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 .
Specification
The disclosure is objected to because of the following informalities: the specification refers to a pulp of the “Pocacea family,” but this is a typo it should be “Poaceae family.”
Appropriate correction is required.
Claim Objections
Claims 98-99 are objected to because of the following informalities: the claims recite a pulp of the “Pocacea family,” but this is a typo it should be “Poaceae family.”
Appropriate correction is required.
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 69-70 are 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.
In claim 69 the word “and/or” renders the claim vague and indefinite, because when the claim is interpreted as “and” the claim recites that the product can have two values at the same time and thus the metes and bounds of patent protection desired cannot be ascertained. When it is used as “or” then the claim defines what would be interpreted as a “preferred” of “for example”
it has been held that a broad range or limitation followed by linking terms (e.g., preferably, maybe, for instance, especially) and a narrow range or limitation within the broad range or limitation is considered indefinite since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. It can also be interpreted as “for example” and it has been held that the phrase renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 70 is vague and indefinite as what would be the difference between a tissue paper material and a tissue paper product.
Claim Rejections - 35 USC § 102
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 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.
Claims 68-77 and 81-95 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shannon et al. (hereinafter Shannon), United State Patent No. 10,519,601 B2 as evidenced by Sanchez et al., (hereinafter Sanchez’1) in both “Use of Hesperaloe funifera for the production of paper and extraction of lignin for synthesis and fuel gases,” and Sanchez et al, (hereinafter Sanchez’2) in “HESPERALOE FUNIFERA AS A RAW MATERIAL FOR INTEGRAL UTILIZATION OF ITS COMPONENTS.” Both cited in IDS filed on January 23, 2026.
With regard to claims 68-74 and 81-89, Shannon teaches a tissue paper, which could be single or multi-ply; see column 2, lines and column 8, lines 4-11, hygiene tissues or sanitary tissues having basis weight in the claimed range; see column 2, lines 14-21, and including non-wood fibers, e.g., Hesperaloe fibers, in amounts falling with the claimed range; see abstract, column 1, lines 30-63 and column 5, lines 14-19. Shannon teaches also that the tissue has absorbency of at least 7 g/g; see abstract and column lines 5-14 and having geometric Mean Tensile (GMT) also falling within the claimed range, since Shannon teaches in column 3, lines 47-53 GMT of 1400 to about 2500 g/3” which converts to about 179 to about 320 N/m. Although Shannon is silent with regard to the amount of hemicellulose, it is well-known that the amount of hemicellulose in Hesperaloe, is around 35% in Sanchez’1 and around 22% in Sanchez’2 (calculated as the holocellulose-alpha-cellulose). Note that although different processes/standards of measuring hemicellulose can give different results, the values vary by less than 7%1, which still falls within the claimed range.
Regarding to claims 75-77, Shannon teaches that the non-wood fibers contains no more than 15% of lignin; see column 3, lines 16-31 and column 5, lines 51-58. Note that the claims are written in the alternative and since the lignin is in the same range, then the reference reads on the claims.
With regard to claims 90-95, Shannon discloses the use of High Yield Hesperaloe fibers, see column 5, lines 14-58, which are inherently never-dried fibers, i.e., never been previously dried or used as Dry-Market pulp.
It seems that the reference teaches all the limitations of the claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
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:
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.
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 68-97 are rejected under 35 U.S.C. 102(a (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rouse et al., (hereinafter Rouse’465), United State Patent No. 10,428,465 .
With regard to claims 68-74 and 81-89, Rouse’465 discloses tissue products comprising agave fibers and methods of producing the same. Rouse’465 teaches fiber derived from: non-wood plants of the genus Agave, of the family Asparagaceae, such as, Agave tequilana, Agave sisalana and Agave fourcroydes, which may be used in the manufacture of tissue products without sacrificing important tissue properties such as strength, durability, bulk and stiffness. The tissues can be single or multi-ply; see column 2, lines 54-55 and column 7, lines 19-33. Rouse’465 teaches tissues comprising agave fiber, having a geometric mean tensile (GMT) from about 600 g/3” to about 1,200 g/3” (converts to about 77 N/m to 155 N/m), sheet bulk greater than about 12.0 cc/q, and a stiffness index of less than about; see column. 1, line 47 to column 2, line 5. In an embodiment, it provides a tissue product comprising at least about 16 wt.% of the tissue product, high yield agave fiber, and comprising less than about 35 wt.% of the tissue product, long average fiber length wood pulp fibers, such as NSWK and SSW, the tissue product having a sheet bulk greater than about 12.0 cc/g, a Stiffness Index less than about 10.0 and a CD Durability greater than about 13.0; see column, 2, lines 11-18. The single-ply through-air dried tissue product has a basis weight from about 35 to about 45 g/m2; see column 2, lines 25-27, but also teaches that the formation of facial tissues; see column 2, lines 51-55, which are known to have basis weight of less than 30 gsm2. Rouse’465teaches the making of the same product as claimed in the specification and previous claims 96-97, now cancelled; see column 2, lines 51-55. Although Rouse’465 does not explicitly teach the absorbency, this property must inherently be within the claimed range, since the products are made using the same raw materials at the same or overlapping amounts and using the same process as disclosed. The hemicellulose content of Asparagaceae, such as, Agave tequilana, Agave sisalana and Agave fourcroydes. Hemicellulose content in Asparagaceae species, particularly within the Agave genus (A. tequilana, A. sisalana, A. fourcroydes), generally ranges from 5% to 25% of the dry biomass, depending on whether the tissue is bagasse (waste fiber) or leaf fiber. The hemicellulose in these species is primarily composed of xylan.
Hemicellulose Content by Species and Tissue
Agave tequilana (Blue Agave):
Bagasse: Contains approximately 5% to 10% hemicellulose. Another source indicates the bagasse contains 11.54 ± 0.31%.
Leaf/Fiber: Contains 15–22% non-cellulosic polysaccharides (including hemicellulose).
Agave sisalana (Sisal):
Fiber: Contains 10% to 17% hemicellulose. Some studies report a broader range of 10–27%.
Agave fourcroydes (Henequen):
Fiber: Contains approximately 5% to 24% hemicellulose.
Spines: Terminal spines contain significantly higher hemicellulose (approx. 45%) compared to the fibers (24%).
Regarding to claims 75-77, Rouse’465 teaches that the high yield Agave Fibers have lignin content between 10 to 15 weight%, that falls within the claimed range; see column 15, lines 52-56.
With regard to claims 78-80, Rouse’465 teaches that the high yield agave fiber used has a fiber length of 1.1 mm; see Table 1 on column 6.
Regarding to claims 90-95, Rouse’465 discloses the use of High Yield Hesperaloe fibers, see column 5, lines 14-58, which are inherently never-dried fibers, i.e., never been previously used or used as a dry-market pulp.
It seems that the reference teaches all the limitations of the claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Claims 68-95 and 98-99 are rejected under 35 U.S.C. 102(a (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rouse et al., (hereinafter Rouse’109), WO 2018/156109 A1.
With regard to claims 68-74 and 81-89, Rouse’109 discloses tissue products comprising agave fibers and methods of producing the same. Rouse teaches fiber derived from: non-wood plants including Hesperaloe funifera, Hesperaloe nocturna, Hesperaloe parviflova, Hesperaloe chiangii, Agave tequilana, Agave sisalana, Agave fourcroydes, Phyllostachys edulis, Bambusa vulgaris, Phyllostachys nigra; see page 3, lines 17-21, along with wood fibers. Rouse’109 teaches that the non-wood fibers are added in amounts between 5 to 50% by weight; see page 2, line 11 through page 3, line 9 and page 8, lines 18-25, and teaches that the tissues can be single or multi-ply; see page 6, lines 9-13 and page 11, lines 3-12. Although Rouse’109 teaches basis weight greater than 30 gsm, but Rouse’109 also teaches that the tissues can be also to facial tissues; see page 5, lines 25-28 and it is well-known that such tissues have basis weight of less than 30 gsm and teaches tissues comprising non-wood fibers, having a geometric mean tensile (GMT) from about 500 g/3” to about 1,200 g/3” (converts to about 64 N/m to 155 N/m); see paragraph bridging pages 6 and 7. Rouse’109 teaches the making of the same product as claimed disclosed; see page 5, lines 25-28. Although Rouse does not explicitly teach the absorbency, this property must inherently be within the claimed range, since the products are made using the same raw materials at the same or overlapping amounts and using the same process as disclosed. As to the amount of Hemicellulose, Rouse’109 teaches the use of Hesperaloe funifera which discussed above have a hemicellulose content falling within the claimed range; see above. Rouse’109 teaches the use Bambusa vulgaris which is of the same family as claimed on new claims 98-99 and thus the hemicellulose content must be inherently in the claimed range.
Regarding to claims 75-77, Rouse’109 teaches that the high yield Agave Fibers, which as shown above have lignin content between 10 to 15 weight%, that falls within the claimed range; see column 15, lines 52-56 of Rouse’465 as evidence.
With regard to claims 78-80, Rouse’109 teaches that the non-wood fibers used has a fiber length between 1.0 to 3 mm; see paragraph bridging pages 8 and 9 and Example 1 on page 17, teaches the use of Bamboo fibers having length of 1.3 mm, which falls within the claimed range.
Regarding to claims 90-95, Rouse’109 discloses the use of never-dried non-wood, since Rouse’109 teaches the use of Bamboo that has been Kraft pulped, no secondary or re-pulped non-wood fibers. The same is shown for the wood pulp/fibers; see examples, starting on page 17.
With regard to claims 98-99, Rouse teaches the use of Bambusa Vulgaris which is of the Poaceae family.
It seems that the reference teaches all the limitations of the claims or at the very least the minor modification(s) to obtain the claimed invention would have been obvious to one of ordinary skill in the art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 68-95 and 98-99 have been considered but are moot in view of the new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Tissue Paper Material and Tissue Paper Product including Non-Wood Fibres.”
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 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
1 Based on studies comparing chemical analysis methods for lignocellulosic biomass, the differences between standard procedures (such as TAPPI and similar methods) for determining major structural components, including hemicellulose, typically fall within a range of -2.56% to 6.78%.
Comparable Error Ranges: Comparisons between TAPPI and other standard methods (like NREL) show discrepancies, such as a 4 wt. % difference in cellulose determination, and variations in hemicellulose measurement (often tracked by alditol acetates or xylose/mannan content) are generally within similar margins.
Measurement Basis: While TAPPI T 249 (Carbohydrate Composition) is often used for hemicellulose, variations can arise depending on whether the method utilizes two-step sulfuric acid hydrolysis or other techniques, leading to potential differences of up to ~7% when compared against alternative validated procedures.
Significance: While TAPPI and ISO often correlate, they are not always strictly equivalent, and differences can arise from sample preparation or apparatus.
2 Facial tissue typically has a basis weight between 14 and 20 grams per square meter (gsm). This low basis weight contributes to the softness and absorbency of facial tissues. The specific weight can vary slightly depending on the manufacturer and product specifications, but this range is common for facial tissue and paper handkerchiefs according to Wikipedia