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Claims 16-19 withdrawn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 and 20 amended
Claims 1-15, 20 pending
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 zinc ions of the zinc sulfate, a water soluble salt) [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 (zinc 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 “reacting the metal cation (zinc ion) and the biopolymer (alginate) 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 “reacting the metal cation (zinc ion) and the biopolymer (alginate) react to a coated substrate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Examiner note that the Koyama stated “filler” in paragraph [0103], however, Koyama also stated that “pigment” include “inorganic filler” and “organic filler” in [0111]. Leading to having the “filler” in [0103] is the pigment in Koyama’s specification.
Additionally, Koyama teaches the sealer layer formulation comprises a binder pigment/metal cation [0095], where the binder to the pigment weight amount of the solid content of the sealer layer is 5-100:100 [0103]. Moreover, Koyama teaches the sealer layer dried weight ranges from 0.5-30g/m2 [0105]. Furthermore, Koyama teaches the forming of base material (handmade paper) have dried weight of 60 g/m2 [0230]. Therefore, the amount of metal cation (as pigment) in the sealer layer is not less than 50% wt (when the binder is 100 by part to 100 by part of metal cation/pigment). Therefore, (for example) when coating 1 g/m2 of dried sealer layer on base material with 60 g/m2, totaling 61 g/m2 with 1.6 wt % of sealer layer to the coated substrate, where 50% of the 1.6 wt.% is metal cation, leading to 0.8 wt% of metal cation within the coated substrate. 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).
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 zinc ions of the zinc sulfate, a water soluble salt) [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 (zinc 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 “reacting the metal cation (zinc ion) and the biopolymer (alginate) 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 “reacting the metal cation (zinc ion) and the biopolymer (alginate) to form a coated substrate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Examiner note that the Koyama stated “filler” in paragraph [0103], however, Koyama also stated that “pigment” include “inorganic filler” and “organic filler” in [0111]. Leading to having the “filler” in [0103] is the pigment in Koyama’s specification.
Additionally, Koyama teaches the sealer layer formulation comprises a binder pigment/metal cation [0095], where the binder to the pigment weight amount of the solid content of the sealer layer is 5-100:100 [0103]. Moreover, Koyama teaches the sealer layer dried weight ranges from 0.5-30g/m2 [0105]. Furthermore, Koyama teaches the forming of base material (handmade paper) have dried weight of 60 g/m2 [0230]. Therefore, the amount of metal cation (as pigment) in the sealer layer is not less than 50% wt (when the binder is 100 by part to 100 by part of metal cation/pigment). Therefore, (for example) when coating 1 g/m2 of dried sealer layer on base material with 60 g/m2, totaling 61 g/m2 with 1.6 wt % of sealer layer to the coated substrate, where 50% of the 1.6 wt.% is metal cation, leading to 0.8 wt% of metal cation within the coated substrate. 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).
Response to Arguments
Applicant’s arguments, filed 04/13/2026, with respect to the rejection(s) of claim(s) 1-15, 20 under 103a have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Koyama.
The previously applied 112 claims rejection, in light of the amended claim are now withdrawn.
The applicant argued against the prior art of Koyama, on the ground that Koyama does not disclose that filler is the same as pigment, nor Koyama disclose the claimed water soluble salt, with the metal cation is in the range of 0.01-2.5 wt % of the coated substrate.
However, Koyama stated “filler” in paragraph [0103], however, Koyama also stated that “pigment” include “inorganic filler” and “organic filler” in [0111]. Therefore the “filler” in [0103] is the pigment in Koyama’s specification.
Moreover, Koyama disclose the pigment to include zinc sulfate [0099], which is a known a water soluble salt.
Additionally, Koyama discloses the sealer layer formulation comprises a binder pigment/metal cation [0095], where the binder to the pigment weight amount of the solid content of the sealer layer is 5-100:100 [0103]. Moreover, Koyama discloses the sealer layer dried weight ranges from 0.5-30g/m2 [0105]. Furthermore, Koyama discloses the forming of base material (handmade paper) have dried weight of 60 g/m2 [0230]. Therefore, the amount of metal cation (as pigment) in the sealer layer is not less than 50% wt (when the binder is 100 by part to 100 by part of metal cation/pigment). Therefore, (for example) when coating 1 g/m2 of dried sealer layer on base material with 60 g/m2, totaling 61 g/m2 with 1.6 wt % of sealer layer to the coated substrate, where 50% of the 1.6 wt. % is metal cation, leading to 0.8 wt% of metal cation within the coated substrate, which is within the claimed range.
All other applicant arguments not specifically addressed above are deemed unpersuasive as either not commensurate in scope with the broadly drafted claims or are unsupported by factual evidence and are deemed mere attorney speculation.
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 Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
Prosecution Insights