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 .
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 10 and 13-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Geissler et al. (WO 2018/193094 A1).
Regarding claims 10 and 13-19: Geissler et al. teach a paper product [0020, 0021] that is treated with a composition comprising polyvinyl stearate having a degree of modification of 98 mol%, and the claimed ratio of (a2) to (a1) [0108], toluene and a coagulant (tristearin) [Examples]. The composition of Geissler et al. is capable of functioning in the claimed capacity. Geissler et al. teach food packaging as a preferred embodiment [0020, 0021, 0065].
Response to Arguments
Applicant's arguments filed 8/11/2026 have been fully considered but they are not persuasive.
The applicant has alleged that Geissler does not disclose the same substrate as both paper and food packaging. It is initially noted that the instant claims require a paper product with an intended use as a food packaging material or a foot container. What is required is a paper product treated with the oil-resistant agent composition. It is the position of the office that any paper product is capable of functioning in the claimed capacity. It is the position of the Office that the intended use does not result in a structural difference. See MPEP 2111.02. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Geissler teaches a paper product treated with their composition, and specifically mentions food packaging materials in the same paragraph [0020]. The first half of paragraph [0020] specifically mentions paper products such as cardboard. Cardboard is capable of functioning in the claimed capacity as a food packaging material or food container. In the second half of paragraph [0020], cellulose products coated with the composition are specifically designated as food packaging. Cellulose products are paper products. In paragraph [0020] paper is cited as the fibrous and/or porous substrate. In paragraph [0021] the fibrous and/or porous substrate materials (i.e. paper) is particularly suitable for food packaging. Furthermore, in the examples the composition was applied to a medical packaging paper. That paper is capable of functioning as a food packaging paper or a food container. The folding boxboard of Example 3 is capable of functioning in the claimed capacity. Clearly Geisler teaches a paper product that is treated with their composition that is used as a food packaging material.
The applicant has made the argument that Geissler does not disclose oil resistance. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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