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 Objections
Claim 1 is objected to because of the following informalities: although acronyms/abbreviations are permitted in claims, they should be defined in the first instance, in order to not be confused with other having the same acronyms/abbreviations and also help the reader of the claim(s), i.e., the reader does not have to go back and forth to find the meaning of the abbreviation. The meaning of HT-CTMP should be included in claim 1.
Appropriate correction is required.
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 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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al., (hereinafter Peng’883), WO 2006/084883 A1 with/without Peng et al., (hereinafter Peng’293), WO 2015/087293 A1 and evidenced by any of Sheet Forming (Machine Translation of “Papp Och Kartong” by Gavelin Gunnar (1995), (hereinafter Gavelin) and Paper Machine Clothing, by Adanur, Sabit (1997) (hereinafter Adanur) , both supplied on IDS filed on April 25, 2024.
With regard to claims 1-2, 5 and 12-13 Peng’883 teaches a method of forming a multi-layered1paperboard including one or more middle/inner layer(s). The middle layer comprises at least 7 through 100 CTMP Hardwood pulp and the remainder of chemical pulp or softwood CTMP (paragraph bridging pages 11 and 12) or from 0 to 93% of chemical pulp or softwood CTMP (page 4, lines 12-23); see also abstract; page 9, lines 19-25 and paragraph bridging pages 11 and 12. Peng’883 teaches that the CTMP can be any of temperature or pressure used to make CTMP, see page 7, lines 18-21, which clearly includes HT- CTMP2. However, if applicants consider that such pulp is not actually included as part of the CTMP definition of Peng’883, then Peng’293 teaches the making of paperboards including a middle layer comprising HT-CMTP and teaches the advantage(s) of using said pulp over the common CTMP, it is possible to use high amounts of hardwood fibers in the middle ply and still maintain strength (6:20-23). Therefore, the use of HT- CTMP would have been obvious to one of ordinary skill in the art in order to obtain the advantage discussed above, i.e., hardwood CTMP pulps can be used in greater proportion while maintaining the strength and thus, it is possible to decrease the amount of softwood pulp used in the middle ply or in all the plies. While Peng’883 teaches that hardwood HT- CTMP and Softwood HT- CTMP pulps can be mixed id Peng’883 does not teach that the HT-CTMP is obtained from a mixture of hardwood and softwood; however, preparing a mixture of separated made HT- CTMP pulps or obtained from a mixture of the same pulps is within the level of ordinary skill in the art and considered obvious absent a showing of unexpected results3. As to the consistency of the middle ply slurry, the evidentiary references Adanur and Gavelin teach that the middle ply of paperboards are usually made with consistency falling within the claimed range4, i.e., at least 0.30, i.e., from 0.20-075 table 22 of Gavelin and table 2.1 on page 34 of Adanur and thus the consistency of the middle layer claimed must be inherently within the claimed range or at the very least using consistency as taught by the evidentiary references would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if such common consistency were used to make the middle layer of Peng’883.
Regarding to claims 3 and 14, Peng’883 teaches the use of broke; see paragraph bridging pages 8 and 9, but does not teach the amounts to be added. However, optimizing the amounts of the different fibers is within eth levels of ordinary skill in the art and considered obvious absent a showing of unexpected result, since it is clear from the teaching of the reference(s) that the amount of fiber/pulp added to a papermaking composition is a result-effective variable in this particular case for economic reasons, e.g., to reuse/recycle fibers and avoid the use of more expensive fibers and depending of the type of broke, i.e., influence the quality of the pulp adding softness for hardwood broke or strength for softwood broke and if a blend it can be improve both, strength and softness.
With regard to claim 4, Peng’883 teaches the use of Kraft softwood pulp falling within the claimed range; see table 5.
Regarding to claims 6-7 and 15-16, Peng’883 teaches that the grammage and density of the middle or the product would depend on the type of product that is produced; see page 1, lines 8-10, and therefore, making product/paperboards with the claimed properties would have been obvious to one of ordinary skill in the art.
With regard to claims 8 and 17, Peng’883 shows product with density below the claimed range, e.g. with density in the 4 hundreds and thus reading on those claimed; see Table 5.
Regarding to claims 9-11 and 18-19, Peng’883 teaches the use of kraft pulps for the top and bottom layers in proportions falling within the claimed range; see page 14, lines 16-20. Note that the paragraph teaches 100% of Kraft pulp(s), in a mixture of softwood and hardwood, the Eucalyptus Kraft and thus reading on the above claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Product of Paperboard Having Improved Printing Properties.”
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.
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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
1 Here multi-layer is actually what is called multi-ply, i.e., a layered product which is joined after the web is formed but still wet, after the web pass the dry line of the former, and then dewatered/dried, as opposed to layered products which slurry are mixed together from a multilayer headbox or multiple headboxes positioned before the dry line of the former.
2 HT-CTMP is a common term used for CTMP in which the chips are heat treated at temperature anywhere from at least 140 ºC to at least 160 ºC, also defined by the current application; ¶-[0010] and Peng’293; page 6, lines 13-18), “The term "high -temperature chemithermomechanical pulp (HT-CTMP) " as used herein refers to pulp that has been pre-heated to a temperature of at least 140 °C, preferably of at least. 150 °C, or even more preferably of at least 160 °C prior to the refining step.”
3 This is also evidenced by reference D14 of the EPO opposition, cited in IDS filed on November 07, 2025, titled “This report summarizes a series of tests made by SCA R&D to answer questions related to patent EP4105381.”
4 Also evidenced by DECLARATION by Juha Kovanen, cited in the IDS filed on November 07, 2025.