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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-12 and 16 are rejected under 35 USC §103. This rejection is set forth in the prior Office action mailed on November 04, 2025. Note that the same rejection applies to newly added claim 16, for the reason(s) discussed in the Response to Arguments below.
Response to Arguments
Applicant's arguments filed on February 04, 2026 have been fully considered but they are not persuasive.
Applicants argue that one of ordinary skill in the art would not combine the primary reference, Conley, with the secondary reference, because Conley appreciates cost reduction rather than high performance and thus would not use the teaching of the secondary reference. Gilbert, since Gilbert is concerned with homogeneous compositions of pulped paperboard. The arguments are not persuasive, because Conley teaches that other additives can be used; see ¶-[0069] and Gilbert teaches that polyethyloxazoline increases the strength of a pulp containing synthetic fibers/polymers and thus one of ordinary skill in the art would have reasonable expectation of success if said strength agent were added to the Conley’s pulp, which is a synthetic pulp as-well. Note that the secondary reference was only used for the teaching that the polyethyloxazoline compound increases the strength of pulps that include synthetic fibers/polymers and it has been held that “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Also it has been held that “A combination of reference teachings may be obvious in the technological sense even though business or economic considerations would previously have counseled against such a combination.” In re Farenkopf, 713 F2d 714; 219 USPQ 1. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971). References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA) 1969.
As to the limitation of claim 16, Gilbert teaches the use of the polyethyloxazoline in ranges falling within the claimed range; see column 2, lines 4 through 17.
Note also that the independent claim does not require the pulp or the composition to be an aramid pulp, since the body of the claim does not recite any pulp containing aramid fibers and it has been held that “A preamble is not a limitation if it merely states a purpose or intended use and the remainder of the claim completely defines the invention.” See Diversitech Corp. vs Century Steps Inc., 7 USPQ 2d 1315 (Fed. Cir. 1988). Therefore, just Gilbert would read on the claim(s).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 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.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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