Detailed Office Action
The communication dated 1/12/2024 has been fully considered.
Claims 1-16 are pending with claims 10-16 withdrawn from consideration
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 .
Requirement for Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to a method of making a paper pulp, classified in D21B1/021
II. Claims 10-16, drawn to a paper pulp, classified in D21H11/12.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product could be made at a higher temperature for a shorter amount of time or made with potassium hydroxide.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Attorney Whittemore on 7/24/2025 a provisional election was made without traverse to prosecute the invention of Group 1, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Interpretation
The Examiner interprets “high consistency refining” in light of the specification at 25-30% consistency [0032].
This corresponds to the dictionary definition from Handbook for Pulp and Paper Terminology
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For purpose of examination the Examiner interprets “low concentration” to be about 1 to about 15% weight on agricultural waste fibers.
For purpose of examination the Examiner interprets “low temperature” to be about 15 to about 90 degrees C.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The terms “low concentration” and “low temperature” in claim 1 are relative terms which renders the claim indefinite. The terms “low concentration” and “low temperature” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the specification the applicant refers to “low temperature as about 15 to about 90 degrees C” and the “low concentration as “about 1 to about 15% by weight”. However, if this is the definition the Examiner should use then claims 2 and 4 are redundant. That is, under the doctrine of claim differentiation the terms “low temperature” and “low concentration” must be broader than that of the dependent claims 2 and 4, else they wouldn’t further narrow the claim.
Claim 1 has multiple antecedent issues including line 11 “the heated or cooked fibers”, line 12 “the rinsed fibers” and line 14 “the fibers”. Additionally, in line 8 the heating/cooking of the fibers occurs on the mechanically pre-treated fibers not the non-homogenous agricultural waste fibers. The Examiner suggests the claim as per below to overcome antecedent issues.
A method for forming fiber pulp suitable for paper, the method comprising
selecting a non-homogeneous agricultural waste fiber;
optionally treating the non-homogeneous agricultural waste fiber with anti-microbial solution and/or UV light;
mechanically pre-treating, and optionally chemically pre-treating, the non-homogeneous agricultural waste fiber by dry refining and optionally pre-screening the non-homogeneous agricultural waste fiber to remove contaminants and any undesirable pulp feedstock fibers to form pretreated fibers;
heating or cooking the pretreated fibers
high consistency refining of the cooked fibers to develop desired strength properties to form refined fibers;
diluting and/or rinsing the refined
screening the rinsed fibers and optionally re-processing rejected fibers through chemical and refining processing to form screened fibers; and
drying the screened fibers to form the fiber pulp.
Claims 2-9 depend from claim 1 and are similarly rejected.
Claim 9 recites the limitation "the refining” in line 1. There is insufficient antecedent basis for this limitation in the claim. The applicant has antecedent basis for “the high consistency refining”.
In claim 9 the applicant uses the term “freeness consistency”. The term is just “freeness”. The term “consistency” has to do with the amount of pulp to the amount of fibers.
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.
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 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over CN102154925A WU et al., hereinafter WU, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK, as evidenced by Freeness conversion chart by Aikawa Group.
*The Examiner refers to the EPO machine translation of WU, attached herein.
As for claims 1, 2, and 4, WU discloses wheat straw [0004] which is a non-homogenous agricultural waste fiber (selecting a non-homogeneous agricultural waste fiber).
The antimicrobial solution/UV light is an optionally claimed step that WU need not do. Nevertheless, wheat straw will be subjected to some UV light out in the fields (optionally treating the non-homogeneous agricultural waste fiber with anti-microbial solution and/or UV light;).
WU discloses mechanically pre-treating by crushing and cutting the wheat straw [0008] (mechanically pre-treating,… by dry refining). The chemical pretreatment step is optionally claimed (optionally chemically pre-treating). Although optionally claimed WU also discloses screening the wheat straw [0008] (optionally pre-screening the non-homogeneous agricultural waste fiber to remove contaminants and any undesirable pulp feedstock fibers;).
WU discloses heating the wheat straw at a low temperature of 60 to 90 degrees C which falls within the instant claimed range with 3-10% sodium hydroxide which falls within the instant claimed range and with 3-10% hydrogen peroxide which falls within the instant claimed range [0009] (heating or cooking the non-homogeneous agricultural waste fiber with low concentrations of sodium hydroxide and/or peroxide at low temperatures to form cooked fibers;).
WU discloses dehydrating the straw to high consistency of 6 to 30% and then refining [0012] (high consistency refining of the cooked fibers to develop desired strength properties;) which overlaps with the applicant definition of high consistency making a prima facie case of obviousness.
WU discloses diluting the fibers down to a lower consistency [0013] (diluting and/or rinsing the heated or cooked fibers).
WU discloses that the fibers are ultimately dried into paper [0015] (drying the fibers to form the fiber pulp).
WU fails to disclose screening of the pulp (screening the rinsed fibers and optionally re-processing rejected fibers through chemical and refining processing;).
SMOOK in the pulp and paper arts discloses screening during the processing of pulp [pg. 107 col. 1]. At the time of the invention it would be obvious to add screening to the pulp processing of WU. The person of ordinary skill in the art would be motivated to do so by SMOOK to remove oversize, troublesome, and unwanted particles [pg. 107 col. 1]. The person of ordinary skill in the art would expect success as most pulp and paper operations use screening according to WU [pg. 107 col. 1].
For the limitation “drying the fibers to form the fiber pulp” the examiner interpreted the paper of WU to meet this limitation as paper is dried fiber pulp. It can ultimately be recycled to make future paper and thus is also a fiber pulp source. In the alternative, should the applicant be unconvinced, SMOOK discloses there are two types of papermaking processes integrated and non-integrated [pg. 126 col. 1]. In integrated processing the fiber source is pulped and then directly made on-site into paper. In non-integrated processes the fiber source is pulped and then dried as pulp sheets. These pulp sheets can be shipped off site to multiple papermakers to make paper. At the time of the invention it would be obvious to the person of ordinary skill in the art to make dried pulp sheets with the pulp of WU instead of paper as suggested by SMOOK. The person of ordinary skill in the art would be motivated to do so sell the product to multiple venders who then can use multiple different pulps to achieve complex blends of fibers. It is therefore an economic consideration of whether a mill wishes to operate in an integrated and/or non-integrated manner.
As for claim 3, WU discloses the specific example of 60 degrees C and 3% sodium hydroxide [0022] which is 20 degrees C per percent (60/3- 20 and falls within the claimed range.
As for claim 5, WU does not disclose the addition of acid during the reslurrying [0013].
As for claim 7, the wheat straw of WU has not been digested [0008].
As for claim 8, WU discloses the method uses a pre-impregnator not a digester [0009]. WU also calls it a pre-soak tank [0022].
As for claim 9, WU discloses after high consistency refining the ⸰SR is 20 to 30 [0012] which is equivalent to a CSF freeness of 425 to 600 ml which falls within the claimed range [see SR to CSF conversion chart].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WU and SMOOK as applied to claim 1 above, and further in view of U.S. 2017/0306556 NAFICI, hereinafter NAFICI
As for claim 6, WU discloses wheat straw and not rye straw for pulping. NAFICI discloses that both wheat straw and rye straw are straws that can be used for making pulp by refining after a low temperature hydroxide treatment [0001, abstract]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute one known straw for another known straw intended for making pulp and paper by low temperature hydroxide treatment followed by refining [see e.g. MPEP 2144.06 (II)].
Conclusion
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