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 1-21, received 07 November 2023, were previously pending in the present application.
By virtue of a Preliminary Amendment, filed by Applicant on 07 November 2023, claims 1-3, 5-17, and 19 were amended, claims 4, 18, and 20-21 were cancelled, and claim 22 was added.
Therefore, claims 1-3, 5-17, 19, and 22 are now pending and under examination.
Information Disclosure Statement (IDS)
The IDS (1) filed on 07 November 2023 has been considered by the examiner. A signed copy is enclosed.
Applicant is reminded of their duty to disclose to the Office all information known to the
person to be material to patentability as defined in 37 CFR 1.56. As stated therein, “[e]ach
individual associated with the filing and prosecution of a patent application has a duty of candor
and good faith in dealing with the Office, which includes a duty to disclose to the Office all
information known to that individual to be material to patentability as defined in this section.”
Claim Rejections - 35 USC § 112(b)
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.
Claim 10 is 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 10 recites the limitation, “[t]he composition as claimed in claim 1, comprising from 0.1% to 5% by weight of filler(s) relative to the total weight thereof.” Since claim 1 makes no reference to filler(s), there is insufficient antecedent basis for this limitation in claim 10.
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.
Conclusion
Claims 1-3, 5-17, 19, and 22 are rejected. No claim is allowed.
Correspondence
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 7:30-5:00 (MST).
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/JULIA A ROSSI/Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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