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 .
DETAILED ACTION
Claims 1-3, 5-6, 8-9, 11-13, 15-16, 19, 21, 25-34 are pending in this application, which is a 371 of PCT/US2021/018476. Amended claims 1-3, 5-6, 8, 11-12, 15-16, 19, 25-32; canceled claims 4, 7; and newly added claims 33-34 are noted.
The amendment dated 12/01/2025 has been entered and carefully considered. The examiner appreciates the amendments to the abstract and claims. In view of said amendment, the objection to the abstract and a portion of the 112 rejection have been withdrawn.
Claim 21 has been withdrawn from consideration as being directed to a nonelected invention.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
It is noted that the claimed invention is directed solely to a method. The examiner suggests amending the title to reflect same.
Claim Rejections - 35 USC § 112
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 6, 16, 34 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.
In claim 6 line 1, the term “reaction limited process” is deemed vague and confusing as to what said term means. The same issue applies to claim 16, 34.
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.
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, 9, 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Harlin et al. (2011/0223401) as evidenced by Haukka et al. (2018/0151345).
Harlin teaches a method of producing a fibrous product having a barrier layer (title) in which a coating layer 14 is applied to a fibrous substrate 12 followed by a carrier layer 16 (0039). Specifically the substrate can be paper or board formed from cellulosic material (0040) and the coatings can be deposited by atomic layer deposition (0017, 0042). However, the reference fails to teach adsorption.
Haukka teaches the deposition of oxide thin films (title) in which atomic layer deposition is used to achieve deposition (0027). During ALD deposition, a monolayer of a first reactant is adsorbed (0044). One skilled in the art reading Haukka would realize that an ALD process inherently has the adsorption of a monolayer. Hence, the ALD process of Harlin inherently has the adsorption step as evidenced by Haukka. Regardless, to utilize an adsorption step in Harlin would have been obvious with the expectation of success because Haukka teaches an adsorption step in an ALD process.
Regarding claim 9, Haukka teaches metal oxide (abstract).
Regarding claim 25, the applicant requires hydrophobic and anti-fungal. It is noted that Harlin teaches barrier properties (0004). The mere observation of still another beneficial result of an old process cannot form the basis of patentability.
Regarding claim 26, Haukka teaches an adsorption step in an ALD process.
Regarding claim 27, the applicant requires a thickness of less than 5 nm. Harlin teaches a thickness of 5-50 nm (0031). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties. Titanium Metals Corp v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 28, Haukka teaches an oxidized metal (0029).
Regarding claim 29, Harlin teaches atomic layer deposition which occurs after introducing (0017, 0042)
Regarding claim 30, Haukka teaches a monolayer (0044).
Claims 2-3, 5-6, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Harlin et al. (2011/0223401) and Haukka et al. (2018/0151345) in view of Rearick et al. (6,491,727). The combination of Harlin/Haukka fails to teach functional groups.
Rearick teaches cellulosic substrates (title) in which the cellulosic substrate contain functional groups (col.5 lines 16-19). It would have been obvious to use functional groups in the cellulosic substrate in the combination with the expectation of success because Rearick teaches o using cellulosic substrates with functional groups.
Regarding claim 2, Haukka teaches vapor (0044).
Regarding claim 3, Harlin teaches several cycles (claim 25).
Regarding claim 5, Rearick teaches nucleophiles (col.5 lines 1-15).
Regarding claim 6, Haukka teaches reaction limited (0042).
Regarding claim 8, Harlin teaches paper or board (0040) and barrier properties (0004), which read on hydrophobicity.
In independent claim 31, the applicant requires modifying surface porosity using a gas phase metal and an oxidant., a specific thickness, and a specific property. Haukka teaches metal oxide (abstract), a thickness of 5-50 nm (0031), and Harlin teaches barrier properties (0004), which read on hydrophobicity.
With respect to the newly added limitation of permeating and adsorbing an additive into the cellulosic material, this feature is taught in the prior art references (see Response to Arguments).
Regarding claim 32, Haukka teaches reaction limited (0042).
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Harlin et al. (2011/0223401) and Haukka et al. (2018/0151345) and Rearick et al. (6,491,727) and further in view of Gabor et al. (WO 2008/110456). The combination of Harlin/Haukka/ Rearick fails to teach capillaries.
Gabor teaches a method of treating cellulosic materials with hydrophobic ins (title) in which the cellulosic materials such as wood and paper have capillary action of the pores (p.6 lines 17-31). It would have been obvious to permeate and adsorb an additive in the cellulosic material having capillaries in the combination because Gabor teaches that cellulosic materials having capillaries.
Regarding claim 34, Haukka teaches vapor (0044) and metal oxide (abstract) and polymer (0031); Harlin teaches permeating and adsorbing an additive (see Response to Arguments); and Rearick teaches functional groups (col.5 lines 16-19).
Allowable Subject Matter
Claims 11-13, 15-16, 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art references fail to teach or suggest adsorption into capillaries and sealing in the cellulosic material of claim 11, from which claims 12-13, 15-16, 19 depend.
Response to Arguments
Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive.
Applicant first argues that the references fail to teach permeating into cellulosic material (pp.2-3).
The examiner agrees in part. The examiner concurs that the cited references fail to explicitly teach “permeation” into cellulosic material. However, permeation is not a result of the coated material but the substrate itself. To support this assertion, CN 105415477 specifically teaches of permeating into porous structure of wood fibre or wood shavings (p.3 first full paragraph and Example 1 step 4. Since a cellulosic material is taught by Harlin (0040), it would result in permeation. In addition, the courts have decided that the art does not recognize any distinction between coating and impregnating. In re Marra et al., 141 USPQ 221.
Applicant next argues that the references fail to teach adsorbing an additive (pp.3-4).
The examiner disagrees. It is noted that nowhere in the instant claim is an additive defined. That said, Harlin teaches a method of producing a fibrous product in which a coating layer 14 is applied by atomic layer deposition to a fibrous substrate 12 such as a paper or board formed from cellulosic material (0039-0042). It is the examiner’s position that the formation of the coating by ALD reads on adsorbing the additive.
Applicant’s arguments have been considered but are not deemed persuasive.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRET CHEN whose telephone number is (571)272-1417. The examiner can normally be reached M-F 8:30-8:30 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at (571) 272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRET P CHEN/Primary Examiner, Art Unit 1718 02/23/2026