Detailed Office Action
The communication dated 7/20/2026 has been entered and fully considered.
Claims 53 and 55 have been amended. Claims 84-99 are new. Claims 59-63 and 70-83 have been canceled. Claims 53-58, 64-69, and 84-99 have been entered and fully considered.
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 argues that there are unexpected results for the claimed range of an increased GMT at 20 and 30% non-wood as compared to 0% non-wood.
In response the claimed unexpected results must have a nexus with the claims [MPEP716.01(b)]. Each of the alleged unexpected results used wheat straw made by a specific process (phoenix process). The instant claims allow for any type of non-wood made by any process (as long as the hemicellulose is over 15%).
Further, in Table 2 the higher GMT is achieved in [0284] by decreasing the softwood/long fiber refining level [0283]3. Tensile strength is directly related to refining level.
In the table in paragraph [0354] despite adding higher non-wood content of 20-30% the GMT goes down. In the table of paragraph [0362] the GMT goes down for higher non-wood content.
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 53-58, 64-69, and 94-99 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 both claim a single ply tissue and multi-ply tissue with non-woods and a high GMT tensile above 60 N/m [claims 68, 69, 71]. The copending claims further claim non-wood with greater than 15% hemicellulose.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 53-58, 64-69, and 94-99 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 53-59 and 62-88 of copending Application No. 18/577,745 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a single ply/multi-ply tissue with non-woods and a high GMT tensile above 60 N/m. The copending claims further claim non-wood with greater than 15% hemicellulose.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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:
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 94-99 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 U.S. 2020/0332471 ZIEGENBEIN, hereinafter ZIEGEN.
As for claim 94-97, ZIEGEN discloses a paper product which is tissue paper [0016-0018]. The product can be a single-ply [0103-0104]. The tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which encompasses the claimed range making a prima facie case of obviousness.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which fall within the claimed range. It is the Examiner’s position that this narrower range of softwood applies to the disclosed claim 1 within the four corners of the patent sufficient for anticipation. Alternatively, it would be obvious to the person of ordinary skill in the art to apply the known narrower range of softwood for producing tissue paper to the broad softwood range of the claim.
ZIEGEN discloses that the tissue product has a basis weight of 10 to 20 gsm which falls within the claimed range [0123]. ZIEGEN discloses a tensile GMT of 6.5-11 N*m/g [0172, claim 1]. This converts to 65-220 N/m (tensile index times gsm) which falls within the claimed range [GMT index * basis weight].
As for claim 98, ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which overlaps the claimed range.
As for claim 99, the tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which encompasses the claimed range making a prima facie case of obviousness. ZIEGEN also discloses the range of about 25-75% softwood fibers [0032] which leaves about 75-25% non-wood fibers which overlaps the instant claimed range.
Claims 53-58, 67-69, and 84-93 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2020/0332471 ZIEGENBEIN, hereinafter ZIEGEN, in view of Upgradation of Wheat Straw and Rice Straw for Pulp and Papermaking by SUSHMA, hereinafter SUSHMA.
Single ply claims
As for claims 53, 54, 84, and 88, ZIEGEN discloses a paper product which is tissue paper [0016-0018]. The product can be a single-ply [0103-0104]. The tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which encompasses the claimed range making a prima facie case of obviousness.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which fall within the claimed ranges.
ZIEGEN discloses that the tissue product has a basis weight of 10 to 20 gsm which falls within the claimed range [0123]. ZIEGEN discloses a tensile GMT of 6.5-11 N*m/g [0172, claim 1]. This converts to 65-220 N/m (tensile index times gsm) which falls within the claimed range [GMT index * basis weight].
ZIEGEN discloses non-woods including straw [0029]. ZIEGEN does not disclose the hemicellulose of the straw pulp or how the straw is turned into paper pulp. SUSHMA discloses wheat straw pulping with fractionation to make a bleachable grade pulp. The fractionated pulp comprises 32.8% pentosans. Pentosans are a subset of hemicelluloses therefore the hemicelluloses are at least 32.8% which falls within the claimed range. At the time of the invention it would be obvious to use then fractionated wheat straw of Table 7 of SUSHMA for the straw of ZIEGEN. The person of ordinary skill in the art would be motivated to do so by SUSHMA to have lower lignin, higher brightness and lower WRV [Table 7]
As for claims 67 and 68, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1].
As for claims 86 and 90, ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which overlaps the claimed range.
As for claim 92, the tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which encompasses the claimed range making a prima facie case of obviousness. ZIEGEN also discloses the range of about 25-75% softwood fibers [0032] which leaves about 75-25% non-wood fibers which overlaps the instant claimed range.
Multi-ply claims
As for claims 55-58, 85, and 89, ZIEGEN discloses a paper product which is tissue paper [0016-0018]. The product can be a multi-ply [0019] which includes two or more plies. The plies can all be the same composition [0019]. The tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which overlaps the claimed range making a prima facie case of obviousness.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which fall within the claimed rangse.
ZIEGEN discloses that the tissue product web (single ply) has a basis weight of 10 to 20 gsm which falls within the claimed range [0123]. ZIEGEN discloses a tensile GMT of 6.5-11 N*m/g [0172, claim 1]. This converts to 65-220 N/m (tensile index times gsm) which falls within the claimed range [GMT index * basis weight].
ZIEGEN discloses non-woods including straw [0029]. ZIEGEN does not disclose the hemicellulose of the straw pulp or how the straw is turned into paper pulp. SUSHMA discloses wheat straw pulping to make a bleachable grade pulp. The fractionated pulp comprises 32.8% pentosans. Pentosans are a subset of hemicelluloses therefore the hemicelluloses are at least 32.8% which falls within the claimed range. At the time of the invention it would be obvious to use then fractionated wheat straw of Table 7 of SUSHMA for the straw of ZIEGEN. The person of ordinary skill in the art would be motivated to do so by SUSHMA to have lower lignin, higher brightness and lower WRV [Table 7].
As for claim 69, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1].
As for claims 87 and 91, ZIEGEN further gives a narrower amount of softwood fibers of about 45 to 55% [0032] which leaves about 55-45% non-wood fibers which overlaps the claimed range.
As for claim 93, the tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)] which encompasses the claimed range making a prima facie case of obviousness. ZIEGEN also discloses the range of about 25-75% softwood fibers [0032] which leaves about 75-25% non-wood fibers which overlaps the instant claimed range.
Claims 64-66 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2020/0332471 ZIEGENBEIN, hereinafter ZIEGEN, and Upgradation of Wheat Straw and Rice Straw for Pulp and Papermaking by SUSHMA, hereinafter SUSHMA, in view of WO 2018005919A1 ZIEGENBEIN, hereinafter ZIEGEN II.
As for claims 64-66, ZIEGEN discloses non-wood but does not specifically disclose what lengths of fibers should be used. Like ZIEGEN, ZIEGEN II discloses the use of non-woods in these papers these non-woods can be less than 1.2 mm (1200 microns) [0027]. At the time of the invention it would be obvious to the person of ordinary skill in the art to use short fibers of ZIEGEN II in the product of ZIEGEN. The person of ordinary skill in the art would be motivated to do so to achieve the desired product properties [0027]. The Examiner notes that if the other option of ZIEGEN II was chosen (greater than 1.2 mm) there would be an overlap also making a prima facie case of obviousness.
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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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