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 Status
Claims 1-3, 5-17, 19, and 22 were previously pending.
A non-final rejection office action was mailed 10 April 2026.
In response to that office action, Applicant filed an Amendment/Request for Reconsideration received 02 July 2026.
In their Amendment/Request for Reconsideration, Applicant amended claims 1, 7, 10, and 16; and did not cancel or add any claims.
Therefore, claims 1-3, 5-17, 19, and 22 remain pending and under examination.
Withdrawn Claim Rejections
I. Claim 10 was previously rejected under 35 USC 112(b). Applicant’s amendment to claim 10 was sufficient to overcome this rejection and therefore, the previously held rejection is hereby withdrawn.
Maintained Claim Rejections
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.
Claims 1, 3, 5-10, 12-17, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Pawlowska (US PGPub. No. 2006/0060814 A1; 23 March 2006) as evidenced by Wikipedia (cited by Applicant in 07 November 2023 IDS as: “Quaternary ammonium cation wikipedia,” 22 December 2020).
Pawlowska discloses an aqueous sizing composition including: 1) a first component comprising an emulsion having alkenylsuccinic anhydride component containing alkenylsuccinic anhydride particles and a surfactant, suspended in water; and 2) a second component selected from: cationic starches, non-ionic starches, water, water-soluble polymers, and mixtures thereof (abstract).
Regarding claim 1, Pawlowska discloses a method of treating a fibrous substrate with a composition containing:
A cationic starch, among other starches ([0017], Examples at [0084]) and natural polymers such as gelatin (see Specification, p. 10 whereby the hydrophilic binding agent includes starches and gelatins);
A surfactant selected from a group consisting of tertiary amines and their corresponding quaternary salts ([0035]) which is a genus that would include species such as didecyldimethylammonium chloride (DDAC) (see Specification, p. 7 whereby DDAC is a limiting example of a non-polymeric quaternary ammonium salt). Pawlowska further discloses use of an alkyl ammonium quaternary salt, Larostat 264A, as a surfactant in the working examples ([0093], [0113]-[0116]). Finally, Pawlowska discloses the surfactant includes a trialkyl amine of the formula:
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Where R1 is a methyl or ethyl, R2 is a methyl or ethyl, and R3 is an alkyl having 14-24 carbon atoms ([0014], [0036]);
A cellulose-reactive sizing agent selected from isocyanates, alkyl ketene dimer (AKD), and acid anhydrides ([0080]-[0081]).
In addition, Pawlowska discloses the composition of the invention is used to treat paper or any other application in which a surface of a fibrous substrate can be treated ([0026]).
While Pawlowska does not explicitly disclose the biocidal properties of the quaternary ammonium compound as recited in claim 1, this property is inherent to the compound as evidenced by Wikipedia, which discloses quaternary ammonium salts, especially those containing long alkyl chains, have been shown to have antimicrobial and disinfectant properties (p. 2). These quaternary ammonium salts, such as DDAC, act by disrupting the cell membrane or viral envelope and are lethal to a wide variety of organisms except endospores (p. 3).
Regarding claims 3 and 22, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
A sizing agent that is styrene acrylate (SAE) ([0057]) or alkyl ketene dimer (AKD) ([0080]-[0081]).
Regarding claim 5, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
A starch component ([0052]) in addition to natural, water-soluble natural polymers such as gelatin ([0048]).
Regarding claim 6, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
Starch solids from about 0.1 wt% to about 20 wt% of the total composition ([0053]) in addition to water-soluble polymers such as gelatin from 0.01 wt% to 20 wt% of the total composition ([0050]). These disclosed ranges overlap with the instantly claimed range. See MPEP 2144.05(I).
Regarding claim 7, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
A surfactant that can be a non-polymeric quaternary ammonium salt present from about 0.1 wt% to about 20 wt% of the total composition ([0036]). These disclosed ranges overlap with the instantly claimed range. See MPEP 2144.05(I).
Regarding claim 8, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
Sizing agent alkenyl succinic anhydride (ASA) present from about 0.001 wt% to about 5 wt% of the total composition (p. 21, claims 1 and 11). These disclosed ranges overlap with the instantly claimed range. See MPEP 2144.05(I).
Regarding claims 9 and 10, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
Calcium carbonate from 5 to 30 wt% ([0060]), which is known in the art as a filler ([0006]). This range overlaps with the instantly claimed range. See MPEP 4155.05.
Regarding claim 12, Pawlowska discloses a method of treating a fibrous substrate with a composition, wherein embodiments of the composition may contain:
A surfactant component suspended in water ([0017], [0021], [0055], [0106]).
Regarding claim 13, Pawlowska discloses a process for sizing a paper product comprising treating a fibrous substrate surface with an aqueous sizing composition, wherein the aqueous sizing composition comprises (1) an emulsion having an alkenylsuccinic anhydride component containing alkenylsuccinic anhydride particles and a surfactant component suspended in water, and (2) a second component selected from: starches, water, water-soluble polymers, and mixtures thereof (p. 22, claim 31). Pawlowska describes combining the two components of the aqueous sizing composition and applying them to a fibrous substrate, resulting in a product with properties suitable for its intended use ([0056], [0059], [0070]).
Regarding claim 14, Pawlowska discloses a process for sizing a paper product comprising treating a fibrous substrate surface with an aqueous sizing composition, wherein the fibrous substrate is a fine paper product exhibiting a Cobb sizing value (based on 60 sec) ranging from about 18 to about 40 gsm ([0068]). The range disclosed by Cobb overlaps with the instantly claimed range. See MPEP 2144.05(I).
Regarding claim 15, Pawlowska discloses a process for sizing a paper product comprising treating a fibrous substrate surface with an aqueous sizing composition ([0019], [0066]).
Regarding claim 16, Pawlowska discloses a process for sizing a paper product that involves:
Forming a fibrous sheet from a pulp slurry; and
Treating a surface of the fibrous sheet with the aqueous sizing composition of the invention ([0061]).
Pawlowska further details treating the surface of the fibrous sheet entails adding the sizing composition to the surface of the fibrous sheet in an amount that is sufficiently high to impart useful sizing properties to the resulting paper product ([0061]). The sizing composition can be added to a fibrous substrate by any way that enables the sizing composition to adsorb onto the surface of the fibrous substrate ([0061]). Furthermore, Pawlowska provides three application procedures, one of which involves dipping a dry paper sheet into the surface treatment solution and drying the sheet at 240° F for 35 seconds (Surface Application Procedure A - [0090] and [0091], [0092]).
Regarding claim 17, Pawlowska discloses a process for sizing a paper product comprising treating a fibrous substrate surface with an aqueous sizing composition, wherein the aqueous sizing composition comprises a catatonic sizing agent, such as alkenylsuccinic anhydride, known in the art to impart hydrophobic properties to the treated paper and board products upon its reaction with cellulose ([0002]).
Regarding claim 19, Pawlowska discloses a process for sizing a paper product comprising treating a fibrous substrate surface with an aqueous sizing composition, wherein the fibrous substrate produced includes: any substrate of a paper product such as paper or board ([0059]).
The difference between the applied reference and the claimed invention in claims 1, 3, 5-10, 12-17, 19, and 22 is that the applied references may not teach the instantly claimed method with particularity so as to amount to anticipation. See MPEP “[t]he identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Pawlowska discloses various embodiments of an aqueous sizing composition, methods for producing such a composition, and fibrous substrates treated with such a composition.
The applied reference discloses the components of the claimed composition and method of use with sufficient guidance, particularity, and with a reasonable expectation of success for the skilled artisan, that the invention would be prima facie obvious to one of ordinary skill in the art. Pawlowska discloses all the rejected claim limitations with a reasonable expectation of success – it would be obvious to pick and choose from components with which Pawlowska discloses as applicable to formulate an aqueous sizing composition because Pawlowska discloses successful formulation using such components.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Pawlowska as evidenced by Wikipedia as applied to claims 1, 3, 5-10, 12-17, 19, and 22 above, and further in view of Kruckel (US PGPub No. 2004/0206274 A1; published 21 October 2004).
The disclosures of Pawlowska are discussed above. While Pawlowska discloses an aqueous sizing composition comprising a non-polymeric quaternary ammonium salt, Pawlowska does not explicitly disclose the limitations of instant claim 2. However, as discussed below, these limitations are made obvious in view of Kruckel.
Kruckel discloses an aqueous dispersion composition, process for its preparation, use thereof, and processes for the production of paper (abstract).
Regarding claim 2, Kruckel discloses the aqueous dispersion composition comprises a cationic surfactant which include compounds having the general formula R4N+X-; wherein each R group is a hydrocarbon group from 1 to 22 carbon atoms and X is an anion, suitably a halide like chloride ([0031]). Further, Kruckel discloses examples of suitable surfactants adhering to the previous formula include: didecyldimethylammonium chloride (DDAC) or dioctyldimethylammonium chloride ([0031]). Finally, Kruckel discloses the preferred cationic surfactant of the invention are quaternary ammonium compounds ([0031]).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to substitute the genus of quaternary ammonium surfactants disclosed by Pawlowska with specific species didecyldimethylammonium chloride (DDAC) or dioctyldimethylammonium chloride disclosed by Kruckel as suitable surfactants in compositions used to treat fibrous substrates such as paper. This modification would have been obvious as the simple substitution of one known component for another to yield a predictable outcome.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Pawlowska as evidenced by Wikipedia as applied to claims 1, 3, 5-10, 12-17, 19, and 22 above, and further in view of Hercules (WO 00/34583; published 21 October 2004).
The disclosures of Pawlowska are discussed above. While Pawlowska discloses an aqueous sizing composition comprising a non-polymeric quaternary ammonium salt, Pawlowska does not explicitly disclose the limitations of instant claim 11. However, as discussed below, these limitations are made obvious in view of Hercules.
Hercules discloses compositions to treat paper products (abstract) comprising sizing agents such as ASA and AKD (p. 18, lines 19-22) and a cationic surfactant that is a quaternary ammonium salt (p. 13, lines 2-5 and 18-30).
Regarding claim 11, Hercules discloses embodiments of the composition contain optional additives such as biocides in amounts and using techniques known to those in the papermaking industry (p. 29, lines 24-28).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to improve upon the paper treatment composition disclosed by Pawlowska by adding the optional biocide additive taught by Hercules with predictable results. The results would have been predictable because Hercules teaches such additive is possible in a similar paper treatment composition as that which is disclosed by Pawlowska. This is use of a known technique to improve similar products in the same way.
Response to Applicant’s Arguments
Applicant’s arguments have been considered, but are not found to be persuasive for the reasons set forth below:
Pawlowska discloses an aqueous sizing composition for treating fibrous substrates, including paper, comprising a hydrophilic binder component and a sizing agent together with a surfactant system. As set forth in the previous Office Action, Pawlowska teaches starches and water-soluble polymers corresponding to the presently claimed hydrophilic binder and teaches cellulose-reactive sizing materials to impart water resistance to fibrous substrates.
Selection of quaternary ammonium compound from the genus of Pawlowska
With respect to the recited quaternary ammonium compound, Pawlowska teaches suitable surfactants include alkyl and aryl primary, secondary, and tertiary amines and the corresponding quaternary salts. Pawlowska further expressly employs a quaternary ammonium surfactant, Larostat 264A, in its working examples.
Thus, Pawlowska is not limited to a single, specifically exemplified quaternary ammonium structure, but instead teaches the broader use of alkyl-substituted quaternary ammonium compounds as suitable surfactants in the disclosed aqueous sizing compositions.
The previously relied upon evidence concerning quaternary ammonium compounds further establishes that didecyldimethylammonium chloride (DDAC) is a known quaternary ammonium salt having two decyl groups and two methyl groups bonded to nitrogen and a chloride counterion. DDAC therefore corresponds the presently recited formula:
(CH3)2A2N+X-
The same evidence also identifies DDAC as an antiseptic/disinfectant and broad-spectrum biocide.
Accordingly, one of ordinary skill in the art, presented with Pawlowska’s teaching that alkyl-substituted quaternary ammonium salts are suitable surfactants for the disclosed aqueous sizing compositions (see specifically [0035]), would have recognized DDAC as a known member of that class having the established quaternary ammonium surfactant and biocidal properties.
Therefore, the claimed compound represents a selection of a known alkyl-substituted quaternary ammonium species from the class of quaternary ammonium surfactants expressly contemplated by Pawlowska, with the predictable retention of the known surfactant and biocidal properties of the selected compound.
Amount of quaternary ammonium compound
Claim 1 has been amended to require the quaternary ammonium compound in an amount from 0.05 to 2.5 wt% (dry weight) relative to the total weight of the composition.
Applicant argues that Pawlowska’s disclosed surfactant range of approximately 0.1 to 20 wt% is based on the alkenylsuccinic anhydride component rather than relative to the total weight of the final sizing composition. Applicant further calculates that the particular final compositions of certain Pawlowska embodiments contain surfactant at concentrations below the presently claimed range (see Remarks, p. 7).
The Examiner acknowledges that Pawlowska’s stated 0.1 to 20 wt% is expressed relative to the alkenylsuccinic anhydride component. To the extent the previous Office Action characterized that range as directly representing the amount relative to the total sizing composition, the rejection is clarified accordingly as discussed below. However, this clarification does not alter the ultimate conclusion of obviousness.
Pawlowska expressly teaches the alkenylsuccinic anhydride component is generally present in the sizing composition in an amount that is at least 0.001 wt%, or about 0.05 to 5 wt% relative to the total weight of the sizing composition ([0040]). For example, selecting the following values, each of which fall within Pawlowska’s expressly claimed ranges, would provide an amount that falls within Applicant’s claimed range:
the alkenylsuccinic anhydride component = 5 wt%
surfactant/quaternary component = 20 wt% (based on the ASA component)
This would provide a surfactant/quaternary component of 1.0 wt% relative to the total weight of the composition.
Furthermore, using the entire spectrum of Pawlowska’s disclosed ranges more broadly produces a range of 0.00005 wt% to 1.0 wt%, which overlaps with the instantly claimed ranges of claims 1 and 7. It is well-established that where prior art discloses a range that overlaps the claimed range, a prima facie case of obviousness exists absent evidence the claimed range is critical or produces unexpected results. Applicant has not provided evidence demonstrating the criticality of the claimed range or unexpected results attributable to that range.
In addition, Pawlowska expressly establishes that the amount of surfactant is an adjustable formulation variable. Pawlowska teaches a broad, usable range of surfactant relative to the sizing component and evaluates different surfactant amounts in its disclosed formulations. Thus, Pawlowska teaches the artisan that the surfactant concentration may be varied according to the requirement of the sizing system, rather than fixed at a single concentration.
Applicant’s argument focuses too narrowly on the specifically illustrated species of Pawlowska. The rejection does not rely upon establishing that Larostat 264A itself is necessarily the presently claimed compound. Larostat simply confirms Pawlowska’s actual use of quaternary ammonium materials in the sizing system, while Pawlowska’s broader disclosure establishes the suitability of alkyl-substituted quaternary salts generally. The previously relied upon evidence identifies a known member of that class – DDAC – which possesses both the presently claimed structure and the known biocidal property.
A person of ordinary skill is presumed to possess knowledge of the prior art as a whole and is not limited to the specific examples of a single reference. In view of Pawlowska’s express teaching that alkyl quaternary salts are suitable surfactants, selection of DDAC from that known class would have represented the predictable selection of a known species for the same general surfactant function. Applicant’s observation that Larostat’s manufacturer’s literature characterizes Larostat as an antistatic material does not alter this conclusion. The rejection does not depend upon Larostat possessing the precisely claimed structure or being marketed as a biocide.
In addition, Applicant has submitted no comparative evidence showing that the presently claimed 0.05 to 2.5 wt% range is critical or produces an unexpected improvement relative to lower or higher concentrations.
Applicant further argues Pawlowska provides no motivation to employ a dialkyldimethylammonium compound having two fatty chains at the claimed concentration for the purpose of simultaneously imparting hydrophobic and biocidal properties (Remarks, p. 7). This argument is not persuasive because the reason for combining or selecting prior art teachings need not be identical to Applicant’s stated purpose. Pawlowska already teaches alkyl-substituted quaternary ammonium compounds as suitable surfactants for aqueous sizing compositions. The previously cited evidence demonstrates DDAC is a known quaternary ammonium compound within the claimed structural class and possesses known biocidal activity.
Accordingly, selecting a known alkyl quaternary ammonium surfactant for Pawlowska’s disclosed surfactant function would have predictably provided the properties inherent to that known compound, including its biocidal capability. Recognition of that additional known or inherent property does not render the otherwise obvious selection nonobvious.
Applicant’s arguments have therefore been fully considered by are not persuasive and the previous claim rejections are maintained.
Conclusion
Claims 1-3, 5-17, 19, and 22 are rejected. No claim is allowed.
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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Julia A. Rossi whose telephone number is (571)272-0138. The examiner can normally be reached M-Th 7:30-5:30 (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571)272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JULIA A. ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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