DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on March 30, 2026 was received. Claim 1 was amended. Claims 6, 9, 11, 13-14, 16, 20, 23, 26 and 29-33 were canceled. No claim was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued December 30, 2025.
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.
Claims 1-5, 7-8, 10, 12, 15, 17, 21-22, 24-25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Heiskanen1 (US20180245289) in view of Pietikainen (EP2843130), Oriarian (US20010008179), and Boylan (US6485609).
Regarding claim 1, Heiskanen1 teaches a method for manufacturing a dense film made of cellulose fiber coated with a polymer (abstract, paragraphs 0004, 0010 0020, 0031 and 0072). Heiskanen1 teaches to provide a cellulose fiber web comprising at least 80 weight percent microfibrillated cellulose (MFC) based on the solids of the suspension (paragraphs 0012-0013, 0018), which overlaps with the claimed range of 50to 99 wt% based on the dry weight of the substrate. Heiskanen1 teaches the basis weight of the base sheet (substrate) is less than 50 g/m2 (paragraphs 0012 and 0043), for example 25 or 30 g/m2 (paragraphs 0084 and 0091), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Heiskanen1 teaches to apply a foam comprising the polymer surface sizing chemicals to the substrate (paragraphs, 0031, 0035, 0065 and 0074). Heiskanen1 teaches to dry the foam to form the polymer coating (paragraphs 0031, 0072 and 0074). Since the resulting coating is intended to form a barrier coating resulting a dense web (paragraphs 0010, 0040), it is reasonably expected the foam are collapsed. Heiskanen1 teaches the polymer are water soluble (paragraph 0031). Heiskanen1 teaches foam forming polymer is amphiphilic polymer, such as polyvinyl alcohol (paragraph 0031). Heiskanen1 teaches the substrate is formed from MFC having a Schopper-Riegler value of more than 90 (paragraph 0028), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Heiskanen1 teaches the web is still wet (has a moisture content) with higher porosity compared to dry web for easier absorption of the chemical in the film (paragraph 0020), wherein the moisture content is for example, at least 10wt% (paragraph 0056). Thus, Heiskanen1 teaches the moisture of the film governs the absorption of the chemical in the film without specified the dry content of at least 95wt%. Nevertheless, Oriarian teaches a method of delivery treating agent to a web in the process of making paper product (paragraph 0001), which as tissue (paragraph 0002), which is the same as Heiskanen1 (paragraph 0053); wherein the treating agent comprising softener (paragraph 0036), which is the same as Heiskanen1 (paragraph 0058). Oriarian teaches to apply the treatment agent to the “dried” web of cellulose (paragraphs 0016 -0017), with at least 70% of solids contents (paragraphs 0020 and 0038), which overlaps with the claimed range (and also Heiskanen1’s “wet” web range of more than 10% moisture content). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Oriarian teaches application on the “wet” web suffers from disadvantages of contamination and materials loss with the moisture removed from the web during the drying process (paragraph 0006). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the moisture content in the web before the application of the treating agent in the process of Heiskanen1 in view of Oriarian to yield the desired level of treating agent absorption (by Heiskanen1) but avoiding contamination and loss of the treatment material (by Oriarian). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Heiskanen1 does not explicitly teach the foam is aqueous foam and prepared from an aqueous solution of a foam forming polymer. However, Pietikainen teaches a method of applying substance layer onto fiber web by foam application (abstract). Pietikainen teaches to form the aqueous foam from an aqueous solution of the polymer, including polyvinyl acetate and polyvinyl alcohol (paragraphs 0045 and 0047-0048) (same polymer as Heiskanen1 paragraph 0031 and instant claimed invention). Pietikainen teaches the basis weight of the polymer coating is less 0.5-5g/m2 (paragraph 0034), which is inside the claimed range. Since Heiskanen1 teaches size polymers are sizing chemical (paragraph 0058) to provide desired characteristics and coating of the product film (paragraphs 0032 and 0065). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize (especially increase) the amount of the sizing foam forming polymer in the solution in the process to ensure enough sizing material is applied to the product film to achieve the desired characteristic. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the aqueous form from an aqueous solution of the foam forming polymer as suggested by Pietikainen in the method of Heiskanen1 because Pietikainen teaches the foam comprising polymer such as polyvinyl acetate and polyvinyl alcohol can be formed from the aqueous solution of the polymer (paragraphs 0047-0048).
While Heiskanen1 in view of Pietikainen and Oriarian does not explicitly teach the molecular size of the sizing agent polymer (polyvinyl acetate and polyvinyl alcohol), It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Especially the molecular weight would be reasonably expected to affect the viscosity of the aqueous solution of the polymer which would affect the foam formation, thus it would be obvious to optimize the molecular weight to facilitate the application of the polymer by the aqueous foam. Nevertheless, Boylan teaches a method of forming a coating on paper product having an ink jet coating applied thereto (abstract). Boylan teaches the sizing agents a primary amine functional polyvinyl alcohol with preferred molecular weight of 8000-11000 (abstract, column 5 line 64 to column 6 line 15, column 12 line 50-60), which is in the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply such molecular weight to the sizing polymer as suggested by Boylan in the method of Heiskanen1 in view of Pietikainen and Oriarian because Boylan teaches such molecular weight contributes to the improved levels of optical density of resulting paper (column 12 lines 50-60).
Regarding claim 2, Heiskanen1 teaches to provide a cellulose fiber web comprising at least 80 weight percent microfibrillated cellulose (MFC) based on the solids of the suspension (paragraphs 0012-0013, 0018), which overlaps with the claimed range of 50to 99 wt% based on the dry weight of the substrate. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 3, Heiskanen1 teaches the substrate is formed from MFC having a Schopper-Riegler value of more than 90 (paragraph 0028), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 4, Heiskanen1 teaches the cellulose fibers are MFC (paragraph 0013).
Regarding claim 5, Heiskanen1 teaches the substrate comprises at least 80% weight percent of the MFC which are considered to be “highly refined” in instant claimed invention (see claim 4) (paragraph 0018), thus, Heiskanen1 only less than 20wt% can be other solids including possibly unrefined or slightly refined cellulose fibers, which is inside of the claimed range of less than 50wt%. Heiskanen1 teaches the substrate is formed from “highly refined” MFC having a Schopper-Riegler value of more than 90 (paragraph 0028), thus, Heiskanen1 teaches the slightly refined or unrefined cellulose fibers is less than 90 SR, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 7, Heiskanen1 teaches the basis weight of the substate is less than 50g/m2 (paragraph 0012), which is inside the claimed range.
Regarding claim 8, Heiskanen1 teaches the cellulose based substrate is transparent (paragraph 0077).
Regarding claim 10, Heiskanen1 teaches the cellulose based substrate has a high porosity (paragraph 0020) and the porosity governs the level of absorption of the chemicals in the film (paragraph 0020). Since Gurley-Hill value is an indication of porosity level (larger the pores lower the Gurley-Hill value), it would have been within the skill of the ordinary artisan to adjust and optimize the porosity of the substrate, specifically by increasing the size of the pores for the lower Gurley-Hill value, in the process to yield the desired level of the adsorption (paragraph 0020). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 12, Heiskanen1 the denser the film the higher barrier properties (paragraph 0021). Since Gurley-Hill value is an indication of porosity level (larger the pores lower the Gurley-Hill value), it would have been within the skill of the ordinary artisan to adjust and optimize the porosity (density) of the coated substrate, specifically by decreasing the size of the pores for the higher Gurley-Hill value, in the process to yield the desired level of the adsorption (paragraph 0020). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 15, Heiskanen1 teaches the aqueous foam further comprises a cross-linking agent (paragraph 0031). It would be reasonably expected the cross-linking agent is configured to cross-link the forma forming polymer as it is a functional additive (paragraph 0031) and the function of a cross-linking agent is to crosslink polymer.
Regarding claim 17, Pietikainen teaches the aqueous foam has a density of 50-500kg/m3, which is inside the claimed range of less than 0.8g/cm3.
Regarding claim 21, Pietikainen teaches to heat the substrate before the foam application (paragraph 0045). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat the substrate before applying the foam as suggested by Pietikainen in the method of Heiskanen1 because Pietikainen teaches the heating lower the surface tension and improve the absorption of the foam substance into the fiber web (paragraph 0045).
Regarding claim 22, Heiskanen1 teaches to dry the foam to form the coating (paragraph 0074), thus indicates the collapsing comprises drying the aqueous foam.
Regarding claim 24, Pietikainen teaches the coating the substate forms at least one barrier layer (paragraph 0026) and Heiskanen1 teaches the coated web has an oxygen transmission rate of less than 1ml/m2/day (paragraph 0040), which includes no oxygen transmission and non-porous.
Regarding claim 25, Heiskanen1 teaches a functional additive crosslinker is included in the foam comprising the polymer (paragraph 0031), thus Heiskanen1 teaches to subject the forma forming polymer of the collapsed aqueous foam to crosslinking.
Regarding claim 28, Heiskanen1 teaches the oxygen transfer rate if less than 1ml/m2/day (paragraph 0040). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Heiskanen1 (US20180245289) in view of Pietikainen (EP2843130), Oriarian (US20010008179) and Boylan (US6485609) as applied to claims 1-5, 7-8, 10, 12, 15, 17, 21-22, 24-25 and 28, and further in view of Kajander (US6723670).
Regarding claim 18, Heiskanen1 in view of Pietikainen teaches all limitations of this claim, except the viscosity of the foam. However, Kajander teaches a method of coating a nonwoven fibrous mat with a foam (abstract). Kajander teaches the viscosity of the foam governs the level of penetrations of the broken foam into the fibrous substrate (column 7 lines 55-60). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the viscosity of the foam in the process to yield the desired level of penetration of the broken foam into the fibrous substrate. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 19, Heiskanen1 in view of Pietikainen teaches all limitations of this claim, except the thickness of the foam, However, Kajander teaches the thickness of the foam governs the application rate and controlled by speed of the web movement and rate of foam pumped to the foam applicator (column 6 lines 25-30). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness in the process to for the desired application rate, speed of the web movement and rate of foam pumped to the foam applicator. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. In addition, it would be obvious that the thickness of the foam governs the amount of the polymer being applied to the substrate. Thus, it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Heiskanen1 (US20180245289) in view of Pietikainen (EP2843130), Oriarian (US20010008179) and Boylan (US6485609) as applied to claims 1-5, 7-8, 10, 12, 15, 17, 21-22, 24-25 and 28, and further in view of Heiskanen2 (US 20190048527).
Regarding claim 27, Heiskanen1 in view of Pietikainen teaches all limitations of this claim, except the water vapor transfer rate of the coated substrate. However, Heiskanen2 teaches a method of forming a fibrous web with low oxygen transmission rate (abstract). Heiskanen2 teaches gas barrier properties in the fibrous substrate are very dependent on the moisture or the relative humidity in the surrounding environment, it is common to coat the MFC film with polymer film to prevent moisture of water vapor to swell and disrupt the MFC film (paragraph 0002); and low water transmission rate provides gas barrier properties such as oxygen or air at high relative humidity (paragraph 0003). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the water vapor transmission rate of the coated substrate in the process to yield the desired level of gas barrier properties, such as oxygen or air, at high relative humidity. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Response to Arguments
Applicant's arguments filed on March 30, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
The coating concept and coating formulation according to claim 1 is critical and specifically advantageous in terms of the coating providing surface filling (e.g. of pinholes) of the thin cellulous-based substrate and improved barrier properties, and obtain good barrier properties even when the foam is applied a very low grammages. The foam coating has been found to decrease the risk of web breaks.
Heiskanen1 teaches it is important that the foam used for surface sizing is applied to a wet web, and paints away from the method of claim 1 which involves a dry content of at least 95et%.
Oriarian relates to treatment of consumer paper products, such as tissue, which is different from Heiskanen1, which teaches the manufacturing of dense films, not issue.
In response to Applicant’s arguments, please consider the following comments:
It is well settled that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MEPE 716.02(b)). In addition, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (716.02(d) II). Applicant has not provided factual evidence to support show that the coating concept and coating formulation (in the specific claimed ranges of the concentration, basic weight of the polymer coating etc), are both statistical and practical significance.
The teaching rejection is based on Heiskanen1 in view of Oriarian. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Both Heiskanen1 and Oriarian teaches to produce a paper product, thus, they are analogous arts. The rejection does not based on direct replacing the dry contact claimed range of Heiskanen1 by Orianian’s. Heiskanen1 teaches the web is still wet (has a moisture content) with higher porosity compared to dry web for easier absorption of the chemical in the film (paragraph 0020), wherein the moisture content is for example, at least 10wt% (paragraph 0056). Thus, Heiskanen1 teaches the moisture of the film governs the absorption of the chemical in the film without specified the dry content of at least 95wt%. Oriarian teaches application on the “wet” web suffers from disadvantages of contamination and materials loss with the moisture removed from the web during the drying process (paragraph 0006). One of ordinary skill in the art would have recognized the reasons provided by Heiskanen1 and Oriarian would be applicable to any paper products, regardless of the density of the film. Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the moisture content in the web before the application of the treating agent in the process of Heiskanen1 in view of Oriarian to yield the desired level of treating agent absorption (by Heiskanen1) but avoiding contamination and loss of the treatment material (by Oriarian). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, or by showing that the art teaches away from the claimed invention (MPEP 2144.05 III). It is noted that Applicant has not established criticality of claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lin (CN109267423).
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.
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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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