Detailed Office Action
The communication dated 1/12/2026 has been entered and fully considered.
Claims 53 and 55 have been amended. Claims 61-63 have been canceled. Claims 53-60 and 64-83 has 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
As discussed in the 3/9/2026 the Examiner agreed that his written combination of reference did not fully teach at least 15% hemicellulose in the non-wood cellulose pulp (claims 62 and 63). On this basis he would have to reopen prosecution. The Examiner stated that he misread the claim as less than 15% hemicellulose which cotton would meet. The Examiner pointed out that other non-woods listed in the reference could meet the claim. However, this would be a different thrust of rejection requiring reopening.
Applicant argues claims 70-72 arguing that the wood pulp and non-wood pulp constitute 100% of the dry weight and that ZIEGEN discloses 0.25-5% of cationic agent.
As explained in the rejection of the claim the amount of cationic agent is based on softwood present and therefore would be about 0.05-4.5%. The strength of the product tissue is affected by the pulps used, various pulp concentrations, how they were produced and degrees of refining. Two products could be expected to have similar properties depending on the types, concentration of pulps, and degrees of refining.
Applicant further argues that it wouldn’t be obvious to remove the cationic agent as it would change the principle of operation.
The Examiner disagrees. A cationic strengthening agent has the intended purpose of increasing strength. The person of ordinary skill in the art would expect that by removing the agent the strength would decrease. The person of ordinary skill in the art would look to have 0 cationic strengthening agent when higher strength is not needed to save money.
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 53-60 and 64-83 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 53-60 and 64-83 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 § 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 53-60 and 67-83 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, and 82, 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 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 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 claim 59, ZIEGEN discloses the product has good absorbency [0002] and that additives can be added to increase absorbency [0073, 0097]. Further as ZIEGEN teaches substantially the same product substantially the same properties should be present. Alternatively, at the time of the invention it would be obvious to further increase absorbency as needed by adding additives. The person of ordinary skill in the art would be motivated to do so as absorbency is an important property of tissue product.
As for claims 67 and 68, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1].
As for claims 70-71, applicant claims a tissue sheet in which 100% of the dry mass is wood or non-wood fibers. This would mean that the applicants tissue paper has no additives (strengthening agents (dry/wet), retention agents, fillers) or even non-process elements present. The applicant’s product would not even be able to have biocides present during manufacturing as some would be incorporated into the sheet. ZIEGEN discloses a product comprising 20 to 90% softwood mixture in which the softwood mixture comprises about 0.25% to 5% by weight cationic strengthening polymer. This means the strengthening polymer is present by about 0.05-4.5% by weight which makes a prima facie case of obviousness (given 40% softwood mixture and remainder non-wood there would be 0.1-2% strength agent present).
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties.
Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
In the alternative, it would be obvious to the person of ordinary skill in the art to leave out the cationic agent. The person of ordinary skill in the art would expect a decrease in strength but also a decrease in cost. It can be obvious to remove an element when the effect of removing the element is expected and the function is not retained [MPEP 2144.04 (II)(B)].
As for claims 73-74, ZIEGEN states in claim 1 that combinations of non-woods and hardwoods can be used [claim 1 “combinations thereof”] in addition to the softwoods. The tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)]. At a 50:50 hardwood/non-wood split there would be 5-40% non-wood which overlaps the claimed range of independent claim 55. This would also leave a 5-40% hardwood. At 80% softwood and 10% hardwood/10% non-wood the ratio would be 8:1:1 (8:1) which falls within the claimed range. At 60% softwood 20% hardwood/20%non-wood the ratio would be 6:2:2 (3:1) which also falls within the claimed range. At 50% softwood there would be 25% hardwood and 25% non-wood the ratio would be 5:2.5:2.5 (2:1) which falls outside the claimed range. Therefore the prior art teaches overlapping ranges.
Differences in concentration are prima facie obvious absent evidenced of criticality.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
As for claims 76, 77, 79, and 80, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1]. Whether a fiber has been never dried is a product by process limitation. The act of drying pulp for making market pulp prior to papermaking is known to decrease strength as compared to a pulp that has never been dried (because of horrification). However, the claim is silent to the pulps strength before drying or any after treatment after repulping. Therefore a dried pulp could have the same strength as a never dried pulp.
Alternatively, pulp for papermaking can either be integrated or separated (which requires making dry market pulp). At the time of the invention it would have been obvious to the person of ordinary skill in the art to use integrated pulping and papermaking. This would allow for the elimination of a market pulp machine and only require a tissue making machine. The person of ordinary skill in the art also recognizes the benefits of never dried pulp.
Multi-ply claims
As for claims 55-58 and 83, 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 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 60, ZIEGEN discloses the product has good absorbency [0002] and that additives can be added to increase absorbency [0073, 0097]. Further as ZIEGEN teaches substantially the same product substantially the same properties should be present. Alternatively, at the time of the invention it would be obvious to further increase absorbency as needed by adding additives. The person of ordinary skill in the art would be motivated to do so as absorbency is an important property of tissue product.
As for claim 69, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1].
As for claim 72, applicant claims a tissue sheet in which 100% of the dry mass is wood or non-wood fibers. This would mean that the applicants tissue paper has no additives (strengthening agents (dry/wet), retention agents, fillers) or even non-process elements present. The applicant’s product would not even be able to have biocides present during manufacturing as some would be incorporated into the sheet. ZIEGEN discloses a product comprising 20 to 90% softwood mixture in which the softwood mixture comprises about 0.25% to 5% by weight cationic strengthening polymer. This means the strengthening polymer is present by about 0.05-4.5% by weight which makes a prima facie case of obviousness (given 40% softwood mixture and remainder non-wood there would be 0.1-2% strength agent present).
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties.
Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
In the alternative, it would be obvious to the person of ordinary skill in the art to leave out the cationic agent. The person of ordinary skill in the art would expect a decrease in strength but also a decrease in cost. It can be obvious to remove an element when the effect of removing the element is expected and the function is not retained [MPEP 2144.04 (II)(B)].
As for claim 75, ZIEGEN states in claim 1 that combinations of non-woods and hardwoods can be used [claim 1 “combinations thereof”] in addition to the softwoods. The tissue comprises 20-90% softwood fiber mixture [claim 1] (a)]. This leaves 10-80% of non-wood fibers [claim 1 (b)]. At a 50:50 hardwood/non-wood split there would be 5-40% non-wood which overlaps the claimed range of independent claim 55. This would also leave a 5-40% hardwood. At 80% softwood and 10% hardwood/10% non-wood the ratio would be 8:1:1 (8:1) which falls within the claimed range. At 60% softwood 20% hardwood/20%non-wood the ratio would be 6:2:2 (3:1) which also falls within the claimed range. At 50% softwood there would be 25% hardwood and 25% non-wood the ratio would be 5:2.5:2.5 (2:1) which falls outside the claimed range. Therefore the prior art teaches overlapping ranges.
Differences in concentration are prima facie obvious absent evidenced of criticality.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
As for claims 78 and 81, ZIEGEN discloses both hardwood and softwood fibers [0025, claim 1]. Whether a fiber has been never dried is a product by process limitation. The act of drying pulp for making market pulp prior to papermaking is known to decrease strength as compared to a pulp that has never been dried (because of horrification). However, the claim is silent to the pulps strength before drying or any after treatment after repulping. Therefore a dried pulp could have the same strength as a never dried pulp.
Alternatively, pulp for papermaking can either be integrated or separated (which requires making dry market pulp). At the time of the invention it would have been obvious to the person of ordinary skill in the art to use integrated pulping and papermaking. This would allow for the elimination of a market pulp machine and only require a tissue making machine. The person of ordinary skill in the art also recognizes the benefits of never dried pulp.
Claims 64-66 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2020/0332471 ZIEGENBEIN, hereinafter ZIEGEN 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
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.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
Prosecution Insights