DETAILED ACTION
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 the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 19-21, 23-29, and 32 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 19-21, 23-29, and 32, claim 19 recites that all of the fibers of the thermoplastic polymer binder are malleable but not melted at a temperature in a range of 80 to 180ºC and in a range of 100 to 180ºC (claim 32). Applicant’s specification including at paragraph 0090 does not recite all of the fibers as claimed. Therefore, the limitation constitutes new matter.
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 19-21, 23-29, and 32 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.
Regarding claims 19-21, 23-29, and 32, claim 19 recites that all of the fibers of the thermoplastic polymer binder are malleable but not melted at a temperature in a range of 80 to 180ºC and in a range of 100 to 180ºC (claim 32). It is unclear if the recitation of “in a range” requires values only within the recited temperature ranges or if “in a range” allows for values within and outside the recited temperature ranges, such as values “about” the claimed temperature ranges.
Additionally, it is unclear if the claim requires the fibers to be malleable but not melted over the entirety of the temperature range or only at a value within the claimed range.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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:
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 19-21, 23-29, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/142714 to Enarsson in view of USPN 6,509,092 to Dugan and US Pub. No. 2014/0374106 to Zhu.
Regarding claims 19-21, 23-29, and 32, Enarsson teaches a dry-laid composite web being an intermediate product for thermoforming of three-dimensionally shaped objects, comprises 40-95-% CTMP fibres, preferably 60-85 wt-%, and 5-50% thermoplastic material, more preferably 15-40 wt-% (Enarsson, Abstract, page 8 lines 8-20). Enarsson teaches that the thermoplastic material may be one single polymer (Id., page 13 lines 3-24) but preferably comprises a first polymer having a glass transition temperature of -60ºC – +80ºC, and a second polymer having a glass transition temperature of 45ºC – 130ºC, wherein the composite web is subjected to a temperature above the glass transition temperature of the first polymer but not the second polymer, so that the first polymer binds to the CTMP fibres (Id., page 2 line 21 to page 3 line 11). Enarsson teaches that the binder may be in the form of particles (Id., page 7 line 27 to page 8 line 7). Enarsson teaches that the first polymer may comprise polymers such as acrylic, polyvinyl acetate, and PE- and PP-based co-polymers (Id., page 14 line 21 to page 15 line 4). Enarsson teaches that the second polymers may comprise polymers such as acrylic, styrene, polyethylene terephthalate, thermoplastic starch and polylactic acid (Id., page 15 lines 5-13).
Enarsson does not appear to teach the claimed water soluble binder. However, Dugan teaches multicomponent fibers which include a surface modified thermobondable non-biodegradable synthetic polymeric component and a biodegradable component, which permits thermal bonding of the multicomponent fiber to other fibers with enhanced adhesion (Dugan, Abstract). Dugan teaches that the multicomponent fibers comprise preferably a sheath/core arrangement (Id., column 3 line 62 to column 4 line 11). Dugan teaches that the thermobondable non-biodegradable polymeric has a melting or softening point of at least 10ºC, most preferably at least 25ºC, less than the melting point of the biodegradable polymer component (Id., column 4 lines 40-54). Dugan teaches that the thermobondable non-biodegradable polymeric components are preferably polyolefins and other polymers including ethyl vinyl acetate copolymers and ethylene acrylic acid copolymers (Id., column 4 line 65 to column 5 line 17). Note that an ethylene acrylic acid copolymer is a polyacrylic acid. Dugan teaches that exemplary biodegradable polymers include polyvinyl alcohol and polylactic acid (Id., column 5 line 64 to column 6 line 19), wherein the biodegradable polymer component provides strength or rigidity to the fibers (Id., column 6 lines 20-31). Dugan teaches that the multicomponent fibers can be incorporated into a fabric comprising natural fibers such as wood pulp fibers and the like (Id., column 9 lines 38-51), formed by a dry laid process (Id., column 9 lines 52-62).
Additionally, Zhu teaches multicomponent degradable materials that have accelerated degradation in water in low temperature conditions, and their various industrial and consumer product uses (Zhu, Abstract). Zhu teaches multicomponent fibers comprising components that degrade at different rates in water, or water soluble components in combination with water degradable components (Id., paragraph 0005). Zhu teaches that suitable degradable polymers include poly(lactic)acid and poly(ethylene terephthalate) (Id., paragraphs 0013-0014), wherein degradable polymers can be degraded in water at 60ºC (Id., paragraphs 0037-0038). Zhu teaches that examples of water soluble polymers include polyvinyl alcohol and polyacrylic acid copolymers (Id., paragraph 0071), wherein water soluble polymers dissolve in water (Id., paragraph 0040). Zhu teaches that the degradable polymers may be used to construct the sheath and the water soluble polymers may be used as the core (Id., paragraph 0068), or the water soluble polymers may be used to form the sheath and the degradable polymers as the core (Id., paragraph 0069), based on the desired properties. Zhu suggests that the fiber components may both comprise the same polymer that degrades at different rates (Id., paragraphs 0082-0087).
Enarsson teaches a particle binder which may be a single polymer or comprising a first and second polymer, such as acrylic polymers, used to bind natural fibers. Dugan teaches a multicomponent fiber comprising a thermobondable sheath component, such as ethylene acrylic acid copolymers, and a biodegradable polymer component, such as polyvinyl alcohol or polylactic acid, which provides strength or rigidity to the fiber. Additionally, Zhu teaches that the polymers recited in Enarsson and Dugan are degradable in water. Based on the combined teachings of the prior art, one of ordinary skill in the art would recognize the suitability of a thermobondable component alone or in combination as a multicomponent fiber or as a particle binder, as a binder for natural fibers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the dry-laid composite web of Enarsson, wherein the acrylic binder is a polyacrylic acid particle binder, monocomponent fiber or bicomponent fiber, having components such as claimed, as taught by Dugan, wherein the components are degradable in water, as taught by Zhu, motivated by the desire of forming a conventional dry-laid composite web comprising a binder known in the art as being functionally equivalent and predictably suitable for use in binding wood fibers, including having properties known in the art for multicomponent fibers comprising the aforementioned components.
Regarding the blank being recyclable in a repulping process, the invention of the prior art combination is substantially similar in structure and composition as claimed. Therefore, the composite of the prior art combination appears recyclable as claimed.
Regarding the binder being water soluble or having a solubility at a repulping temperature as claimed, the polymers recited in the prior art appear to inherently be water soluble, as Applicants’ specification does not indicate that such polymers are modified in a manner to make the polymers water soluble as claimed.
Regarding all of the fibers of the binder being malleable but not melted at the claimed temperature ranges, as set forth above, it is unclear exactly what is claimed. However, Enarsson teaches that the thermoplastic material may be one single polymer, but preferably comprises a first polymer having a glass transition temperature of -60ºC – +80ºC, and a second polymer having a glass transition temperature of 45ºC – 130ºC, wherein the composite web is subjected to a temperature above the glass transition temperature of the first polymer but not the second polymer, so that the first polymer binds to the CTMP fibres. Enarsson teaches that if the target is a rigid product with temperature stability up to a certain temperature, Tg of the polymer should be chosen above the upper application temperature, but the Tg of the polymer should be below 100ºC (Enarsson, page 14 lines 3-24). Additionally, as set forth above, the prior art combination renders obvious the claimed binder. Therefore, it is reasonable for one of ordinary skill to expect that since the glass transition temperature may be 80ºC or below 100ºC, the binder would not melt at a temperature in the claimed range, such as at 80ºC or at 100ºC and would be malleable up to the range suggested by Enarsson. Note that a glass transition is lower than a melting temperature.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the dry-laid composite web of the prior art combination, wherein the acrylic binder does not melt at 100ºC or has a melting temperature above 100ºC, as suggested by Enarsson, motivated by the desire of forming a conventional dry-laid composite web having the desired properties including rigidity, suitable for the intended application.
Regarding claim 23, although the claimed invention is not hot pressed, the invention of the prior art combination appears to meet the limitations as claimed, as such a relationship is disclosed in the bicomponent fibers of the prior art combination.
Response to Arguments
Applicant's arguments filed December 22, 2025, have been fully considered but they are not persuasive. Applicant argues that not all of the fibers would be malleable but not melted at a temperature in a range of 80 to 180C. Additionally, Applicant argues that a person of ordinary skill in the art would not modify the product to include a first polymer with a higher glass transition temperature or to use a second polymer with a lower glass transition temperature since doing so would result in a mix of polymer fibers that does not melt to be sufficiently bonded.
Regarding Applicant’s arguments, Examiner respectfully disagrees. As set forth above, it is unclear exactly what is claimed. However, Enarsson teaches that if the target is a rigid product with temperature stability up to a certain temperature, Tg of the polymer should be chosen above the upper application temperature, but the Tg of the polymer should be below 100ºC (Enarsson, page 14 lines 3-24). Additionally, as set forth above, the prior art combination renders obvious the claimed binder. Therefore, it is reasonable for one of ordinary skill to expect that since the glass transition temperature may be 80 ºC or below 100ºC, the binder would not melt at a temperature in the claimed range, such as at 80ºC or at 100ºC and would be malleable up to the range suggested by Enarsson. Note that a glass transition is lower than a melting temperature.
Conclusion
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786