Detailed Office Action
The communication dated 1/21/2026 has been entered and fully considered.
Claims 24-26 are new. Claims 21-23 have been canceled. Claims 1, 3-15, and 18-20 and 24-26 are pending with claims 1, 3-11, and 18-20 withdrawn from consideration.
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
In light of amendment the 112(b) rejections have been withdrawn.
Applicant argues that ALBERTS meet the claim because they do not teach the term “throughout the entire cross-section”.
In response as discussed in the rejection the applicant does not define which cross-section they are claiming. Specifically the applicant appears to mean the cross-section along the thickness of the sheet (z-direction). ALBERTS while not meeting the z-direction (paper thickness) does meet “throughout the entire cross-section” along a y or x axis.
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Applicant argues that SEKI does not meet the claim because it teaches too low of a sizing agent (0.5%). The applicant also repeats the cross-section argument as per above.
ALBERTS gives specific reasoning and benefits of increasing the sizing agent. ALBERTS discloses that the amount used should be to increase the properties to a desirable amount [pg. 11 line 28]. ALBERTS shows that dry strength, wet strength, and oil-soaked strength is increased with addition of the composition [pg. 13 lines 10-15
Allowable Subject Matter
Claims 15, 25, and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 12-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2020/152082A1 ALBERTS et al., hereinafter ALBERTS
As for claim 12, ALBERTS discloses a biobased biodegradable material container or plate for food [abstract, pg. 1 lines 5-10] (A durable bio-based cardboard product for containing or handling food). The container or plate product is made out of cellulosic fiber pulp in multiple layers forming a board [pg. 5 lines 26-30] (formed from at least two layers of a cellulosic pulp sheet material consolidated into one piece).
The pulp sheet material comprises a polyalcohol and a polycarboxylic acid which cross-link in the pulp [abstract, pg. 6 lines 28-30, pg. 8 lines 14-15] (wherein the pulp sheet material comprises moieties of at least one polyol and at least one organic cross-linking acid having at least two carboxyl groups being at least partially cross-linked to the cellulose structure of the pulp sheet through ester bonds such). The board can have three layers, two with a mixture of pulp and polyester (polyalcohol and a polycarboxylic acid) surrounding a center pulp only layer [pg. 10 lines 10-15] (that the cardboard product shows a cross-linked structure comprising polyol and cross-linking acid moieties throughout the entire cross-section of the pulp sheet material). The Examiner notes the applicant does not claim the specific cross-section; it could be thickness, length or width of the sheet. The amount of the resin is at least 1% to at most 50% which overlaps the instant claimed range with sufficient specificity or in the alternative makes a prima facie case of obviousness [pg. 11 lines 25-33] (that the total solids content of the cross-linking agents is 5-50 wt.-% based on the total weight of the product).
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
As for claim 13, ALBERTS discloses adding a hydrophobic additive [pg. 6 lines 1-5]
As for claim 14, a plate has a flat surface of essentially even thickness, it has attractive visual and tactile characteristics [pg. 2 lines 30-31]. The Examiner understands a plate to have an essentially flat surface with an even thickness. In the alternative it is prima facie obvious to change shape or size [MPEP 2144.04 (IV)(A/B)] and the person of ordinary skill in the art would look to make flat plates with an even thickness.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over WO2020/152082A1 ALBERTS et al., hereinafter ALBERTS, in view of 4,606,496 MARX et al., hereinafter MARX.
As for claim 24, ALBERTS discloses the features as per above including a single-use [pg. 2 line 18] plate/container made out of a board with a crosslinked polyol and polycarboxylic acid [abstract]. ALBERTS does not disclose higher density areas in the single use tableware.
MARX discloses making plates from paper sheets [abstract] and including densified regions radially extending through the annular sections. At the time of the invention it would be obvious to the person of ordinary skill in the art to apply the densification techniques of MARX to the plate containers of ALBERTS. The person of ordinary skill in the art would be motivated to do so to have greater rigidity [col. 8 lines 55-65]
Claims 12-14 are rejected under 35 U.S.C. 103 as obvious over CN114630938A SEKI et al., hereinafter SEKI, in view of, if necessary, WO2020/152082A1 ALBERTS et al., hereinafter ALBERTS
As for claim 12, SEKI discloses a biobased biodegradable tableware for food made of thick paper [0025, 0033] (A durable bio-based cardboard product for containing or handling food). The container or plate product is made out of cellulosic fiber pulp in multiple sheets forming a board [0022-0021] (formed from at least two layers of a cellulosic pulp sheet material consolidated into one piece).
The pulp sheet material comprises a sizing agent added to each of the layers [0056] made by reacting polycarboxylic acids with polyols [0057]. Fumaric acid has two carboxylic acid groups and therefore is polycarboxylic (wherein the pulp sheet material comprises moieties of at least one polyol and at least one organic cross-linking acid having at least two carboxyl groups being at least partially cross-linked to the cellulose structure of the pulp sheet through ester bonds such). The additives are added into the pulp and therefore are throughout the layers cross-section of both the middle layers and surface layers [pg. 10 lines 10-15] (that the cardboard product shows a cross-linked structure comprising polyol and cross-linking acid moieties throughout the entire cross-section of the pulp sheet material). The amount applied is 0.5 to 5 kg/ton (0.05-0.5%) [0058] which is less than the claimed range. However, differences in concentration will not typically support non-obviousness.
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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.);
The amount of rosin supplied is a result effective variable which increases the water resistance at higher additions. As such it would be obvious to optimize the amount of chemicals added through routine experimentation.
"[A] modification of a process parameter may be patentable if it ‘produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art."
citing Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448 (Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind – i.e., if the range produces ‘a new property dissimilar to the known property,’ rather than producing a predictable result but to an unexpected extent.").
In the alternative, if necessary, in the same art as adding carboxylic acids with polyols to pulp, ALBERTS discloses the amount of the resin is at least 1% to at most 50% which overlaps the instant claimed range with sufficient specificity or in the alternative makes a prima facie case of obviousness [pg. 11 lines 25-33]. ALBERTS discloses that the amount used should be to increase the properties to a desirable amount [pg. 11 line 28]. ALBERTS shows that dry strength, wet strength, and oil-soaked strength is increased with addition of the composition [pg. 13 lines 10-15]. Therefore at the time of the invention it would be obvious to apply the known range of ALBERTS to SEKI to achieve properties including strength and water/oil resistance.
As for claim 13, SEKI discloses adding a hydrophobic additive, rosin [0065].
As for claim 14, SEKI discloses the paper used for the tableware sheet has been smoothed and has a high-quality feel [0098]. SEKI discloses plates [0033]. The Examiner understands a plate to have an essentially flat surface with an even thickness. In the alternative it is prima facie obvious to change shape or size [MPEP 2144.04 (IV)(A/B)] and the person of ordinary skill in the art would look to make flat plates with an even thickness.
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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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 (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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