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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/26/2026 has been entered.
Response to Arguments
Applicant's arguments filed 4/30/2026 have been fully considered but they are not persuasive. Applicant has amended the claims to require that one of the cover layers is formed by bleached short chemical fibers and the other fibers are unbleached.
Applicant argues that the Da Silva reference fails to teach any bleached fibers, and that Da Silva does not address improved optical properties of the paper achieved by having a bleached layer.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., superior optical properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that Da Silva focuses on the “reduction of paper cost” and argues that the addition of a bleached layer would add additional cost and therefore go against the focus.
Da Silva provides a list of potential benefits to the Kraft liner taught in the argued paragraph [0021] including improving the appearance of the sheet reducing the roughness of the sheet, improving the quality of the printing, making the product more competitive and others.
The entire focus of reduction of cost is discussed in the summary section and is focuses on the increase of quality and efficiency of the eucalyptus fibers. The act of bleaching is not even considered much less a deterrent from the cost saving focuses of making a paper of higher quality by improving the surface roughness and avoiding holes in the sheets [0016-0026].
Additionally, this is not held to be persuasive as the act of teaching finding a favorable psychical mechanical properties and cost reduction is not a teaching away from the use of bleach. Bleaching a paper layer is a known and conventional aspect of papermaking and can be done in a cost effective manner. This would not produce such a great financial burden to add one additional step to overcome the entirety of the teachings of the reference.
It is also noted that in the rejection it was stated that Da Silva does not teach the act of bleaching the Kraft liner. It was the introduction of the Heijnesson-Hulten reference that introduces the obviousness of bleaching the Kraft liner.
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).
Applicant further argues that Da Silva proposes the use of starch while the instant application can include other additives.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., non-starch additives) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The claims as currently written explicitly requires the addition of “a starch surface additive” in step ii of claim 1. It is unclear as to how this reads on an additive other than starch.
Applicant argues the use of the Heijnesson-Hulten teachings by saying that the act of bleaching the surface charge of the fibers, affinity for starch, resistance to interfibrillar bonding, and other optical properties.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., all of the above properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that Heijnesson-Hulten reference only address cellulose products and not a paper made exclusively of short fibers.
As previously stated, Heijnesson-Hulten explicitly teaches the production of Kraft liners. This is the same cellulose product as both Da Silva and the instant application.
Heijnesson-Hulten further teaches that it is known that the Kraft liners can be White, Brown, or White topped with unbleached layers underneath.
Heijnesson-Hulten is presented as a showing that the use of a white topped kraft liner is conventional and that the act of making a Kraft liner can be selected from any of those three conventional options.
If Heijnesson-Hulten had taught all of the claimed limitations (being made of exclusively short fibers), then it would have been presented as an anticipation rejection in its own right.
The obviousness rejection presented showed that Da Silva taught all of the physical structures and is simply silent to one of the layers being bleached.
Heijnesson-Hulten also teaches Kraft liners and states that the layers can be all bleached, none bleached, or the top layer bleached with the under layers unbleached.
It is the combination of references that are utilized in the rejection o show that it would have been obvious to one of ordinary skill in the art to select the conventional form of the white top kraft liner as taught by Heijnesson-Hulten in the products of Da Silva as this configuration is known and conventional in the prior art.
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).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 8, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Da Silva, WO 2019/126848 (utilizing US Patent Publication 2020/0370243 as an English language equivalent as part of the same PCT file) in view of Heijnesson-Hulten et al, US Patent Publication 2011/0088860.
Regarding claims 1 and 12, Da Silva teaches a Kraftliner type paper (see title) in 1-3 layers of construction (see abstract and claim 6) made up of 100% short eucalyptus chemical fibers (see abstract) with a starch additive of 0-30 Kg starch per ton of paper (see abstract) on one or both sides of the paper [0049].
Da Silva teaches everything except for the production of a White top Kraftliner were the outer layers is formed from a bleached short chemical fiber, instead leaving it as an unbleached to form a brown Kraftliner. There is no teaching away from bleached fibers, only a lack of a teaching of making a white Kraftliner.
In the same field of endeavor of making "cellulose products", Heijnesson-Hulten teaches that a "cellulose product" can be a Kraftliner that is fully bleached, fully unbleached, or a White Top Liner made up of an unbleached back layer with a bleached chemical pulp [0009].
This is a clear teaching that Brown Kraftliners, White Top Kraftliners, and fully White Kraftliners are all functional equivalents in the eyes of the average artisan. They are obvious variants of each other and it would have bene obvious to one of ordinary skill in the art at the time of the invention to replace a Brown Kraftliner with a White Top Kraftliner as a simply substitution of one functional equivalent for another (see response to arguments above).
Regarding claims 8 and 14, Da Silva and Heijnesson-Hulten remains as applied above and Da Silva further teaches that the grammage is 100-300 g/m2 [0045].
Regarding claim 13, Da Silva and Heijnesson-Hulten remains as applied and Heijnesson-Hulten further teaches the use of micro fibrillated cellulose as the additive as another option to starch [0011-0015].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12 of copending Application No. 18/929,338 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the '338 application is a method for making a brown kraftliner, but follows all of the same physical requirements of the product claims of the instant application. The only difference is the difference between a brown kraftliner and a white top kraftliner, which as stated above would have been obvious to one of ordinary skill int eh art in view of the Heijnesson-Hulten reference. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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