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 § 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15, 17 and 19 are rejected under 35 USC §103 over Peng et al., (hereinafter Peng) . This rejection is set forth in the prior Office action mailed on November 24, 2025. Note that the same rejection applies to the newly added claim, claim 19, since using a spray for the surface sizing of a web/paper/paperboard is common in the art as discussed in the Response to arguments, below.
Response to Arguments
Applicant's arguments filed on February 24, 2026 have been fully considered but they are not persuasive.
Applicants argue that the examiner has not provided evidence that sizing the outer layer of a paperboard/paper is common in the art and that if those additives were added they would have to be added to the middle layer and not to the outer layer. The arguments have been considered and deemed not convincing for the following reason(s):
As indicated in the previous office action, surface sizing of paper and boards in general is common in the art as evidenced by “pigment Coating and Surface Sizing of paper,” (which teaches the use of starch, CMC, PVOH as surface sizing agent and the benefits of it); “OPTIMIZATION OF A NEW SURFACE SIZING PROCESS IN THE PRODUCTION OF FOLDING BOXBOARD” by Latva-Kokko (abstract teaches the surface sizing with added at a range falling within the claimed range), both cited on the IDS filed on April 17, 2026; US Patent Application Publication No. 2020/0407918 A1 (¶-[0003] which teaches the use of MFC as a surface sizing agent); US Patent Application Publication No. 2020/0291580 A1, (¶-[0014], [0053] and claim 6 shows the surface sizing of paper substrate with starch, PVOH and CMC); United State Patent No. 11,453,978 B2, (Abstract, column 1, lines 14-19 and column 2, lines 7-14, which teach the surface sizing of papers/boards with the MFC). As indicated in the previous office action a surface sizing agent is added to the outer surface(s) of the substrate and the main benefits achieved with surface sizing are:
- improved surface strength (important especially for sheet offset):
- decreased linting and dusting –
- decreased porosity
- control of adsorption properties
- decreased penetration of pigment coating into base paper and improved coating quality
- less swelling of base paper in coating
- improved dimensional stability
- decreased blistering in heat-set offset
- improved stiffness.
As indicated above, not only increase strength but other properties of the board/paper and one of ordinary skill in the art would not be added to the middle layer but to the outer surface(s) of the board. Note that none of the listed properties would be attained if added to the middle layer, e.g., dusting and linting, control of adsorption properties, liquid penetration, etc.
As to the use of a spraying for the surface sizing of those compound, using spraying coating in the surface sizing of paper/boards is conventional in the art as evidenced by ¶-[0092] and [0104] of US Patent Application Publication No. 2020/0385499 A1; ¶-[0061] of US Patent Application Publication No. 2020/0232165 A1; claims 1 and 11 and column 2, lines 24-33, of United State Patent No. 10,745,862 B2 and ¶-[0010]-[0011] of US Patent Application Publication No. 2015/0010712 A1, just to mention a few. Therefore, using a spray coating for the surface sizing of the reference, peng, would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if a such a known process were used for the sizing of the outer surface(s) of Peng’s board.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
JAF
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