Detailed Office Action
The communication dated 12/1/2025 has been entered and fully considered.
Claims 1-20 are pending with claims 1-13 withdrawn from consideration.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 .
Election/Restrictions
Applicant's election with traverse of Group II in the reply filed on 12/1/2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden. This is not found persuasive because searching for the method requires the starch and fibrillated fibers to be mixed together first this is an additional search that is not required for the product claims. Additionally, the product claim could read on coated paper sheets (while method claims have the fibrils and starch internal).
The Examiner notes that claim 13 a method claim was mistakenly included in the product claims of Group II in the 11/14/2025 restriction. Claim 13 is part of Group I (method claims) and is herein restricted.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
In the claims when reciting ranges the applicant uses the term “approximately” but only before the first part of the range. The Examiner interprets approximately to refer to both the beginning and the end of the range unless the applicant clarifies otherwise in the next response (that is “approximately 2-20” means “approximately 2 – approximately 20”).
The Examiner gives the claim term “second comparative paper product” of claim 14 the definition given in the specification of paragraph [0022].
As used herein, the term “Second Comparative Pulp Composition” is a pulp composition including a starch, fibrillated fibers (e.g., SEPF), and wood pulp fibers. A Second Comparative Pulp Composition is made by a process of first mixing together fibrillated fibers (e.g., SEPF) and a starch to make a fibrillated fibers/starch mixture, and thereafter mixing the fibrillated fibers/starch mixture into wood pulp fibers to produce the Second Comparative Pulp Composition. This ordering of processing steps is similar to that used to produce the pulp compositions described herein. A Second Comparative Pulp Composition, however, has a higher amount (e.g., weight percent) of starch than do the pulp compositions described herein.
Claim 14 claims a paper product and gives percentages of weights of components. The Examiner interprets this as dry weights. That is, the normal ~10% moisture present in a sheet is not accounted for weights.
Claim 14 does not state that the starch, fibrils, and wood pulp are mixed together through the sheet. Therefore the claim reads on wood pulp paper sheets coated with starch and fibrils.
Claim Objections
Claims 16, 17, and 20 are objected to because of the following informalities: The applicant should use the full name instead of SEPF. Appropriate correction is required.
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.
Claim 20 is 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.
As for claim 20, the value of 0.8%, 10%, and 90% add up to over 100% and therefore is clearly ambiguous as the total weight percentages cannot add up over 100% [MPEP 2173.05(c)].
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 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2012/0241114 AXRUP et al., hereinafter AXRUP.
As for claims 14 and 15, AXRUP discloses a paper product comprising 2-15% starch which overlaps the instant claimed range and 1-15% MFC (microfibrillated cellulose) which overlaps the instant claimed range [claims 1-2]. The remainder is pulp (therefore a range of 70-97%) which overlaps the instant claimed ranges.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
The starch and MFC are mixed together prior to being added to the pulp [0026 and 00]. In this case the only difference between the product of AXRUP and the “Second Comparative Pulp Composition” by the applicant’s definition is the amount of starch and that it needs to be higher. The Examiner therefore can interpret the amount as 0.000001% higher starch in the “Second Comparative Pulp Composition” such that the breaking length of the AXRUP paper and the “Second Comparative Pulp Composition” are substantially the same thereby meeting the instant claimed language.
The Examiner further notes that the “wherein” in the instant case does not limit the structure of the claim [see MPEP 2111.04 (I)].
As for claim 16, the Examiner interprets the MFC of AXRUP as meeting SEPF. AXRUP discloses a paper product comprising 2-15% starch which overlaps the instant claimed range and 1-15% MFC (microfibrillated cellulose) which overlaps the instant claimed range [claims 1-2]. The remainder is pulp (therefore a range of 70-97%) which overlaps the instant claimed ranges.
As for claim 17, the Examiner interprets the MFC of AXRUP as meeting SEPF. AXRUP discloses a paper product comprising 2-15% starch which abuts/overlaps the instant claimed range and 1-15% MFC (microfibrillated cellulose) which overlaps the instant claimed range [claims 1-2]. The remainder is pulp (therefore a range of 70-97%) which overlaps the instant claimed ranges.
Claims 14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over The World of Market Pulp by NANKO et al., hereinafter NANKO, in view of U.S. 2012/0241114 AXRUP et al., hereinafter AXRUP.
As for claim 14, 18, and 19, NANKO discloses a NBSK pulp and paper made therefore with a breaking length of 8.27 km and a TEA of 145 J/m2 (both of which fall within the claimed range) [pg. 142 and pg. 143 table 2000 PFI]. NANKO does not disclose the use of MFC or starch.
AXRUP discloses a paper product comprising 2-15% starch which overlaps the instant claimed range and 1-15% MFC (microfibrillated cellulose) which overlaps the instant claimed range [claims 1-2]. The remainder is pulp (therefore a range of 70-97%) which overlaps the instant claimed ranges.
At the time of the invention it would be obvious to the person of ordinary skill in the art to add the starch and MFC of AXRUP to the pulp and paper made therefore of NANKO. The person of ordinary skill in the art would be motivated to do so to increase tensile strength [0010]. The person of ordinary skill in the art would expect success as AXRUP discloses that chemical softwood fibers that have been bleached can use the starch/MFC [0014].
As for claim 20, NANKO further discloses a tear index of 12.6 mNm2/g which falls within the claimed range . AXRUP discloses a paper product comprising 2-15% starch which falls outside the instant claimed range and 1-15% MFC (microfibrillated cellulose) which encompasses the instant claimed range [claims 1-2]. The remainder is pulp (therefore a range of 70-97% which encompasses the instant claimed ranges.
However, the Examiner notes that differences in concentration will not typically support non-obviousness absent evidence of unexpected results.
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%.);
Furthermore, starch concentration is a result effective variable. At the time of the invention it would be obvious to the person of ordinary skill in the art to optimize the amount of starch added through routine experimentation. A higher amount of starch increases tensile strength.
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.
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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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/ Primary Examiner, Art Unit 1748