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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/19/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The newly added limitations will be addressed in the rejections below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has added the limitations of the composition being an oil-in-water composition and that the average particle size of the emulsion being less than 2.0 microns, and these limitations are supported by the instant specification.
The limitations of 90% of the particles being from about 0.5-3.0 microns and the emulsion having a viscosity of less than 300 cps over 28 days at 32 degrees C are not supported by the specification.
The instant specification states in [0068] and [0075] that the average sizes presented in the Figures are in mm. Paragraph [0075] explicitly refers to the examples as 800-1000 microns and the referenced tables provide the numbers at 0.8-1.0 in the mentioned examples, proving that the figures are present in mm and not microns.
None of the cited places in the Remarks section address this claimed limitation. Outside of paragraph [0057] and [0007] there is nothing listed for a particle size of less than 800 microns. There is zero mentions or support for the lower end of the value at 0.5 microns, with the closest being a teaching of less than 1 micron in the background section [0007] and a teaching of less than 2 microns in the actual specification [0057].
Additionally, the new limitations of a viscosity of less than 300 cps over 28 days at 32 C is also not supported. Most of the cited figures do not provide values for the viscosity at 28 days. There are three examples in figures 19 that shows a viscosity of 10.1 at 28 days at 32 C, Table 22 that gives values at either 27.5 or 7.4, and Table 29 that has one as unstable and the other at 14.64/13.67. None of these would provide support for the 300 cps being claimed. There are no discussions of the viscosity outside of the tables that provide values (that are assumed to be in the units of cps).
There is a lack of support for the claimed range.
Claims 2-3 and 5-10 are rejected based on their dependency on claim 1.
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.
Claim(s) 1-3 and 5-21 are rejected under 35 U.S.C. 103 as being unpatentable over Dilts et al, USP 6,576,049 in view of Svarz et al, USP 5,866,041.
Regarding claims 1-3 and 11-15, Dilts teaches an oil-in-water (preferably an oil-in-water emulsion, column 17 lines 6-7) composition for treating a paper product comprising (see abstract):
a} a first component chosen from a polydiallyldimethylammonium chloride (polyDADMAC), a polyacrylamide (PAM), a polyamine, a polyethyleneimine (PED, polyvinyl alcohol, or combinations thereof (polyDADMAC column 15 line 57 is taught as the cationic polymer utilized as an emulsion stabilizer) wherein the first component in the composition is present in an amount of from about 0.1 wt.% to about 30 wt.%, based on the total weight of the composition (10-50% with an end point in the claimed range column 16);
b} a second component chosen from an alkyl ketene dimer (AKD, see abstract and claim 1 and claim 7), alkenyl succinic anhydride (ASA see claim 1 and claim 7), a paraffin wax, or combinations thereof, wherein the second component in the composition is present in an amount of from about 1 wt.% to about 50 wt.%, based on the total weight of the composition( preferably 4-17% of sizing agent - AKD see column 28 line 13)., and
c) a dispersant (sodium lignosulfate is utilized in the AKD emulsion in the blending process - see column 17 line 34 which incorporates by reference the mixtures taught in USP 4,859,244) wherein the dispersant in the composition is present in amount of from about 0.1 wt.% to about 1 wt.%, based on the total weight of the composition (.15% see column 17); and
d) water (column 17 line 36).
Dilts does not teach the exact same physical parameters of the emulsion have an average particle size of less than 2.0 microns (claim 14 teaches the preferred particle size is less than 3.0 microns), does not mention at 90% distribution of the particle size, but does teach that a high shear homogenization step occurs in order to produce a “desirable median particle size”, column 16 lines 46-48), and is completely silent on the viscosity of the emulsion.
While there is not a direct showing of the average particle size being less than 2.0 and 90% of the particle sizes being between 0.5-3.0 microns, there is a teaching of the average particle size is most preferably less than 3 microns. The same is said for the high shearing processes using in the homogenizer. At least 23m/s for the linear shear force is not mentioned, but the desire to utilize a high shear force for improved sizing is explicitly taught. This paired with a showing that the ability of the average artisan include the ability to homogenize the emulsion to a “desirable median particle size” (column 16 lines 45-48 of Dilts and that higher shear is preferred), would lead one of ordinary skill in the art at the time of the bination to optimize a result effective variable to arrive at the optimal average size and distribution of the particle sizes with a starting teaching of it should be preferably less than 3 microns.
While one of ordinary skill in the art at the time of the invention would have found the claimed size ranges obvious, Dilts is still silent to any viscosity, much less one over 28 days at 32 degrees C.
In the same field of endeavor of adding an oil-in-water to a papermaking process (column 1 line 35), Svarz teaches a multicomponent oil-in-water emulsifier (see abstract and claim 1) that is homogenized in a high shear device (column 5 lines 61-65) so that it is prepared in a manner to improve the shelf life of the product before being used (column 5 line 50 – column 6 line 3). The testing for this longevity test is to hold the emulsification at 25 degrees C (admittingly less than the 32 degrees as claimed) for 1 day, 2 days, 3 days, 2 weeks, and one year. Table 1 provides values f these and the majority of the examples meet the claimed requirements of less than 300 cps after both 2 weeks and 1 year.
While the testing parameters are slightly different (2 week and 1 year vs 28 days and 25 C vs 32 C), the Patent Office must go by how the average artisan would interpret this information as there is no testing facility at the Patent Office. The average artisan would have seen that the hi shear mixing as performed by both Svarz and Dilts with similar multi component oil in water emulsifiers for a papermaking process would preferably have a low viscosity over an extended period of time for the benefit of improving the shelf life of the product.
It would have been obvious to one of ordinary skill in the art at the time of the invention to try to decrease the viscosity of the emulsion over longer periods of time for the benefit of improving the shelf life and usability of the product being produced for the ability to store the emulsion and not have to immediately use it.
Regarding claims 5 and 16, Dilts remains as applied above and further teaches that the first component in the composition is present in an amount of from about 0.1 wt.% to about 20 wt.%, based on the total weight of the composition (10-50% column 16).
Regarding claims 6 and 17, Dilts remains as applied above and further teaches that the second component in the composition is present in an amount of from about 1 wt.% to about 50 wt.%, based on the total weight of the composition( preferably 4-17% of sizing agent - AKD see column 28 line 13).
Regarding claims 7 and 18, Dilts remains as applied above and further teaches that the dispersant in the composition is present in amount of from about 0.1 wt.% to about 1 wt.%, based on the total weight of the composition (.15% see column 17).
Regarding claim 8, Dilts remains as applied above and further teaches further comprising a saturated or unsaturated fatty acid (see column 14).
Regarding claims 9 and 19, Dilts remains as applied above and further teaches that the fatty acid in the composition is present an amount of from about 0.1 to about 10 wt.%, based on the total weight of the composition (column 15 line 35).
Regarding claims 10 and 20, Dilts remains as applied above and further teaches that wherein a paper product treated with the composition has higher water resistance compared with an untreated paper product (improved water resistance column 17 lines 61-67). Dilts further teaches that the emulsion is added in the paper wet end (column 18 line 51).
Regarding claim 21, Dilts further teaches a fatty acid substances can be added as additional sizing agents to the emulsion (column 10 lines 46-55) in the amount of 0.1-10 % (column 11 lines 19-20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748