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 .
Response to Arguments
Applicant's arguments filed 3/04/2026 have been fully considered but they are not persuasive.
Applicant has amended the claims and argues that the amendments overcome the previously applied 112 rejections. This is not found to be persuasive.
The preamble of the claim has been amended to clarify the transitional phrase of to read “least said method comprising the following steps.” The “least” is believed to be a typo as it previously stated “wherein at least”.
Step a has been amended to read as “separating out of the filtrates cellulosic particulates with a size less than 1200 µm, (measured according to ISO 16065-1) and of further contained additives”. This does not clarify the issues previously raised.
The arguments state that fiber suspension and/or filtrates in the paper industry may contain different particulate substances. In the present case the main fraction consists of cellulose particles, but in fiber suspensions for paper production other additives may be present. These other additives are argued to have a particle size less than 10 microns, but they are contained in the suspension from which the cellulose particles are separated.
The claims utilize the language of “separating out of the filtrates cellulosic particulates.” The arguments state that the substances are contained in the suspension, but the term suspension is not utilized in step a. The point of clarity is it is unclear if the step of removing particulates with a size of less than 1200 microns includes removing the “further contained additives.” It appears that the arguments state that the further contained additives are present in the suspension from which the particles are separated, but doesn’t clarify if they are separated out in the separation process.
The claims have not been amended to address this only arguments presented that do not clarify if the additives remain in the filtrate or are just present there prior to the separation.
The claims as written seem to require that all particulates under 1200 microns are removed from the filtrate. Correction is required in the claims to clarify, as there is a big difference between separating all particulates under 1200 microns from a filtrate and removing the cellulose particulates and leaving the other additives in the filtrate.
It was also raised that the step only address filtrates while the preamble states that either fiber suspensions or filtrates can be utilized.
Applicant has responded saying that suspensions contain solid particulates that can be separated and states that stream 18 in figure 1 comes from outside the system and can be a solution or a suspension contain particles.
This does not answer the question on if step a is directed to only the suspension or the filtrate. The fact that solutions can contain particulates is common knowledge. This issue raised is the nomenclature of the claims. The claims directly states that the filtrates are separated but do not address the fiber suspension. Therefore it is unclear if this is a step that only applies to filtrates and not suspensions. The step a does not state to separate the fiber suspension and/or filtrate like the preamble introduces but instead specifically only states filtrates.
Step b requires coagulating the separated cellulose particulates, and the issues raised were not addressed.
In addressing the issues with step c, applicant states that “step b is not strictly necessary, as would be evident to one skilled in the art.”
This is confusing as it is explicitly required by the claims. The claims states that “the method comprising the following steps”. The claims are not written as alternative steps or optional steps. The language of the claims must be proper to be commensurate in scope with the claims, and the language of the claims must provide the understood meets and bounds of what the scope is. The previously stated 112s are due to the fact that the language of the claims are in contradiction and must be modified for the scope of the claims to be identified.
Step d was rejected as it was unclear if it had to occur after steps a-c or if it even needed any separated materials as the alternative second part of the step simply says mixture of particulates originating from paper, cardboard, or paperboard production with additives.
Applicant responds with it is necessary to separate the particles first, and thereafter one can produce an aqueous suspension containing these separated particles. The language here of it “can” produce an aqueous suspension makes it sound optional. This does not answer if steps a-c are required. Stating that it is necessary to separate the particles first does not provide structure to what the particular have to be.
Applicant further states that step d clearly defines two method step possibilities and states that they are cellulosic particles alone or cellulosic particles and MCF/NFC.
This is not commensurate in scope with the claims as MCF and NFC are not required by the claims. Step d merely states the mixture (which lacks antecedent basis as not mixture has been identified as this far) of particulates originating from paper, cardboard, or paperboard. These do not have to be cellulosic particles at all. Merely some particulate that comes from paper. In any case the claims themselves have not been amended to address this lack of clarity.
Applicant further states that MFC/NFC are cellulosic particles. As stated above, these are not required by the claims. The term “cellulosic particles” was introduced in step a. It is therefore now a specific reference to that item. The fact that MFC is also a cellulosic particulate is immaterial as it is not in reference to the cellulosic particulate being discussed. If it is a second cellulosic particulate it should be identified as such. The claims merely state a particulate from paper.
It was also raised that step d formed an “aqueous suspension” and step e refers to “the suspension of additives.” These are different things. The inconsistent naming makes it unclear as to what is being required, what is further modified, and what is a new item. The same occurs in step f which refers to the “the suspension”.
Applicant states “Claim 1 is in fact directed to only the particles being contained in filtrates and/or suspensions which have previously been separated during the paper and cardboard production (such as, e.g., as one skilled in the art would recognize, on the wire section of the paper machine).”
This is simply not the case.
Moving backwards through the steps has an application of a suspension and drying it in steps f and g. That suspension must have had “other chemicals” added to it in step e. the suspension being made up “from the mixture of particulates originating from paper, cardboard, or paperboard production with additives” in step d.
The cellulosic particulates are listed as an optional source of material to form the suspension, but it is not required.
This is the issue raised as in step d a new source of particulate are introduced that have nothing to do with steps a-c calling into question if they are required or not. Adding arguments like “step b is not strictly necessary, as would be evident to one skilled in the art” further confuses the issue on what is required and not.
The 112 rejections are being maintained as the meets and bounds of the scope of the invention can not be determined based on the claims as currently written. The language utilized in the claims is improper and non-commensurate in scope with the arguments presented.
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.
The 112 rejections discussed above are maintained from the Non-Final Office Action mailed on 11/04/2025.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
While the meets and bounds of the claimed invention are indefinite as discussed above, an art rejection based on the concepts argued will be presented below.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kajanto et al, US Patent Publication 2013/0000856 in view of Wang et al, US Patent Publication 2021/0340396.
Regarding claims 1-15, Kajanto teaches a method of separating out particulates from a fiber pulp [0008] so that the fines remove up to 100% of the fines at a length of less than 0.2 mm [0013] and then the fines are formed into an additive component [0014] and possibly can include added MFC or other additives [0015-007] and then added back into the paper for a treatment step (see claims). Kajanto further teaches that surface treatments are known additive areas for improving the paper properties [0035] and that the fines removed and modified can be used as a coating additive [0037].
Kajanto teaches all of the conceptual components but is silent on the amount of additives utilized in the surface coating.
In the same field of endeavor of treating a paper surface, Wang teaches that it is known to conventionally coat both sides of the paper so that a preferred amount of the coating is present in 8-15 gsm [0055]. Additionally the act of applying a coating over two coats (repeating steps f and g) is a known engineering feat and constitutes a mere duplication of parts as has been held to be obvious to one of ordinary skill in the art.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the preferred and conventional coating amount of 8-15 gsm on the coating paper as taught by Wang in the Kajanto reference that teaching coating but is merely silent as to what the conventional grammage would be.
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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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