Detailed Office Action
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/23/2026 has been entered.
Claim 1 has been amended. Claims 1, 2, 4-8, and 10-16 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 .
Allowable Subject Matter
The claims would be allowable in instant claim 1 was modified as follow below and the 112(b) issue for claim 14 is corrected.
“wherein said strength enhancement agent is
Response to Arguments
The Examiner agrees that none of the CONN and NORDSTROM references explicitly state that the starch is hydrolyzed.
However, CHEMELLI discloses that starches must be first heated (i.e. cooked) to prevent retrogradation [pg. 10 col. 1 par 2].
The chemistry of starch is further explained in KARPPI which explains that retrogradation causes starch to gum up in a gel before it can be used which can cause serious problems in a paper mill [pg. 2]
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 14 and 15 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.
Claim 14 recites the limitation "the multiply container board" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim should state “the multiply container board of claim 1”
Claim 15 depends from claim 14 and is similarly rejected.
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 1, 2, 4-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/165919A1 CONN et al., hereinafter CONN, in view of EP 3,026,173 B1, NORDSTROM, hereinafter NORDSTRON, and EP 3,739,114A1 NORSTROM et al., hereinafter NORSTROM II, and Cationic Starches in paper-based applications – A review on analytical methods by Chemelli et al., hereinafter CHEMELLI.
As for claims 1, CONN discloses a multiply sheet with a first outer ply and a second outer ply [pg. 2 lines 40-41] for corrugating paper [abstract]. CONN discloses that the plies are joined by a middle (interfacial) layer [pg. 3 lines 1-5] comprising a strength enhancing agent of starch, microparticles and MFC [pg. 4 lines 5-10 and 35-40]. CONN discloses some of the starch and microparticles will migrate into the first and second outer ply [pg. 7 lines 30-33, pg. 9 lines 19-20, and Figure 2] therefore they will have strengthening agent therein.
CONN discloses the middle layer is 9 gsm [pg. 22 line 9]. The middle layer is 75% starch [pg. 22 line 26]. and therefore the amount of strengthening agent is about 6.75 gsm which falls within the claimed range.
CONN discloses the outer plies are made of pulp and have migration of the strengthening agent. Therefore the concentration in the interfacial layer will be higher. CONN does mention the paper layers can have 5-10% starch [pg. 1 line 16]. However, even in this case the starch concentration is higher in the interfacial layer.
CONN discloses that the layers are made of virgin pulp with a lower basis weight [pg. 23 lines 10-16] but does not explicitly disclose the use of NSSC.
NORDSTRON discloses the use of NSSC for fluting [0008] at over 50% by weight [0022] with the remainder recycled fibers [0022]. At the time of the invention it would be prima facie obvious to use over 75% NSSC pulp for the fluting of CONN as suggested by NORDSTRON. The person of ordinary skill in the art would be motivated to do so by NORSTRON as NSSC pulp can have higher density with increased strength [0011-0014].
CONN discloses that the interfacial layer comprises nanoparticles and the nanoparticles can be microfibrillated cellulose [pg. 4 lines 35-41]. The nanoparticles can be 50:50 clay:cellulose and the range of 20:80 to 80:20 clay:cellulose. Give 75% starch and 25% nanoparticles [starch 75%; pg. 22 line 26] the cellulose can run at 5-20% cellulose fibers which falls within the instant claimed range.
CONN and NORDSTROM disclose the features as per supra. NORDSTROM discloses the use of NSSC but does not disclose kraft pulp. NORDSTROM II discloses 90% NSSC and 10% kraft which abutts the claimed range [0042]. At the time of the invention it would be obvious to make the fluting of CONN/NORSTROM with the furnish and papermaking technique as per NORDSTROM II. NORDSTROM II states that the instant process is an improvement over NORDSTROM with increased efficiency [0008].
There genus of kraft pulp contains two species unbleached or bleached. The person of ordinary skill in the art would at once envisage the use of either unbleached or bleached kraft pulp. This is recognizable not only by the artisan or ordinary skill in the art but the ordinary consumer who receives their packages in unbeached boxes.
"[W]hether a generic disclosure necessarily anticipates everything within the genus … depends on the factual aspects of the specific disclosure and the particular products at issue."
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083, 89 USPQ2d 1370, 1375 (Fed. Cir. 2008). See also Osram Sylvania Inc. v. American Induction Tech. Inc., 701 F.3d 698, 706, 105 USPQ2d 1368, 1374 (Fed. Cir. 2012) ("how one of ordinary skill in the art would understand the relative size of a genus or species in a particular technology is of critical importance").
The factors here for anticipation based upon the genus are clear. The genus of kraft pulp can be either bleached or unbleached. The act of bleaching requires an additional step that the art does not suggest must occur. The products (corrugated box board) are known to be unbleached.
CONN and NORSTROM I and II teach the features as per supra. CONN discloses starch but fails to disclose the type of starch. CHEMELLI discloses that paper making uses cationic starch [abstract]. The starch is heated (cooked) to prevent retrogradation [pg. 10 col. 1 par 2]. At the time of the invention it would be obvious to use cationic starch in CONN/NORSTROM I and II as suggested by CHEMELLI. The person of ordinary skill in the art would by motivated to do so by CHEMELLI as cationic starch has better retention to anionic fiber and better inter-fiber bonding [pg. 2 col. 1 par. 2 and 4]. The person of ordinary skill in the art would expect success as starch is a common chemical used in papermaking [pg. 2 col. 1 par. 2] according to CHEMELLI and CONN states that modified starches can be used [pg. 1 lines 16-19]
Cationic starch acts as both a retention aid/drainage aid and a size [CHEMELLI pg. 2 col. 1 par. 2 and 4]. The concentration of the cationic starch (strength/retention/size) is 75% in the middle (interfacial) layer it is over twice as high the concertation of strength agent in the first or second outer ply (even if almost 100% migration happened the concentration in one outer ply would be less than 10%). CONN also discloses 5-10% starch [pg. 1 line 16] in the layers for the paper but this amount would still be less than twice the concentration of starch in the interfacial layer.
As for claim 4, CONN discloses the first and second outer plies have a basis weight of 100 gsm [pg. 22 lines 18-20] which falls within the claimed range.
As for claim 5, CONN does not specify using different sheets and therefore it is the Examiners position that the sheets are the same. Alternatively, it would be obvious to have the sheets be the same so that they would have the same properties and therefore make the corrugated fluting the same from either side.
As for claim 6, CONN discloses the middle (interfacial) layer has a basis weight 9 gsm which falls within the claimed range [pg. 22 line 9].
As for claim 7, CONN discloses 75% starch [pg. 22 line 26].
As for claim 8, CONN discloses the middle layer is 9 gsm [pg. 22 line 9]. The middle layer is 75% starch [pg. 22 line 26]. and therefore the amount of strengthening agent is about 6.75 gsm which falls within the claimed range.
As for claim 9, CONN discloses starch [pg. 22 line 26].
As for claim 10, CONN discloses that MFC can be used [pg. 4 lines 35-41]
As for claim 13, CONN discloses 5 to 10% starch in the paper [pg. 1 line 16] or 50-100 kg/ton which abuts the instant claimed range making a prima facie case of obviousness. Alternatively, the concentration of a strengthening agent is a clear result effective variable. It would be obvious to optimize the concentration and the final strength added through routine experimentation. The Examiner notes that differences in concentration will not show non-obviousness absent evidence of criticality.
As for claims 14 and 15, CONN discloses the multiply sheet can be fluted for use in corrugated board [pg. 3 lines 23-24, Figure 1b, 3a, and Figure 7].
As for claim 16, the concentration of the strength agent starch 75% in the middle (interfacial) layer it is over twice as high the concertation of strength agent in the first or second outer ply (even if almost 100% migration happened the concentration in one outer ply would be less than 10%). CONN also discloses 5-10% starch [pg. 1 line 16] in the layers for the paper but this amount would still be less than twice the concentration of starch in the interfacial layer.
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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
Prosecution Insights