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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawasaki et al., (hereinafter Kawasaki) EP 3816347 A1.
With regard to claims 1-2 and 7, Kawasaki teaches a paperboard, which is formed onto a tube, having not more than 5 layers (abstract). The board is formed with cellulose fibers (¶-[0022]) and shows a board having basis weight of each layer falling within the claimed range, i.e. example 6 on ¶-[0043], shows a 3 layer/ply having basis weight of 110/110/40, which clearly shows that the basis weight of the first outer layer is at least 2.0 time, at least 2.5 times the basis weight of the bottom layer (reading on claims 1 and 2) and the grammage of the first/top layer is above 35 g/m2 (reading on claim 7).
Claims 1-2 and 6-7 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 Meazle et al., (hereinafter Meazle), United State Patent No. 7,892,613 B2.
Regarding to claims 1-2, Meazle teaches a paperboard made using cellulose fibers (column 4, lines 14-52) including a top, middle (intermediate) and bottom1 plies (abstract and figure 1). Meazle discloses that it is preferred that the basis weight of bottom ply is 1.5 to 4.0 times the basis weight of the top ply; see column 3, lines 33-48, which teaches the most preferred proportion of bottom to top ply between 60:40 to about 80:20 (column 3, line 48), which reads on claims 1-2. Table 2 shows bottom to top ply basis weight greater than 2.0; see sheets 6-9.
With regard to claims 6-7, Meazle teaches also that the basis weight of the plies can vary depending upon the type of board that to be made (column 2, lines 43) and teaches that the basis weight of said top and bottom plies (the outer plies) can be from 6 lb/1000 ft2 to 300lb/ft2 (29.28 g/m2 to 1,464 g/m2), which as it can be seem the top can be greater than 35 g/m2 and the bottom below 30 g/m2.
It seems that Meazle teaches all the limitations of the above claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al., (hereinafter Peng), WO 2006/084883 A1.
With regard to claims 1-9, Peng teaches an asymmetric2 paperboard and teaches that the basis weight of the plies can vary depending of the type of board that is to be made (page 1,lines 8-10 and page 7, lines 1-5). Peng exemplify a board having basis weight of 170 g/m2 (page 14, lines 16-20) with basis weight of top, middle and bottom of 34/108/28 g/m2 which is a little below the ratio of the top to bottom basis weights of the claims 1-2 and 7. However, choosing the basis weights of the different layers to be within the claimed range is within the level of ordinary skill in the art depending on the type of paperboard to be made and /or the desired properties of the board to be optimized, i.e., bending flexibility, tensile strength, Scott-bond, Brightness, etc., and thus considered obvious absent a showing of unexpected results. Note that Peng teaches the use of CTMP in the middle layer (reading on claim 8); see for example page 14, lines 16-20 and table 5 shows the density of the middle layer below 550 kg/m3 (reading on claim 3 ). Also shows basis weight of the bottom layer of less than 30 (which fall within the limitations of claim 6). The grammage and the middle layer being within the limitations of claim, as-well. Peng also teaches that the middle layer can include broke as part of the middle layer; see paragraph bridging pages 8 and 9.
Regarding the process claims. claims 10-17, the process of making and altering the different variables of the, e.g., jet/wire ratio the Freeness of the pulp(s) on each ply/layer are common in the arti and thus considered obvious, absent a showing of unexpected results.
Claims 3-5 and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over any of Kawasaki and Meazle in view of Peng, all cited above.
Neither Kawasaki nor Meazle, teaches the limitations of the product claims 3-5 and 8-9, However as indicated by Peng; see above, choosing the middle ply to include CTMP (for claim 8) is known in the art to increase the bulk of said layer and also for economical/environmental reasons, e.g., to decrease the amount of softwood pulp in that layer and thus adding said pulp to the middle layer of the primary references would have been obvious to one of ordinary skill in the art to obtain the advantages discussed above. Also Peng shows that using CTMP in the middle layer the density of said layer would be less than 550 kg/m3 (for claim 3); see table 5. Peng also teaches grammage of the multi-layer board within the claimed range and middle layer in which the middle layer is at least 2.5 higher than the second outer layer (of claim 4); see page 14, lines 16-20 and teaches the use of broke in the layers (of claim 9); see paragraph bridging pages 8 and 9.
Regarding the process claims. claims 10-17, the process of making and altering the different variables of the, e.g., jet/wire ratio the Freeness of the pulp(s) on each ply/layer are common in the artii and thus considered obvious, absent a showing of unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Asymmetric Paperboards.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
1 Note that here the bottom ply correspond to the first outer layer and the top ply correspond to the second outer layer.
2 Asymmetric has been interpreted as one in which the plies have different basis weight or the top and bottom plies have different basis weights.
i Evidenced by any of United State Patent No. 6,855,228; 6,616,811; 6,540,873,7,988,825; 7,608,165, US Patent Application Publication No. 2005/0039874 or DE 4401761 A; EP 0312512, just to mention a few. All of them cited in the attached PTO-892.
ii Evidenced by any of United State Patent No. 6,855,228; 6,616,811; 6,540,873,7,988,825; 7,608,165, US Patent Application Publication No. 2005/0039874 or DE 4401761 A; EP 0312512, just to mention a few. All of them cited in the attached PTO-892.