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 .
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 54 and 69 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 54 recites the broad recitation greater than 7 g/g, and the claim also recites greater than 8g/g which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of continued examination, optional limitations will not be taken into consideration.
Regarding claim 69, the claim does not have any active steps being claimed. The claim merely states that the non-wood pulp fibers may be derived from wheat straw. There is no requirement that they are. As this is not further limiting it is considered to be only containing an optional limitation and will be met by the discloser of claim 68 or claim 50.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 50-55 and 57-69 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rouse et al, USP 10,428,465.
Regarding claim 50, Rouse teaches a tissue product (which includes “bath tissues, facial tissues, paper towels, industrial wipers, foodservice wipers, napkins, medical pads, and other similar products. Tissue products may comprise one, two, three or more plies” column 2 lines 51-55), wherein the tissue paper product forming panels having a length, and a width perpendicular to said length (inferred from descriptions and discussion as napkins), said panels being piled on top of each other to form a stack height (it is noted that this limitation is in the preamble and is focused on the actions of the product after it is made and not a property of the product itself, in any case stacking napkins is an implicit teaching of forming individual towels or sheets of napkins and paper towels as understood in the art), said tissue paper product comprising at least one non-wood tissue ply (column 1 lines 47-62), the non-wood tissue ply comprising non-wood pulp fibers being present in an amount of at least 20% (at least 35 or at least 50% - column 1 lines 47-62) and the stack having a density of at least 0.15 g/cm3.
Rouse does not directly teach the density of the tissue product being made but instead provides the Basis weight (in units of gsm) and Sheet bulk (cc/g). It is understood that the density of the tissue will be the grammage divided by the caliper of the tissue.
Rouse teaches that “the term “Caliper” is the representative thickness of a single sheet (caliper of tissue products comprising two or more plies is the thickness of a single sheet of tissue product comprising all plies) measured in accordance with TAPPI test method T402 using an EMVECO 200-A Microgage automated micrometer (EMVECO, Inc., Newberg, Oreg.)” and that “As used herein, the term “Sheet Bulk” refers to the quotient of the caliper (μm) divided by the bone dry basis weight (gsm).” (see Column 4 lines 1-18).
If the “Sheet Bulk” is caliper in microns divided by basis weight in gsm, then we can calculate the caliper with basic algebra. This will be presented in microns which we divide by 1000 to turn to mm. This value will be perfect for calculating the density to keep the units in g/cm3.
According to figure 4 inventive example 1, we have a Basis Weight of 36.9 and a Sheet Bulk of 13.7. This calculated to a caliper of 505.5 microns or 0.505 mm. The density of the basis weight divided by this caliper would be 72.99 g/cm3.
For purposes of the understanding of the density of the paper produced, the average artisan would have understood the density to be around 73 g/cm3 which is within the claimed range of greater than 0.15 g/cm3.
It is the Examiner’s stance that there is sufficient teaching of the other properties to allow of the average artisan to calculate the density of the product as claimed and therefore provides an anticipatory teaching for the claims as currently written.
In the Alternative the Examiner is presented the rejection as a 102/103 due to the fact that one of the properties is not directly taught but needs to be calculated though routine understanding of the art. It would have been obvious to one of ordinary skill in the art at the time of the invention that the taught tissue product reads on the limitations of greater than 0.15 g/cm3 based on the values of the other parameters that can be used to calculate the density of the paper (even if only for an approximation).
Regarding claim 51, Rouse further teaches that through air drying is utilized to create a structure tissue (column 2 line 26)
Regarding claim 52, Rouse remains as applied in claim 50 above and also teaches that the tissue can be single ply that is at least 10% agave fiber (column 2 lines 25-31).
Regarding claim 53, Rouse further teaches that the tissue is multi ply (column 6 line 37) wherein the non-wood tissue ply contains at least 205 of non-wood fibers (at least 25% - column 6 line 44 and preferably 10-40% agave fiber – column 6 line 47).
Regarding claim 54, Rouse further teaches that geometric mean tensile (GMT) is from about 600 g/3" to about 1,200 g/3" (converts to about 77 N/m to 155 N/m) (see tables and claims).
Regarding claim 55, Rouse remains as applied in claim 50 above and further teaches that the thickness of the example is 0.505 mm as calculated in the rejection of claim 50.
Regarding claim 57, Rouse further teaches the high yield Agave Fibers have lignin content between 10 to 15 weight%, and has a fiber length of 1.1 mm (Table 1 and column 6).
Regarding claims 58 and 65, Rouse further teaches a preferred range of agave fibers to an upper range of 40% in claim 8 and column 6. This shared endpoint is sufficient to read on claims as an overlapping range. There is also an additional embodiment on column 6 line 45 that teaches that a second layer ply of a multi ply product could be 25-100% agave fibers provided for an additional teaching of greater than the preferred 40 percent.
Regarding claim 59, Rouse further teaches the use of hardwood or softwood pulp (column 6 lines 23-35).
Regarding claim 60, Rouse further teaches that the wood pulp fibers are less than 95-5 (agave fibers are taught in a preferred amount of 10-40% - see column 6)
Regarding claim 61, Rouse further teaches a multi ply tissue where at least one layer includes non-wood fibers (see column 6).
Regarding claims 62-63 62, Rouse does not teach an act of drying the softwood or hardwood fibers prior to use in the fiber pulp, reading on the term “never dried” (See examples.
Regarding claims 64 and 67, Rouse further teaches that the tissues are facial wipes (column 2 line 52).
Regarding claim 66, Rouse further teaches a 10-15% lignin content (see table 1).
Regarding claims 68-69, Rouse further teaches the use of an agave plant which is a succulent. (see abstract and columns 1-2).
Claim(s) 56 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rouse et al, USP 10,428,465 as evidenced by “Chemical composition and characterization of cellulose for Agave as a fast-growing, drought-tolerant biofuels feedstock” by Hongjai et al.
Regarding claim 56, Rouse is silent to the amount of hemicellulose that is included in the Agave but does state that the strands Agave tequilana and Agave sisalana are utilized in the reference.
To show that the hemicellulose levels are inherent to the starting materials, Hongjai is presented to show the natural levels of hemicellulose in each of these types of Agave. A. tequilana is shown in table 1 to have a hemicellulose amount of 19% and A. sisalana has a 32% amount.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 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 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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