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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 10, 2026 has been entered.
Specification
The disclosure is objected to because of the following informalities: the word “Pocacea” throughout the specification should be changed to –Poaceae—which should be the correct spelling for the plant family, also known as Gramineae.
Appropriate correction is required.
Claim Objections
Claims 53, 56 and 85 are objected to because of the following informalities: the claims recite “Pocacea family” of plants, but the correct spelling should be Poaceae, also known as Gramineae. 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 53-59, 62-67 and 72-88 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.
Claims 53, 56 and 85 are vague and indefinite as to how the fiber length is measured, since it is known that there are different process of measuring/expressing fiber length, e.g., arithmetic, length-weight average, weight-weight average and optical fiber-length analyzer are known. Note that the fiber length has been interpreted as an average fiber length, but it is unclear which process were used to measure it.
In claim 73 the word “optional” to define a numerical value or range, renders the claim vague and indefinite, since it is unclear if it has been used as “for example” and thus the metes and bounds of patent protection desired cannot be ascertained. Note that it has been held that the phrase "for example" 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).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 53-59, 62-67, and 72-88 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 68-95 and 98-99 of copending Application No. 18/577,482 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are obvious, as evidenced by the dependent of the co-pending application, i.e., the missing property/properties of the independent claim of the current application is/are recited in the dependent claims, e.g., claims 76 and 77 of the co-pending application recite the lignin content of non-wood fibers, claims 78-79 recite the fiber length and claims 98 and 99 recite the same family of plant, i.e., Poaceae, which evidences that the non-wood pulp coincides with that of the co-pending application. The scope of the co-pending application encompasses the scope of this application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 53-59, 62-67 and 72-88 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and Double Patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not nor suggest a single ply (claims 53 and its dependent claims and 85 and its dependent claims) or multiply (claim 56 and its dependent claims) tissue paper material having non-wood pulp of the Poaceae Family including the amount of wood fiber in the tissue paper, the non-wood fiber length1, amount of hemicellulose (claims 53 and 56) and lignin (claims 53, 56 and 85) of the non-wood pulp/fibers and having the claimed properties, i.e., basis weight and geometric mean tensile (GMT), as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure “Tissue Paper Material and Tissue Paper Product.”
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 Fiber length has been interpreted as weight-length average.