Detailed Office Action
The communication dated 4/15/2026 has been entered and fully considered,
Claims 5, 10, 14, 16, 18 have been amended. Claims 21-24 are new. Claims 6, 17, 19, and 20 have been canceled. Claims 1-5, 7-16, 18, and 21-24 are pending with claims 1-5 and 7-12 withdrawn from consideration.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 .
Response to Arguments
In light of cancelation the 112(b) rejection to claim 20 has been withdrawn.
In light of amendment AXRUP has been withdrawn. AXRUP fails to disclose 0.3 mm or greater average fiber length.
The Examiner again notes that the starch, fibrillated fibers (SEPF fibers), and wood pulp do not need to be mixed together, as claimed. The claims read on a paper with one or both of the SEPF and starch coated onto the pulp base. The Examiner has used the PANDA reference below. PANDE applies a mixture of starch and SEPF to the fiber surface.
The PANDE reference also states that SEPF can optionally be added into the pulp for making the substrate [0026 “some embodiments, at least some of the pulp fibers of the first furnish (e.g., greater than or equal to any one of, or between any two of, 1%, 2%, 3%, 4%, 5%, 6%, 7%, 8%, 9%, 10%, or more, by weight, of the pulp fibers) can be surface enhanced pulp fibers (SEPF), described in further detail below.”] and states that starch can be used internally but does not suggest how much starch [0037]. Although the Examiner has not made this rejection (as it is not necessary given the claims allow the starch to be part of the coating) it would be obvious to optimize the amount of starch added to the substrate or look to another reference that uses starch in the paper substrate. The Examiner mentions this so the applicant can prepare for future arguments should they amend to claim that starch, fibrillated fibers (SEPF), and wood pulp fibers have been mixed together prior forming the paper product to overcome the instant rejection which uses starch/SEPF as a coating.
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.
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 13-16 and 21-24 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. 2020/0308769 PANDE et al., hereinafter PANDE.
As for claim 13-16 and 21-22, the Examiner again notes that the starch, fibrillated fibers (SEPF fibers), and wood pulp do not need to be mixed together. The claims read on wood pulp with a coating of starch and SEPF. PANDE discloses a substrate made of wood pulp fibers [0026]. The basis weight can be 150 gsm [0026]. PANDE discloses a coating with starch and SEPF mixed [0033]. The SEPF and the can be equal to 90% of the starch [0033]. The SEPF can be a 3.5 gsm coating weight [0034] which means the starch is at 3.33 gsm. The total weight is therefore 150 grams pulp + 3.5 grams SEPF +3.89 grams starch = 157.39 grams
The pulp is present at 96% which falls within the claimed range.
The starch is present at 2.5% which falls within the claimed range.
The SEPF is present at 2.2% which falls within the claimed range.
Each of these are specific points disclosed in the PANDE reference and therefore it is within the four corners of the reference sufficient for anticipation. In the alternative the various ranges will at least overlap the instant claimed ranges making a prima facie case of obviousness.
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 SEPF is at least length weighted average of 0.40 mm and an average hydrodynamic surface area of 12 m2/gram [0028].
As PANDE meets the claimed structure it is the Examiners position that it will have substantially the same properties or be an obvious variant thereof.
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 claims 23 and 24, the starch is mixed with the fibrillated fibers before coating [0033, 0045].
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over PANDE in view of The World of Market Pulp by NANKO et al., hereinafter NANKO
As for claim 18, PANDE discloses the features as per above. PANDE discloses a substrate made of pulp. PANDE does not disclose the specific pulp used for the substrate of the properties thereof. However, PANDE does suggest hardwood or softwood and should have strength [0026].
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 further discloses a tear index of 12.6 mNm²/g which falls within the claimed range. At the time of the invention it would be obvious to substitute one known pulp of NANKO for the substrate for another known pulp for the substrate of PANDE absent evidence of unexpected results. In the instant case the person of ordinary skill in the art would be further motivated to do so as NANKO suggests fast refining response and high fold strength.
The person of ordinary skill in the art would expect success as PANDE states that softwood can be used [0026].
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.
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
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