DETAILED ACTION
The communication dated 12/30/2025 has been entered. Claims 7-12 are withdrawn. Claims 1-6 are elected and pending. Claim 1 is amended.
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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-6, in the reply filed on 9/12/2025 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant argues that prior art does not teach the amended range of the claim 1 limitation of “a content of the third mixed inorganic particles is between 6 wt% and 8 wt%”.
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
QIN does not teach the amount of pigment (inorganic particle) used. NIU teaches a similar multi-layered sheet [Fig 3] with inorganic particle coating [0031]. NIU teaches that calcium carbonate, titanium dioxide and silica are used as pigments in the papermaking process [0031]. NIU teaches that the pigments create a coating that makes the sheet difficult to penetrate by liquid [0007]. NIU further teaches that the pigment is present in the solution at an amount of about 5 wt% or less [0031]. This range abuts the instant claim range of “a content of the third mixed inorganic particles is between 6 wt% and 8 wt%”. See MPEP 2144.05 It would be obvious to one skilled in the arts at the time of invention to substitute the calcium carbonate, titanium dioxide and silica of NIU into the substrate furnish of QIN to produce an effective sheet. One would be motivated to combine the art based on the added coating benefit taught by NIU.
In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of 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.
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 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over QIN (US 20130129993 A1) in view of NIU (US 20180312717 A1).
For claim 1, QIN teaches the formation of a paper sheet [0087] with coatings on both sides of the sheet [abstract]. The paper of This teaches the limitation of “A coated pearl paper, comprising: a pearl paper including a major layer and two minor layers arranged at two sides of the major layer”. QIN also teaches the web substrate layer is made of polyolefin fibers [0084] and polypropylene is an example of polyolefin [0034]. QIN also teaches the substrate has other chemical additives like baking soda (inorganic particles) of the invention [0088]. This teaches the limitation of “wherein the major layer includes a first resin and a plurality of first mixed inorganic particles, the first resin includes polypropylene”. QIN teaches the additives of the invention include dye (pigments) [0088]. QIN does not specify the pigment used. NIU teaches a similar multi-layered sheet [Fig 3] with inorganic particle coating [0031]. NIU teaches that calcium carbonate, titanium dioxide and silica are used as pigments in the papermaking process [0031]. NIU teaches that the pigments create a coating that makes the sheet difficult to penetrate by liquid [0007]. This teaches the limitation of “the first mixed inorganic particles include calcium carbonate, silicon dioxide, and titanium dioxide”. It would be obvious to one skilled in the arts at the time of invention to substitute the calcium carbonate, titanium dioxide and silica of NIU into the substrate furnish of QIN to produce an effective sheet. One would be motivated to combine the art based on the added coating benefit taught by NIU.
Regarding the minor layers, QIN also teaches a multi-ply invention with multiples of the base ply (polyethylene) and additives [0097]. NIU teaches that calcium carbonate, titanium dioxide and silica are used as pigments in the papermaking process [0031]. This teaches the limitation of “each of the minor layers includes a second resin and a plurality of second mixed inorganic particles, the second resin includes polypropylene, and the second mixed inorganic particles include calcium carbonate, silicon dioxide, and titanium dioxide”.
Regarding the coating layer, QIN further teaches that one of the adjacent (outer) plies of the multi-ply invention is coated [0097] with a liquid dispersion [0010 and 0080]. QIN teaches the coating is water based [0068], has a mixture of acrylate copolymer with polyurethane and uses pigment [0073]. NIU teaches that calcium carbonate, titanium dioxide and silica are used as pigments in the papermaking process [0031]. This teaches the limitation of “and a coating layer formed by coating a coating liquid onto one of the minor layers of the pearl paper, wherein the coating liquid includes a third resin, a plurality of third mixed inorganic particles, and water; wherein the third resin is an acrylate graft-modified polyurethane resin, and the third mixed inorganic particles include calcium carbonate, silicon dioxide, and titanium dioxide”. QIN teaches the polymer is present in an aqueous dispersion from 15 to 75% by weight of the dispersion [0030]. This range overlaps the instant claim range of “wherein, based on a total weight of the coating liquid being 100 wt%, a content of the third resin is between 18.5 wt% and 21.5 wt%”. QIN teaches the water content is from 35-75% [0068]. This range overlaps that of the instant claim “and a content of the water is between 71.8 wt% and 76.8 wt%.”.
QIN does not teach the amount of pigment (inorganic particle) used. NIU teaches a similar multi-layered sheet [Fig 3] with inorganic particle coating [0031]. NIU teaches that calcium carbonate, titanium dioxide and silica are used as pigments in the papermaking process [0031]. NIU teaches that the pigments create a coating that makes the sheet difficult to penetrate by liquid [0007]. NIU further teaches that the pigment is present in the solution at an amount of about 5 wt% or less [0031]. This range abuts the instant claim range of “a content of the third mixed inorganic particles is between 6 wt% and 8 wt%”. See MPEP 2144.05 It would be obvious to one skilled in the arts at the time of invention to substitute the calcium carbonate, titanium dioxide and silica of NIU into the substrate furnish of QIN to produce an effective sheet. One would be motivated to combine the art based on the added coating benefit taught by NIU.
In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Regarding the pearl limitation the examiner understands the “pearl” quality of a paper is defined by the coating composition of the paper similar to the color or pigment of a paper. The Examiner notes that QIN in view of NIU teaches the same composition coating as the instant claim including pigment which would provide the same pearlescent quality unless applied in a different combination/process.
For claim 4, QIN and NIU teach the coated pearl paper according to claim 1, as above. QIN teaches the coating liquid uses a rheology modifier (an auxiliary agent) as an additive [0073]. This teaches the limitation of “wherein the coating liquid further includes an additive, and the additive is at least one of an auxiliary agent, a catalyst, or a co-solvent”. QIN also teaches the coating composition can have one or more fillers and/or one or more additives [0028]. The examiner understands the filler and additive to be interchangeable. QIN teaches the filler is present at 0.1 to 200 parts by weight of the 100 parts by weight base polymer (equivalent to 0.1% to 200% ) [0071]. This range encompasses that of the instant claim of “wherein, based on the total weight of the coating liquid being 100 wt%, a content of the additive is between 0.5 wt% and 1 wt%”. See 2144.05(II)(A).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over QIN (US 20130129993 A1) and NIU (US 20180312717 A1) in view of YAMAGUCHI (CN 102695766 A).
For claim 2, QIN and NIU teach the coated pearl paper according to claim 1, as above. QIN does not specify the composition of the methacrylate compound. YAMAGUCHI teaches a coated sheet [0002] where the coating uses a graft modified methacrylate [0137 and 0138]. YAMAGUCHI teaches the combination of components used in the modified methacrylate exhibit improved adhesion properties of the coated components [0098]. YAMAGUCHI teaches that the methacrylate has alkyl groups at 100 parts by weight (equivalent to 100%) [0020]. The alkyl range of YAMAGUCHI is outside of the instant range but close to the values of the instant range. YAMAGUCHI teaches multiple embodiments of the invention with different composition amounts. This would lead one skilled in the arts to optimize the composition. It would be obvious to one skilled in the art to optimize the range without undue experimentation. This teaches the instant claim of “wherein the third resin is graft-modified by using monomers that include the following components, and a sum of the following components is 100 wt%: (a) 90 wt% to 95 wt% of a (meth)acrylate having an alkyl group;”. See 2144.05(II)(A).
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%.)
YAMAGUCHI teaches the methacrylate has a hydroxyl group ranging from 1 to 15 parts by weight (equivalent to 1-15%) [0041]. The hydroxyl group range of YAMAGUCHI encompasses the instant range. It would be obvious to one skilled in the art to optimize the range without undue experimentation. This teaches the limitation of the instant claim of “(b) 4 wt% to 9 wt% of a (meth)acrylate having a hydroxyl group;”. See 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
YAMAGUCHI further teaches that the methacrylate has a vinyl compound with carboxyl group at 0 to 1 parts by weight [0021] (equivalent to 0 to 1%). The vinyl group range of YAMAGUCHI abuts the instant range. See 2144.05(I). This teaches the limitation of “(c) 1 wt% to 5 wt% of a vinyl monomer having a carboxyl group”.
In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
It would be obvious to one skilled in the arts at the time of invention to substitute the methacrylate composition of YAMAGUCHI into the coating composition of QIN to produce an effective sheet. One would be motivated to combine the art based on the added benefit of better coating adhesion taught by YAMAGUCHI.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over QIN (US 20130129993 A1) and NIU (US 20180312717 A1) in view of FOSTER-BEY, JR (US 20180282549 A1).
For claim 3, QIN and NIU teach the coated pearl paper according to claim 1, as above. NIU teaches that the pigment of the coating composition is present at less than about 5% [0031]. NIU does not specify the specific composition of the components. FOSTER-BEY, JR teaches a similar paint coating composition as NIU [abstract] that is applied to paper substrates [0048]. FOSTER-BEY, JR also teaches the paint has a composition of 1.9% weight calcium carbonate which is within the instant claim range of “wherein, in the third mixed inorganic particles, based on the total weight of the coating liquid being 100 wt%, a content of the calcium carbonate is between 0.5 wt% and 7 wt%”. FOSTER-BEY, JR also teaches the paint has a composition of 0.69% weight silica (silicon dioxide) which is within the instant claim range of “a content of the silicon dioxide is between 0.5 wt% and 6 wt%”. FOSTER-BEY, JR also teaches the paint has a composition of 0.95% weight titania (titanium dioxide) which is within the instant claim range of “and a content of the titanium dioxide is between 0.5 wt% and 2 wt%”. FOSTER-BEY, JR teaches the composition has no visible efflorescence and no water rub failure [0073]. It would be obvious to one skilled in the arts at the time of invention to substitute the pigment composition of FOSTER-BEY, JR into the coating composition of NIU to produce an effective sheet. One would be motivated to combine the art based on the added benefit of better resistance and reduced efflorescence taught by FOSTER-BEY, JR.
For claim 5, QIN and NIU teach the coated pearl paper according to claim 1, as above. QIN teaches the substrate has 55 to 99 percent by dry weight polyolefin fibers (polyester) [0084]. This value encompasses the instant claim range of “wherein, based on a total weight of the major layer being 100 wt%, a content of the first resin is between 85 wt% and 95 wt%”. QIN also teaches a polymer is present in an aqueous dispersion from 15 to 85% by weight of the dispersion [0030]. This range abuts the instant claim range of “wherein, based on a total weight of each of the minor layers being 100 wt%, a content of the second resin is between 85 wt% and 95 wt%”. QIN teaches the addition of pigment/dye in the dispersion [0073] and substrate [0088]. QIN does not specify the pigment used or the amount. NIU teaches the pigments are present in solution at about 5% or less [0031]. This range abuts the instant claim limitations of “and a content of the first mixed inorganic particles is between 5wt% and 15 wt%; and a content of the second mixed inorganic particles is between 5 wt% and 15 wt%”.
NIU does not specify the amount of each pigment. FOSTER-BEY, JR teaches a similar paint coating composition as NIU [abstract] that is applied to paper substrates [0048]. FOSTER-BEY, JR also teaches the paint has a composition of 1.9% weight calcium carbonate, 0.69% weight silica (silicon dioxide), and 0.95% weight titania (titanium dioxide). FOSTER-BEY, JR teaches the composition has no visible efflorescence and no water rub failure [0073]. This composition matches the instant claim limitation of “wherein a content of the calcium carbonate or a content of the silicon dioxide is greater than a content of the titanium dioxide in the major layer, and the content of the titanium dioxide is greater than the content of the silicon dioxide in each of the minor layers”. It would be obvious to one skilled in the arts at the time of invention to substitute the pigment composition of FOSTER-BEY, JR into the coating composition of NIU to produce an effective sheet. One would be motivated to combine the art based on the added benefit of better resistance and reduced efflorescence taught by FOSTER-BEY, JR.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over QIN (US 20130129993 A1) and NIU (US 20180312717 A1) in view of HALE (US 2006270806 A1).
For claim 6, QIN and NIU teach the coated pearl paper according to claim 1, as above. Neither QIN or NIU teach the transmittance or haze of the resultant sheets. HALE teaches a polymer blend that is formed into a sheet [0003] with pigment additive similar to QIN [0489]. HALE also teaches that the sheet has a titanium dioxide coating [0521]. HALE teaches an embodiment of the resultant sheet has a haze of at least less than 99% [0252] which encompasses the instant claim of “a haze of between 98.1% and 98.8%”. See 2144.05(II)(A).
Regarding the light transmittance, the same embodiment has a light transmittance of at least 40% [0252]. This range is near the instant claim range of “wherein the coated pearl paper has a light transmittance of between 20.5% and 20.8%”. HALE teaches multiple embodiments of the invention with different composition amounts and components. This would lead one skilled in the arts to optimize the composition. It would be obvious to one skilled in the art to optimize the range without undue experimentation. See 2144.05(II)(A).
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 STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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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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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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