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Claims 16-19 withdrawn
Claims 1-15, 20 pending and elected
Election/Restrictions
Applicant’s election of claims 1-15 and 20 in the reply filed on 10-31/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-15 and 20 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.
Claim 1 recites the limitation "a surface" in page 37, line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation "a surface" in page 39, line 2. There is insufficient antecedent basis for this limitation in the claim.
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 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.
Claim(s) 1-15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Koyama (PG Pub 2014/0045684 A1).
Consider Claim 1, Koyama is in the process of forming a coated paper (abstract), teaches the process for forming a coated paper by coating a sealer layer between the base material (as a substrate having a surface) and the coating layer [0095], where the sealer layer formulation is formulated using a pigment that comprises metal cations (such as the magnesium ions of the magnesium carbonate) [0099], forming a treated substrate. Koyama teaches the process of applying a clear coated layer on top of the sealer layer (the formed treated substrate), where the water base binder (as a solution) is a primary constituent of the clear coat layer [0142], and an example of the water base binder include alginate (sodium alginate) [0144] as a biopolymer solution, therefore applying a solution of biopolymer on the treated substrate.
Koyama does not explicitly teach that the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate.
However, the prior art of Koyama teaches each and every process step and limitation of the applicant’s claims, including the “list of steps taught/taken by references”. Since the “allowing the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate” by the applicant’s claimed process is simply a function of the “list of steps taught/taken by references”, and the prior art of Koyama teaches the claimed process steps. The process of the combination of the Koyama would have naturally flow or inherently produced “allowing the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Consider Claims 2- 5, Koyama the substrate/base material made of purified pulp [0020], and where the purified pulp is mercerized pulp [0043], and the mercerized pulp is obtained from kraft pulp as fibrous material [0048]. Koyama does not teach the use of filler in the process of forming the substrate with fibrous material, leading to 0% of filler.
Consider Claim 6, Koyama teaches the forming of the coating layer comprising the sealer layer (comprising formulation of the metal cations) include forming multiple layers of coating layer [0106]. Where this would include forming another layer (second coating layer) which comprises a metal cation on top of the treated substrate (of the first coating layer) forming and 1st layer.
Consider Claim 7, Koyama teaches the process of forming a first layer (as discussed in claim 6), although Koyama does not explicitly teach the covers percent of the surface of the treated substrate, however Koyama does not teach the process of coating forming patterns, where the patterns would indicate less coverage that hundred percent. Leading to coating 100% of the surface of the treated substrate, with reasonable and predictable expectation of success.
Consider Claim 8, Koyama teaches the sealer layer (formulation comprising the metal cation) comprises a binder [0098], where the binder comprises starch [0100].
Consider Claim 9, Koyama teaches the step of coating sealer layer for forming the treated substrate, followed by heating and drying with a dryer [0105], prior art of coating the biopolymer solution/clear coat layer step [0142].
Consider Claim 10, Koyama teaches the teaches the solution comprising the biopolymer for forming the clear coat layer is printed using inkjet printer [0142].
Consider Claims 11-12, Koyama teaches the process of coating on the base paper using sizing price method [0216], where it be obvious for ordinary skilled person in art to coat the formulation comprising the metal cation and the biopolymer solution/clear coat layer using the size press process, with reasonable and predictable expectation of success.
Consider Claims 13 and 15, Koyama teaches the biopolymer solution/clear coat layer comprises alginate [0144], which is a polysaccharide in each saccharide comprises carboxylic acid group.
Consider Claim 14, Koyama teaches metal cations formulation comprises metal cations such as magnesium, barium, zinc, calcium [0099].
Consider Claim 20, Koyama is in the process of forming a coated paper (abstract), teaches the process for forming a coated paper by coating a sealer layer between the base material (as a substrate having a surface) and the coating layer [0095], where the sealer layer formulation is formulated using a pigment that comprises metal cations (such as the magnesium ions of the magnesium carbonate) [0099], forming a treated substrate. Koyama teaches the process of applying a clear coated layer on top of the sealer layer (the formed treated substrate), where the water base binder (as a solution) is a primary constituent of the clear coat layer [0142], and an example of the water base binder include alginate (sodium alginate) [0144] as a biopolymer solution, therefore applying a solution of biopolymer on the treated substrate.
Koyama does not explicitly teach that the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate.
However, the prior art of Koyama teaches each and every process step and limitation of the applicant’s claims, including the “list of steps taught/taken by references”. Since the “allowing the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate” by the applicant’s claimed process is simply a function of the “list of steps taught/taken by references”, and the prior art of Koyama teaches the claimed process steps. The process of the combination of the Koyama would have naturally flow or inherently produced “allowing the metal cation (magnesium ion) and the biopolymer (alginate) react to form a coated substrate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Additionally, Koyama teaches the metal cation formulation/sealer layer comprises a binder [0095], where the binder has from 5 to 100 part by weight [0104] such as starch [0100], therefore for example for a sealer comprises 92% by weight of binder/starch would include 8% by weight of metal cation. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 8:00AM-5:00PM EST.
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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.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718