Detailed Office Action
The communication dated 12/1/2025 has been entered and fully considered.
Claim 1 has been amended. Claims 3 and 20 have been canceled. Claims 1, 2, and 4-19 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
In light of amendment the Examiner withdraws the rejection towards URBAN
Applicant argues that the YIN reference is a multi-step process with a first step being an acidic bath, the second step being an alkaline bath and the third step being a surface coating.
In response the claim uses the comprising language in the preamble. Therefore additional unclaimed steps may be present. In as much as the applicant has support for the term “single step” it is only the “acidic bath” that is a single step. That is an alkaline bath step is not excluded by the language “single step acidic bath”. If additional steps were excluded then the neutral deionized water step could not be performed as per claim 2.
Allowable Subject Matter
Claim 2 is 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.
Claims 1, 4, 5, 8-13, and 16-19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN111254746A, YIN et al., hereinafter YIN, as evidenced by Ferric chloride data sheets
As for claim 1, YIN immerses a paper sheet in a metal chloride solution and then dries the paper to obtain a hydrophobic sheet [0011].
YIN discloses 0.1 mol/L ferric chloride treatment [0023] which has a pH of about 2 which falls within the claimed range while 1 mol/L ferric chloride has a pH of about 1.
As for claims 4-5, YIN discloses that the sheet is hydrophobic and has a water contact angle of over 150 degrees [Figure 2].
As for claim 8, YIN discloses the sheet can have a water contact angle of 160 degrees [Figure 2] which is even more hydrophobic the instant invention [ see e.g. instant specification par [00101] 140 degrees results in less than 10 g/m2 absorption]. It would therefore be expected to have an even lower water absorption than 10 g/m2.
As for claims 9 and 10, YIN discloses paper made from wood which is a lignocellulosic fiber containing biomass [0004].
As for claim 11, the use of the paper for writing is an intended use. The filter paper could be written on.
As for claims 12 and 13, YIN discloses ferric chloride, Iron (III)Cl3.
As for claim 16, YIN discloses 0.1 – 1 mol/L (0.1M- 1M) which falls within the claimed range [0011].
As for claims 17 and 18, YIN discloses immersing the sheet for 1 to 10 minutes which falls within the claimed range [0011].
As for claim 19, YIN discloses drying the sheet at 60 degrees C for 1 to 2 hrs. [0025] which falls within the claimed range.
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 6, 7, 14 and 15 are rejected under 35 U.S.C. 103 as obvious over CN111254746A, YIN et al., hereinafter YIN.
As for claims 6, 7, 14 and 15, YIN discloses a higher concentration than claimed for the ferric chloride. A concentration of 0.1 Molar is equivalent to 100 mM which is outside the claimed range (whether it is nM or mM). YIN also disclose a hydrophobicity of 160 degrees C contact angle which is greater than the claimed range of 100-150 degrees.
At the time of the invention it would be obvious to optimize concentration, a clear result effective variable, to obtain the desired amount of hydrophobicity of the sheet through routine experimentation. YIN shows that concentration is a result effective variable [Figure 3].
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%.)
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.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748