DETAILED ACTION
The communication dated 3/9/2026 has been entered and fully considered. Claims 21-34 remain withdrawn. Claims 2, 10, and 27 are cancelled. Claims 1, 3-9, and 11-20 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 .
Response to Amendment
Applicant argues that prior art, SPENDER, does not teach amended limitation of multiple specific Sucrose Fatty Acids, one soluble and one insoluble at 25°C.
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
SPENDER teaches a method of treating cellulosic material to increase hydrophobicity and lipophobicity [abstract]. SPENDER also teaches the use of a saccharide fatty acid ester to impart the properties [abstract]. SPENDER teaches the hydrophilic-lipophilic balance of a surfactant is a measure of the degree to which it is hydrophilic or lipophilic [column 9 line 49]. SPENDER further teaches a HLB of <10 corresponds to water insoluble (emulsifier) [column 9 line 65] and a HLB of >10 corresponds to water soluble (detergent) [column 9 line 66]. SPENDER further teaches the sucrose fatty acid ester emulsion uses an emulsifier SFAE as a carrier for other coating materials [column 17 line 53], and uses another SFAE as a detergent in emulsion [column 18 line 66]. This teaches two SFAEs where one is emulsion agent (insoluble HLB <10 water) and the other is a detergent (water soluble HLB>10). This teaches the limitation of “preparing a formulation comprising a specific saccharide fatty acid ester (specific SFAE) wherein the specific SFAE is insoluble in water at 25°C” and “a soluble saccharide fatty acid ester (soluble SFAE) which is soluble in water at 25°C”.
SPENDER does not teach the melting temperature of the insoluble specific saccharide fatty acid ester (SFAE). SPENDER does not teach against using a sucrose fatty acid ester with a specific melting temperature. SPENDER teaches that the sucrose fatty acid esters are used a detergents in papermaking [col 4 line 30]. LEMIEUX et al teaches the preparation and uses of fatty acid esters of sucrose [Introduction]. Like SPENDER, LEMIEUX further teaches that the sucrose fatty acid esters are used as detergents [INTRODUCTION]. LEMIEUX teaches that sucrose myristate as an example of a sucrose fatty acid ester [p.2380]. Sucrose myristate has a melting point of 180-186°C, as evidenced by SCOTT et al. SPENDER in view of LEMIEUX teaches the use of SFAE with a melting point higher than 150°C. This meets the instant limitation of “the specific SFAE has a melting point higher than 150°C”. It would be obvious to one skilled in the arts at the time of invention to simply substitute the detergent sucrose fatty acid ester of SPENDER for the sucrose myristate taught by LEMIEUX to aid in papermaking as an effective detergent. One would be motivated by the common use of sucrose fatty acid ester as a detergent taught by both art and the proven effective use of sucrose fatty acid ester as a detergent from both.
Applicant argues that prior art, SPENDER, teaches away from the use of a specific SFAE that is insoluble in water at 25°C.
Applicant's arguments filed 6/12/2025 have been fully considered but they are not persuasive.
SPENDER teaches the use of SFAE as an emulsifying agent and carrier [column 17 line 53]. SPENDER also teaches that emulsifying agents are insoluble in water [column 9 line 65]. The Examiner understands the direct statement of insolubility would be understood by one skilled in the arts to cover at least standard indoor temperature of 25°C.
Applicant argues that prior art does not teach claim 1 thus does not teach all other dependent claims.
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive. SPENDER in view of LEMIEUX teaches the entirety of claim 1 limitations and teach the dependent claims thereof.
Claim Objections
Claim 9 is objected to because of the following informalities: recitation of “in the in the”. Appropriate correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 3-9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over SPENDER (US 10730959 B2), LIMEIUX (The PREPARATION of SUCROSE MONOESTERS) as evidenced by SCOTT et al (SAFETY ASSESSMENT of SACCHARIDE ESTERS as USED in COSMETICS).
For claim 1, SPENDER teaches a method of treating cellulosic material to increase hydrophobicity and lipophobicity [abstract]. Hydrophobicity and lipophobicity are barrier properties. This meets the limitation of “A method of imparting a barrier property to a cellulose-based substrate the method comprising: preparing a formulation for imparting the barrier property”. SPENDER also teaches the use of a saccharide fatty acid ester to impart the properties [abstract]. This meets the limitation of “the formulation comprising a specific saccharide fatty acid ester (specific SFAE)”. The solution is contacted with the surface of the substrate [0018]. This meets the limitation of “and contacting a surface of the cellulose-based substrate with the formulation to impart the barrier property to the cellulose-based substrate”. The solution imparts hydrophobicity and lipophobicity [0018]. SPENDER teaches a method of treating cellulosic material to increase hydrophobicity and lipophobicity [abstract]. SPENDER also teaches the use of a saccharide fatty acid ester to impart the properties [abstract]. This meets the limitation of “wherein the barrier property is increased water resistance and/or increased lipid resistance”. SPENDER does not directly teach the solubility in specific temperatures. SPENDER does classify the solubility of esters based on an HLB value. The saturated esters are water insoluble when the HLB (hydrophilic-lipophic balance) is below 10. The SFAE of some embodiments taught by SPENDER have lower HLB ranges [0078]. SPENDER teaches the hydrophilic-lipophilic balance of a surfactant is a measure of the degree to which it is hydrophilic or lipophilic [column 9 line 49]. SPENDER further teaches a HLB of <10 corresponds to water insoluble (emulsifier) [column 9 line 65] and a HLB of >10 corresponds to water soluble (detergent) [column 9 line 66]. SPENDER further teaches the sucrose fatty acid ester emulsion uses an emulsifier SFAE as a carrier for other coating materials [column 17 line 53], and uses another SFAE as a detergent in emulsion [column 18 line 66]. This teaches two SFAEs where one is emulsion agent (insoluble HLB <10 water) and the other is a detergent (water soluble HLB>10). This teaches the limitation of “preparing a formulation comprising a specific saccharide fatty acid ester (specific SFAE) wherein the specific SFAE is insoluble in water at 25°C” and “a soluble saccharide fatty acid ester (soluble SFAE) which is soluble in water at 25°C”. It would be obvious to one skilled in the arts at the time of invention that based on the HLB value taught by SPENDER the correct ester to use in the method would be soluble or insoluble in water.
SPENDER does not teach the melting temperature of the insoluble specific saccharide fatty acid ester (SFAE). SPENDER does not teach against using a sucrose fatty acid ester with a specific melting temperature. SPENDER teaches that the sucrose fatty acid esters are used a detergents in papermaking [col 4 line 30]. LEMIEUX et al teaches the preparation and uses of fatty acid esters of sucrose [Introduction]. Like SPENDER, LEMIEUX further teaches that the sucrose fatty acid esters are used as detergents [INTRODUCTION]. LEMIEUX teaches that sucrose myristate as an example of a sucrose fatty acid ester [p.2380]. Sucrose myristate has a melting point of 180-186°C, as evidenced by SCOTT et al. SPENDER in view of LEMIEUX teaches the use of SFAE with a melting point higher than 150°C. This meets the instant limitation of “the specific SFAE has a melting point higher than 150°C”. It would be obvious to one skilled in the arts at the time of invention to simply substitute the detergent sucrose fatty acid ester of SPENDER for the sucrose myristate taught by LEMIEUX to aid in papermaking as an effective detergent. One would be motivated by the common use of sucrose fatty acid ester as a detergent taught by both art and the proven effective use of sucrose fatty acid ester as a detergent from both.
For claim 3, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches, “In another aspect, when the cellulose based material is a solution containing cellulose fiber, the SFAE is present at a concentration of at least about 0.025% (wt/wt) of the total fiber present” [0114]. This value matches that of the instant claim. This meets the limitation of “wherein the specific SFAE is present in the slurry at a total concentration of at least 0.025% (wt/wt) of the total cellulose fiber present in the slurry”.
For claim 4, SPENDER and LEMIEUX teaches the method of claim 1 as above. In example 7, the fiber is dried after mixing with the composition and the barrier properties are retained [0166]. This meets the limitation of “further comprising forming a solid article after draining the cellulose fiber from the slurry, the solid article possessing the barrier property”.
For claim 5, SPENDER and LEMIEUX teaches the method of claim 1 as above. The cellulose substrate can be paper [0016]. This meets the limitation of “wherein the article is selected from the group consisting of paper, paperboard, bacon board, insulating material, a carton for food storage, a compost bag, a bag for food storage, release paper, a shipping bag, weed-block/barrier fabric or film, mulching film, plant pots, packing beads, bubble wrap, laminates, envelopes, gift cards, credit cards, gloves, raincoats, OGR paper, a shopping bag, diapers, membranes, eating utensil, a tea bag, a container for coffee or tea, a container for holding hot or cold beverages, a cup, a plate, a bottle for carbonated liquid storage, a bottle for non-carbonated liquid storage, a lid, film for wrapping food, a garbage disposal container, a food handling implement, a fabric fibre, a water storage and conveying implement, a storage and conveying implement for alcoholic or non- alcoholic beverages, an outer casing or screen for electronic goods, an internal or external piece of furniture, a curtain, upholstery, fabric, film, a box, a sheet, a tray, a pipe, a tube, a water conduit, clothing, a medical device, pharmaceutical packaging, a contraceptive, camping equipment, cellulosic material that is molded, and combinations thereof”.
For claim 6, SPENDER and LEMIEUX teaches the method of claim 1 as above. The paper can be coated with the SFAE [0017]. This meets the limitation of “wherein the step of contacting comprises coating the surface of the cellulose-based substrate with the formulation”.
For claim 7, SPENDER and LEMIEUX teaches the method of claim 1 as above. The substrate can be coated with SFAE to a weight of at least about 0.1 g/m2 [0114]. This value is within the range of the instant claim. This meets the limitation of “wherein the specific SFAE is present at a weight of at least 0.05g/m2 on the surface of the substrate”.
For claim 8, SPENDER and LEMIEUX teaches the method of claim 1 as above. The cellulose substrate can be paper [0016]. This meets the limitation of “wherein the cellulose-based substrate is an article selected from the group consisting of paper, paperboard, bacon board, insulating material, paper pulp, a carton for food storage, a compost bag, a bag for food storage, release paper, a shipping bag, weed-block/barrier fabric or film, mulching film, plant pots, packing beads, bubble wrap, oil absorbent material, laminates, envelops, gift cards, credit cards, gloves, raincoats, OGR paper, a shopping bag, diapers, membranes, eating utensil, a tea bag, a container for coffee or tea, a container for holding hot or cold beverages, a cup, a plate, a bottle for carbonated liquid storage, a bottle for non-carbonated liquid storage, a lid, film for wrapping food, a garbage disposal container, a food handling implement, a fabric fibre, a water storage and conveying implement, a storage and conveying implement for alcoholic or non-alcoholic beverages, an outer casing or screen for electronic goods, an internal or external piece of furniture, a curtain, upholstery, fabric, film, a box, a sheet, a tray, a pipe, a tube, a water conduit, clothing, a medical device, pharmaceutical packaging, a contraceptive, camping equipment, cellulosic material that is molded, and combinations thereof”.
For claim 9, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches that treating the cellulosic material with only the SFAE results in a lipid and water resistant material [0121]. It would be obvious to one skilled in the arts with a desire for a lipid and water resistant paper to only use SFAE to obtain both properties when they are the only desirable properties. This meets the limitation of “wherein the barrier property imparted to the cellulose-based substrate is increased lipid resistance, and the increased lipid resistance is provided by the specific SFAE in the in the absence of any secondary hydrophobes”.
For claim 11, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches a combination of SFAEs [0220]. This meets the limitation of “wherein the formulation is a liquid system consisting essentially of the specific SFAE and the soluble SFAE”.
For claim 12, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches soyate can be added as well [0080]. Soyate is the salt of a fatty acid [0080]. This meets the limitation of “wherein the formulation further comprises one or more glycerides and/or one or more fatty acid salts”.
For claim 13, SPENDER and LEMIEUX teaches the method of claim 1 as above. The treat cellulose has a kit value of 5 [Table 14]. This value is within the instant range. This meets the limitation of “wherein the cellulose-based substrate imparted with the barrier property exhibits a 3M grease KIT test value of between about 3 and about 12”.
For claim 14, SPENDER and LEMIEUX teaches the method of claim 1 as above. The treated cellulosic material has a contact angle of about 60 to 120°. This range overlaps the instant range. This meets the limitation of “wherein the surface of the cellulose- based substrate imparted with the barrier property exhibits a water contact angle greater than 90°”. See MPEP 2144.05.
For claim 15, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches an example of coated paper with an HST of 710 [0187]. This meets the limitation of “wherein the surface of the cellulose- based substrate imparted with the barrier property exhibits an HST value of at least 65 secs”.
For claim 16, SPENDER and LEMIEUX teaches the method of claim 1 as above. The SFAE also have a melting point of less than 150°C [0206]. This range overlaps the instant claim range. This meets the limitation of “wherein the specific SFAE has a melting point higher than 125°C”.
For claim 17, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches the SFAE can have groups that include lactose [0100]. This meets the limitation of “wherein the saccharide moiety of the specific SFAE is selected from lactose, maltose, raffinose, or trehalose”.
For claim 18, SPENDER and LEMIEUX teaches the method of claim 1 as above. Monostearate can be used in the SFAE [0124]. This meets the limitation of “wherein the fatty acid group(s) of the specific SFAE are one of more selected from stearate, laurate, myristate, or palmitate”.
For claim 19, SPENDER and LEMIEUX teaches the method of claim 1 as above. SPENDER teaches “In a related aspect, the saccharide fatty acid esters as described herein may be mono-, di-, tri-, tetra-, penta-, hexa-, hepta-, or octa-esters, and combinations thereof” [0098]. This meets the limitation of “wherein the specific SFAE includes a blend of one or more saccharide monoesters and saccharide diesters”.
For claim 20, SPENDER and LEMIEUX teaches the method of claim 1 as above. Chitosan is also a component of the SFAE [0131]. This meets the limitation of “wherein the saccharide moiety of the specific SFAE is chitosan”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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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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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748