Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 24, 2025 has been entered.
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 November 24, 2025 was received. Claims 1 was amended. Claims 2, 14 and 17 were canceled. No claim was added. Claims 16 and 18-23 were withdrawn.
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 August 27, 2025.
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Claim Rejections - 35 USC § 103
Claims 1, 3-8, 10-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Toubeau (US20160016717) in view of Heiskanen (US20180245289) and Backfolk (US20190234020).
Regarding claim 1, Toubeau teaches a method of making a multilayer paper comprising nanofibrillar cellulose (highly refined cellulose fibers) (paragraphs 0005, 0030, 0048, 0051-0054 and 0067). Toubeau teaches to deposit a first suspension comprising the highly refined cellulose fibers on a first wire to form a first wet web (paragraphs 0110, 0111 and 0113), dewater the first wet web to obtain a first partially dewatered web (paragraph 0115), deposit a second suspension comprising the highly refined cellulose fibers on a second wire to form a second wet web (paragraph 0116), dewater the second wet web to obtain a first partially dewatered web (paragraph 0115), joining the first and second partially dewatered webs obtain a multilayer web (paragraph 0116). Toubeau teaches the highly refined pulp in the first and second suspension has a SR value of 80, 50-70 or 90 (paragraphs 0053, 0055 and 0056), which is inside of the claimed range. Toubeau teaches the first and second suspensions comprise 12-60% nanofibrillar cellulose based on the total dry weight of the suspension (highly refined cellulose fibers) (paragraphs 0033, 0067, 0067 and 0071), 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.
Toubeau does not explicitly teach the first and or second pulp suspension comprises between 50-99.99 wt% of unrefined or slightly refined cellulous fibers (SR below 30). However, Backfolk teaches a method of forming a microfibrillated film (abstract). Backfolk teaches to provide a suspension comprising a first cellulose with high SR value of at least 85 (highly refined cellulose fibers) (paragraph 0016) and a reinforcement fibers cellulose with an SR value of below 40 (unrefined or slightly refined cellulose fibers) (paragraphs 0017) in the amount of at least 5 wt% of the total solid content of the suspension (paragraph 0010), which overlap with the claimed ranges. 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. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the unrefined or slightly refined cellulose in the suspension as suggested by Backfolk in the method of Toubeau because Backfolk teaches such fiber in such amount improves the formation of the film and renders the film easier to handle with improved drainability, the runnability and strength (paragraphs 0015 and 0017). “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (MPEP 2144.05 II. A.). In this case, Applicant has not provided the criticality of the claimed concentration (amount) ranges of both highly refined cellulose fibers and unrefined or slightly refined cellulose fibers.
Toubeau in view of Backfolk does not explicitly teaches to use glaze the multilayer web. However, Heiskanen teaches a method of making paper by forming a web with microfibrillated cellulose (highly refined cellulose fibers) suspension on a wire (paragraphs 0003 and 0012-0014). Heiskanen teaches to size (coating, glazing) the web with sizing chemicals by yankee cylinder (glazing unit/machine, machine glazed paper) (paragraphs 0014, 0018-0021, 0034). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to glaze the web (multilayer web) as suggested by Heiskanen in the method of Toubeau because Heiskanen teaches such glazing to reduce light reflecting surface and to make the film more transparent (paragraph 0077).
Regarding claim 3, Toubeau teaches the highly refined pulp in the first and second suspension has a SR value of 80, 50-70 or 90 (paragraphs 0053, 0055 and 0056), which touches the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549.
Regarding claim 4, Toubeau teaches the highly refined cellulose fibers is nanofibrillated cellulose (paragraph 0048), which is microfibrillated cellulose (MFC) (see Heiskanen paragraph 0045).
Regarding claim 5, Backfolk teaches the reinforcement fibers cellulose with an SR value of below 40 (unrefined or slightly refined cellulose fibers) (paragraphs 0017) in the amount of at least 5 wt% of the total solid content of the suspension (paragraph 0010), which overlap with the claimed ranges. 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. In addition, the reinforced fibers (unrefined or slightly refined fibers) improve the formation of the film and renders the film easier to handle with improved drainability, runnability and strength (paragraphs 0015 and 0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of unrefined or slightly refined fibers in the process to yield the desired formation, drainability, runnability and strength of the film (paragraphs 0015 and 0017). 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 6, Toubeau teaches the first and second suspensions have the same composition (paragraphs 0031-0034, 0067, 0069-0072 and 0116).
Regarding claim 7, Toubeau teaches the first and second suspension have different composition (paragraphs 0116).
Regarding claim 8, Toubeau teaches the first wet web or the second we web comprises more than one layer (paragraph 0117).
Regarding claim 10, Toubeau teaches the joining is performed by pressing (paragraph 0118), which reads on the limitation of we lamination.
Regarding claim 11, Toubeau teaches to dry the multilayer substate (dewatering the multilayer web in dewatering unit) (paragraph 0119). Heiskanen teaches to dewater the web before the glazing so that the moisture content of the multilayer least 30wt% (paragraphs 0052, 0056), thus, Heiskanen teaches the dry solids content of the multilayer web less than 70wt% 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 12, Heiskanen teaches to dewater the web before the glazing so that the moisture content of the multilayer least 30wt% (paragraphs 0052, 0056), thus, Heiskanen teaches the dry solids content of the multilayer web less than 70wt% 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 15, Heiskanen teaches the adhesion control additive is polyvinyl alcohol or polyethylene imine (paragraph 0031) which are the same glazing adhesion control additive in the instant invention. Heiskanen teaches the finished film with the additive has a weight of less than 25g/m2 (paragraph 0040), thus, it would be cleared that the additive would be part of such 25g/m2 weight, thus, the additive is less than 25g/m2 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. In addition, Heiskanen the sizing governs the level of the light reflecting surfaces and film transparency (paragraph 0077). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of sizing chemical (adhesion control additive) in the process to yield the desired level of light reflecting surfaces and film transparency. 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Toubeau (US20160016717) in view of Heiskanen (US20180245289) and Backfolk (US20190234020) as applied to claims 1, 3-8, 10-12 and 15 above, and further in view of Kearney (US4225382).
Regarding claim 9, Toubeau in view of Heiskanen and Backfolk teaches all limitations of this claim, except the dry content of the first and second partially dewatered webs prior to the joining step. However, Kearney teaches a method of making paper by apply fiber slurry to form a first and second film on a first and second wire, and combine to form a multilayer webs (abstract, column 7 line 60 to column 8 line 25) , Kearney teaches the webs are dried dewatered from dry solid contents of 0.25 to 6 wt% and 0.1 to 0.3 wt% (column 2 line 65 to column 3 line 5) to about 10 to 25 wt% (about 10% includes 9%) and about 5 to 15 wt% before joining, which touches and overlaps with the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the same dewater level to achieve the similar dry solids contents in the first and second webs prior to the joining step as suggested by Kearney in the method of Toubeau in view of Heiskanen with a reasonable expectation of success, because Kearney teaches the similar technique of combine wet webs to form a multilayer paper, and such dry solids content amount facilitate the joining step (column 8 lines 1-25).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Toubeau (US20160016717) in view of Heiskanen (US20180245289) and Backfolk (US20190234020) as applied to claims 1, 3-8, 10-12 and 15 above, and further in view of Justus (US4287021).
Regarding claim 13, Toubeau teaches to dry the multilayer web (paragraph 0119) (dewatering the multilayer web in a dewatering unit). Toubeau in view of Heiskanen and Backfolk teaches all limitations except the dewatering unit if an extended nip pressing equipment. However, Justus teaches extended nip process for removing water from a web in a paper machine (abstract) and discloses to use a extended nip pressing equipment to dewater the web (column 1 lines 5-12). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a extended nip pressing equipment as suggested by Justus in the method of Toubeau in view of Heiskanen because Justus teaches such method support and guide the belt whereby the path of travel of the belt remains under control without deviation at high speeds required for pressing a traveling web in a paper making machine and the endless belt running thorough the nip so that the structure is provided attains longer belt life and requires the belt to run though a less torturous path than the conventional structure (column 1 lines 25-35).
Double Patenting
The claim rejections on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10435842 in view of Toubeau (US20160016717) in view of Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
The claim rejections on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12258710 in view of Heiskanen (US20180245289) and Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
The claim rejections on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12258711 in view of Heiskanen (US20180245289) in view of Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
The claim provisional rejections on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/995,445 in view of Heiskanen (US20180245289) and Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
The claim provisional rejections on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 17/995,448 in view of Heiskanen (US20180245289) and Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
The claim provisional rejection on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/042,115 in view of Toubeau (US20160016717) and Backfolk (US20190234020), on claims 1-15 are withdrawn, because a Terminal Disclaimer was submitted and approved on November 24, 2025.
Response to Arguments
Applicant's arguments filed on November 24, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Backfolk does not teach the amended claimed range of the amount of the highly refined cellulose fibers.
In response to Applicant’s arguments, please consider the following comments:
Toubeau teaches such claimed range. 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). In this case, Toubeau teaches the claimed amount range for the highly refined cellulose fibers, while Backfolk teaches the benefit of adding an amount of the unrefined or slightly refined cellulose fibers. In addition, “generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (MPEP 2144.05 II. A.). In this case, Applicant has not provided the criticality of the claimed concentration (amount) ranges of both highly refined cellulose fibers and unrefined or slightly refined cellulose fibers.
Conclusion
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