1Detailed Office Action
The communication dated 8/19/2025 has been entered and fully considered.
Claims 1 and 8 have been amended. Claims 1-14 and 16-17 are pending.
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 and Amendment
In light of amendment and argument the 112(b) rejections have been withdrawn.
In light of amendments the 102(a)(1) rejections towards claims 1-8, 14, 16, and 17 have been withdrawn.
The applicant filed to amend claims 9-13 or make any arguments thereto. Therefore the rejection towards claims 9-13 have been maintained
The applicant did not amend independent claim 9, therefor the ODP rejections towards claims 9, 12, and 13 remain.
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 9, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/555,125 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims the ‘use’ of the composition and therefore teaches the composition. It also teaches products which contain the composition.
Instant claim 9 see claims 1, 14, and 18, the use of a supercalender is a well-known method of applying chemicals to paper.
Instant claim 12 dry paper has a moisture of 8-10% therefore applying the impregnation solution will raise the dryness to greater than 8-10% which overlaps the instant claimed range.
Instant claims 13 film presses and size presses are well-known methods of applying chemicals to paper.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-8, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2020/0290321 BUSCHMANN, hereinafter BUSCHMANN, as evidenced by U.S. 2021/0040693 GLENN et al., hereinafter GLENN.
As for claim 1, BUSCHMANN discloses a kraft paper that can be coated on both sides with polyvinyl alcohol [0072-0073, 0084]. The paper has a density of more than 1,000 kg/m3 [0039,] which falls within the instant claimed range. BUSCHMANN discloses a grammage of 50 to 80 gsm which overlaps the instant claimed range [0092].
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
BUSCHMANN discloses a MD tensile index of 100-125 Nm/g which falls within the claimed range and a CD tensile index 80-95 Nm/g which falls within the claimed range [0114]. BUSCHMANN a MD tear index of 6 to 10 mNm2/g which falls within the claimed range and a CD tear index 7-11 mNm2/g which falls within the claimed range.
BUSCHMANN discloses that the PVOH coating is from 1 to 20 gsm which overlaps with the instant claimed range [0064]. It is the Examiners position that at least some of the PVOH coating will impregnate/penetrate into the sheet. This is evidenced by GLENN who states that aqueous coatings like PVOH penetrate into the sheet during coating [0005]. The applicant does not claim the degree of penetration required for “impregnation”. While instant Figure 2 sows PVOH that has impregnated all the way to the center of the paper substrate or the instant specification states that most of the PVOH is within the web [0087], the Examiner does not read limitations from the specification into the claims.
As for claim 2, BUSCHMANN discloses at least 50% kraft fiber which falls within the claimed range [0006].
As for claims 3 and 4, BUSCHMANN discloses at least 50% of the pulp is softwood pulp (coniferous) which overlaps with the instant claimed range [0093]. BUSCHMANN states the pulp is made from the genus of wood [0095]. This leaves less than 50% hardwood which overlaps with the instant claimed range.
As for claim 5, BUSCHMANN discloses “at least one later” which means 2 layers are possible [0041].
As for claim 6, BUSCHMANN discloses a grammage of 50 to 80 gsm which overlaps the instant claimed range [0092].
As for claims 7 and 8, the applicant claims an intended result/intended use of repulping of the high-density paper. The amount of fines and degrees of refining is dependent on the after treatment. Because the type of re-pulper and amount of work applied to the fibers will affect the final amount of SR and fines.
As for claim 14, the not all of the PVOH penetrates into the paper sheet; therefore it is also coated with PVOH.
As for claim 16, BUSCHMANN discloses at least 90% kraft fiber which falls within the claimed range [0066].
As for claim 17, HC refining is a product by process limitation. The type of refining only affects the structure in as much as the initial starting pulp is known, the type of refiner, the gap of the refiner, and the time/power of refining. As this is a product by process limitation the burden shifts to the applicant to show a patentable difference.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,198,328 SHIBA et al., hereinafter SHIBA.
As for claim 9, SHIBA discloses a base paper density of 1.0 to 1.2 g/cm3 (1.1-1.2 kg/m3) which falls within the claimed range and makes the sheet a high-density paper [col. 68 lines 16-17. SHIBA discloses a grammage (basis weight) of 50 to 150 g/m2 which overlaps the instant claimed range making a prima facie case of obviousness [col. 68 lines 14-15].
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
SHIBA discloses the sheet is impregnated on both sides in a sizing bath by polyvinyl alcohol [col. 66 lines 15-21, col. 66 lines 1-3] at 1.6 % by weight [col. 96 line 45-46] which is 0.4 g/m2 per side of a 50 grammage base sheet {0.016 * 50 g/m2 / 2 sides} and 0.6 g/m2 per side for 75 grammage base-sheet {0.016 * 75 g/m2 / 2 sides} 0.4 to 0.6
SHIBA discloses supercalendering [col. 68 lines 10-11].
As for claim 10, SHIBA discloses that the PVOH has a degree of polymerization of 1600 -1800 MW [col. 66 line 65] and the specific DP of 1600 * 44 g PVOH monomer/mol [col. 96 line 43. This is equivalent to 70,400 grams per mol which falls within the claimed range. The Examiner notes that the polymer can be modified with 1 to 20% moles of carboxyl groups which will change the MW slightly. At 1% mole of acrylic acid instead of PVA would increase the MW from 70,400 to 70,848 (70,400+0.01*1600* (72-44)). A 20% acrylic acid instead of PVA would increase the MW from 70,400 to 79,360 (70,400+0.2*1600* (72-44)) both of which still fall within the claimed range.
As for claim 11, as SHIBA uses a polymer with substantially the same molecular weight it would be expected to have substantially the same viscosity at the claimed measuring temperature. Additionally at 5% concentration and 20 degrees C the polymer has a mPa*s (cps) of 5 to 100 cps which encompasses the claimed range [col. 66 lines 60-65]. The higher measurement temperature of the claim would be expected to lower the viscosity when measuring that of the prior art.
As for claim 12, SHIBA discloses up to a 9% moisture level [col. 68 line 6] which is outside the claimed range of 11%-20% moisture. However, concentration will not typically support non-obviousness. The person of ordinary skill in the art would look to differing moisture levels to achieve the supercalendering of the desired thickness while preventing electrostatic problems and unevenness. Differing chemical amounts, paper densities, and basis weights would be expected to have differing moisture needs than the narrow range disclosed.
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%.);
Furthermore, given fluctuations in processing and measurement it would be expected that attempting to achieves 9% moisture or 11% moisture there would be overlap during industrial processing.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,198,328 SHIBA et al., hereinafter SHIBA, in view of U.S. 2004/0062868 KURTZ et al., hereinafter KURTZ.
As for claim 13, SHIBA discloses a size press for impregnating the liquid of the base sheet [col. 67 line 40]. SHIBA does not disclose a film press. KURTZ discloses that a film press can be used instead of a size press for a liquid impregnating agent [0016]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute the known film press of KURTZ for the size press of SHIBA. The person of ordinary skill in the art would be motivated to do so by KURTZ who states that there is an advantage of higher speeds [0016]. The person of ordinary skill in the art would expect success as both KURTZ and SHIBA are impregnating a liquid onto paper.
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