Detailed Office Action
The communication dated 12/6/2023 has been entered and fully considered.
Claims 1-16 are pending.
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 Objections
Claim 2 and 16 are objected to because of the following informalities:
Claim 2 is not grammatically corrected as it uses two different positional words “between” and “at”.
Claims 16 need spaces between the units and values.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-17 of copending Application No. 18/530,314 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim single layer multi-region pulp sheets with different fiber types in each region and a transition layer [copending claim 1 and 2].
Claims 1 and 2 see copending claims 1 and 2.
Claim 3 see copending claim 3.
Claim 4 see copending claim 4.
Claim 5 see copending claim 5.
Claim 6 see copending claim 6.
Claim 7 see copending claim 7.
Claim 8 see copending claim 8.
Claim 9 see copending claim 9.
Claim 10 see copending claim 10.
Claim 11 see copending claim 11.
Claim 12 see copending claim 12.
Claim 13 see copending claim 13.
Claim 14 see copending claim 14.
Claim 15 see copending claim 15.
Claim 16 see copending claim 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 6 and 7 are 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.
Claims 6 and 7 recite the limitation "transition region" in line 1. There is insufficient antecedent basis for this limitation in the claim. This should be “transition layer” to match claim 2.
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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 320,614 BEALE, hereinafter BEALE
As for claim 1, BEALE discloses a single layer paper sheet [Figure 1]. The paper sheet has two regions (A) and (B) [Figure 1]. The first region (A) can comprise short fiber pulp and the second region (B) a long fiber pulp [lines 48-55].
As for claim 2, 6, and 7 as the sheet is wet laid there will be some intermixing of the fibers between A and B. The applicant does not disclose the size of the transition layer and therefore it can be defined as any size. The Examiner interprets it as the position where there is about 50-50 intermixing.
As for claims 3-5, BEALE states that the first region formed of short fiber pulp while the second region (B) formed of long fiber pulp [lines 48-55]. The Examiner therefore interprets each to be 100% of the disclosed pulps.
As for claim 8 and 9, BEALE discloses that any type of pulping can be used and therefore discloses at least either chemical or mechanical pulping [lines 29-35; “any kind”]. It is the Examiner’s position that paper pulp refers to cellulose fiber pulp.
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 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 320,614 BEALE, hereinafter BEALE in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 8-12, BEALE teaches the features as per above. The Examiner has argued that the long and short fibers of BEALE are cellulosic fibers which have been produce by one of chemical or mechanical processes, above. Alternatively, these features are taught in combination with SMOOK. BEALE does not disclose that they are hardwood or softwood fibers or what the average length is.
SMOOK discloses that hardwood fibers are short fibers and have a range of 1.04-1.7 mm which falls within the claimed range [pg. 15 Table 2-3] and discloses softwood fibers are long fibers which have a range of 3.5 to 6.1 mm which falls within the claimed range [pg. 13 col. 2 softwoods vs. hardwoods and pg. 15 Table 2-3]. SMOOK like BEALE discloses that hardwoods are typically weaker than the softwoods [pg. 15 col. 1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute hardwood fibers for the short weak fibers of BEALE and softwood fibers for the longer stronger fibers of BEALE. The person of ordinary skill in the art would expect success as BEALE states that any fiber can be used and the hardwood/softwood fibers of SMOOK provide the short and long fibers that BEALE requires.
As for claims 13 and 14, BEALE does not disclose any of the specific agents being added to the multi-region pulp article.
SMOOK discloses that papermaking uses additives to the pulp to give different properties. These additives include strengthening agents, coloring materials, slimicides and others [pg. 220 Table 15-1].
SMOOK discloses wet-strength agents which are binders [pg. 224 col. 2]. At the time of the invention it would be obvious to the person of ordinary skill in the art to add a wet-strength agent of SMOOK to the paper sheet of BEALE to increase wet strength of the paper sheet [pg. 224 col. 2]. SMOOK also discloses surface coating with sizing agents [pg. 283 col. 1 and Table 18-1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to add sizing agents to the paper sheet of BEALE as a surface coating to prevent water penetration. The person of ordinary skill in the art would be motivated to do so to prevent water penetration and improve surface strength and internal bond [SMOOK pg. 283 col. 1 par. 1].
This is especially important for carpet backing to prevent degradation of the carpet backing when there are liquid spills. The person of ordinary skill in the art would expect success as these are known papermaking additives to improve known properties.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 320,614 BEALE, hereinafter BEALE, in view of Paper on the Web and Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 15, BEALE does not disclose the density of the paper, however, BEALE states the paper can be made of any type of pulp [line 31]. Paper on the web discloses densities of various papers which range from 0.25 kg/m3 for the least dense paper to 1.52 kg/m3 for the densest paper. Therefore, teaching an encompassing range. Further, 0.69 kg/m3 is taught for kraft paper fibers and BEALE states any type of fiber can be used. At the time of the invention it would be obvious to use the known fiber type of kraft pulp for the backing sheet. The person of ordinary skill in the art would be motivated to so as kraft pulp is a generally strong pulp and is the dominant pulping process which has advantages in chemical recovery and pulp strength [SMOOK pg. 38 col. 1].
As for claim 16, BEALE does not disclose the strength of the paper, however, BEALE states the paper should have strong reinforcing strips. Paper on the web discloses relatively weak newsprint has a strength of 1.8 kN/m while stronger grades have a tensile of 5.6 and 3.6 kN/M both of which fall within the claimed range [Paper on the Web, pg. 14]. At the time of the invention it would be obvious to optimize the strength of the paper through routine experimentation to obtain the desired tensile strength. BEALE states that a high strength is desired and is an essential part of the product [lines 65-67]. BEALE discloses that long fiber has higher tensile strength than short fiber. This is confirmed on Paper on the web [pg. 15] showing softwood fir/pine to have a higher strength than the hardwood sweetgum. Paper on the web also shows that tensile strength can be increased by beating [pg. 15]. As such the person of ordinary skill in the art can achieve the desired tensile strength by picking out the wood used, pulping type and the degree of beating.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/ Primary Examiner, Art Unit 1748