, for its intended purpose.
Regarding claim 27, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach does not expressly disclose the unit µm: or wherein the average width of the barley straw fibres is from 8 to 18 µm (However, Leach on para [0119] discloses “By way of example, corn or wheat fibers from corn stover, wheat straw or similar cereals may have a fiber length that is relatively short, such as about 1 mm [i.e., 1000 µm] or less than 1 mm [1000 µm] (e.g., 0.1 mm [100 µm] to 1.5 mm [1500 µm], or 0.5 mm [500 µm] to 1 mm [1000 µm]). Hemp fibers may be significantly longer, e.g., from 3-6 mm in length.” And since the fiber length could be less than 1mm, then cited reference meets the claimed range. That being said, at the very least, the length of fibers could be used that as a road map for any changes/modification/substitution of mm to µm so as to arrive the exact length of barley straw as recited in the claimed invention. In addition, the length of fiber by an itself does not impart patentability. As noted in previous office communication, Applicant’s attention is respectfully directed to MPEP 2144.05 II-A:
"It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions." In re Williams, 36 F.2d 436, 438 (CCPA 1929)).
Regarding claim 34, Leach in view of Burt discloses all of the limitations of its base claim 1. Leach further discloses: wherein the barley straw fibres comprise lignin in an amount of from 5 to 15% by weight (Throughout the disclosure such as para [0007] discloses “The present processes are directed to solutions for non-wood pulp materials that do in fact include lignin which needs to be removed (e.g., such as corn stover) or para [0011], [0015], [0120-0125], and [0139-0144]).
Regarding claim 36, Leach in view of Burt discloses all of the limitations of its base claim 15. Leach further discloses: wherein the first component consists of barley straw fibres or wheat straw fibres; wherein the second component comprises recycled wood fibres, and wherein the barley or wheat straw fibres are present in an amount of from 10 to 30% by weight based on a total weight of the pulp composition (Para [0011], [0015], [0120-0125], and [0139-0144] or para [0030], [0070], and [0155].).
Conclusion
6. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW M ESLAMI whose telephone number is (571)272-8710. The examiner can normally be reached on M-F 7:30 to 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached on (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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/MATTHEW M ESLAMI/Examiner, Art Unit 1748
/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748