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 .
Claim Objections
Claims 1-14 and 29-33 are objected to because of the following informalities: claim 1 line 8 reciting “Wherein” appears to have a typographical error and should be “wherein”. Appropriate correction is required.
Claims 2-14 and 29-33 are objected to due to their dependency on independent claim 1.
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 1-14 and 29-33 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.
Claim 1 line 6 reciting “cold water soluble” is indefinite because the metes and bounds of “cold” is not defined clearly. How cold is cold?
Examiner will treat “cold” as room temperature (e.g., 23 oC), which appears to be consistent with specification at [0050] disclosing in an aspect the aqueous coating composition for coating fiber-based products may be prepared by blending dry chemically functionalized, cold water soluble, anionic starch into an aqueous talc dispersion and stirring to dissolve the starch… in an aspect, the starch is dissolved at room temperature (e.g., 23 oC) without heating.
Claims 2-14 and 29-33 are rejected due to their dependency on independent claim 1.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-2, 4-14 and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Glittenberg (US 2007/0113997 A1) (“Glittenberg” hereinafter) in view of Senti-Wenk et al. (US 2015/0122440 A1) (“Senti-Wenk” hereinafter).
Regarding claim 1, Glittenberg teaching an aqueous coating composition for coating fiber-based substrates (see Glittenberg at [0008] and [0038] teaching a paper coating composition… the composition… can be provided in… aqueous solution). The paper coating composition is taken to meet the claimed “aqueous coating composition” based on the structure as outlined below, and paper is taken to meet the claimed “fiber-based substrates”, comprises:
acrylic latex in an amount of from about 48 wt% to about 80 wt% based on dry solids content of the composition (see Glittenberg at [0033] and [0035] teaching the coating compositions… further comprise… one or more binders… examples of binders suitable for use in the composition… include… synthetic binders, especially latex binders… such as… acrylic polymer latexes… the binder will be selected such that it is different from any of the one or more thickeners being used and will be added to the coating composition in an amount of 0.5-50%... by dry weight) (see MPEP 2144.05(I));
talc in an amount of from about 20wt% to about 50wt% based on dry solids content of the composition (see Glittenberg at [0033]-[0034] teaching the coating compositions… further comprise… one or more pigments can be selected amongst those available in the art… examples of pigments, both natural and synthetic include… talc… comprise pigment in an amount of approximately 30 to 99%... by weight of the dry solids) (see MPEP 2144.05(I)); and
cold water soluble starch in a dry solids content of from about 0.1wt% to about 10wt% (see 112 rejection, see Glittenberg at [0027] teaching a paper coating composition comprising one or more thickeners… cold water will be understood to be water having a temperature of less than 50oC, see Glittenberg at [0031] teaching one or more other thickeners may also be used… preferably, they will be selected amongst cold water soluble and/or cold water swellable compounds, see Glittenberg at [0032] teaching the one or more… starch… should account for… 0.005-2%... of the dry weight of the overall coating composition) (see MPEP 2144.05(I));
wherein the aqueous composition has a total dry solids content of from about 30 to about 70 wt% based on the weight of the total composition (see Glittenberg at [0009] teaching the composition… can be provided in… wet form… in its wet form, it should comprise 30-75% by weight dry substance) (see MPEP 2144.05(I)).
Glittenberg does not explicitly teach a chemically functionalized anionic starch, but as mentioned, Glittenberg teaches one or more other thickeners may also be used… preferably, they will be selected amongst cold water soluble and/or cold water swellable compounds (see Glittenberg at [0031]). Glittenberg further teaches coating compositions… the ingredients include in such compositions can be divided into three main categories: pigments, binders and thickeners (see Glittenberg at [0002]).
Like Glittenberg, Senti-Wenk teaches aqueous paper coating compositions comprising talc and starch (see Senti-Wenk at [0001] the use of the self-binding pigment particle suspension in paper applications, such as… in paper coating, see Senti-Wenk at [0009]-[0012] teaching a process for preparing self-binding pigment particles, comprising the following steps of… a) providing an aqueous pigment material suspension… b) providing at least one… anionic… starch… c) mixing the starch of step b) with the aqueous pigment material suspension of step a), wherein the starch is added to the aqueous pigment material suspension in an amount from 0.5 to 20 wt.-%, based on the total weight of the dry pigment in the suspension, see Senti-Wenk at [0060] teaching the pigment material particles… are suspended in water and thus form an aqueous suspension or slurry of pigment material, see Senti-Wenk at [0016] teaching the term aqueous “pigment material” suspension… encompasses natural and/or synthetic materials, like… talc, see Senti-Wenk at [0062] teaching the aqueous pigment material suspension provided in step a) preferably has a temperature of < 40oC, the term “starch solution”… refers to a system comprising solvent and starch, wherein the particles of the at least one… anionic starch are dissolved in the solvent… the term “dissolved”… refers to systems in which no discrete in which no discrete solid particles are observed in the solvent, see Glittenberg at [00075]-[0076] teaching the starch is chemically modified with anionic groups… methods for preparing such anionic starches are known to the skilled person, see Glittenberg at [0089] teaching if the at least one… anionic starch is provided in the form of a starch solution, i.e., the at least one… anionic starch is provided in water). Anionic starches is taken to meet the claimed “chemically functionalized anionic starch”.
Senti-Wenk further teaches there is one specific problem which very often has significant impact on the mechanical and optical properties of paper coatings made from such self-binding pigment particles… self-binding pigment particles contain an intimate combination of mineral material and binder, which are typically provided in form of an aqueous suspension… the provision of a self-binding pigment particle suspension, however, often results in paper coatings imparting not well-adjusted mechanical and optical properties to the corresponding end product… more precisely, the mechanical and optical properties are worsened due to the presence of high amounts of free dissolved binder in the coating color and the subsequent paper product coated with such a coating color… consequently, a high amount of free dissolved binder in the self-binding pigment particle suspension provides significantly decreased mechanical and optical properties to the end product… the resulting poor properties are especially detrimental for applications in the field of paper coatings as well as paints and plastics… there is still a need in the art for providing a process which avoids the foregoing disadvantages and especially allows for improving the mechanical and optical properties of a coating resulting from self-binding pigment particles being derived from a suspension of self-binding pigment particles… in other words, it would be desirable to provide a method which leads to self-binding pigment particle suspensions wherein the resulting paper product coated with said suspension has higher mechanical and optical properties compared to prior art methods… accordingly, it is an objective of the present disclosure to provide a process for preparing a self-binding pigment particle suspension wherein the resulting paper coating of said suspension has improved mechanical and optical properties and especially a reduced content of free dissolved binder (see Senti-Wenk at [0006]-[0008]).
As such, one of ordinary skill in the art would appreciate that Senti-Wenk teaches preparing a self-binding pigment particle suspension comprising talc and anionic starch so as to improve the mechanical and optical properties of the coating composition with reduced content of free dissolved binder, and seek those advantages by adding anionic starch in the paper coating compositions as taught by Glittenberg.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add anionic starch as taught by Senti-Wenk in the paper coating compositions as taught by Glittenberg so as to improve the mechanical and optical properties of the coating composition with reduced content of free dissolved binder.
Regarding claims 2 and 29, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches wherein the chemically functionalized, cold water soluble, anionic starch is present in a dry solids content of from about 0.1wt% to about 8wt% (claim 2), and wherein the chemically functionalized, cold water soluble, anionic starch is present in a dry solids content of from about 0.1wt % to about 5wt% (claim 29) (see claim 1 rejection based on Glittenberg in view of Senti-Wenk, see Glittenberg at [0032] teaching the one or more… starch… should account for… 0.005-2%... of the dry weight of the overall coating composition) (see MPEP 2144.05(I)).
Regarding claim 4, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches wherein the talc and the acrylic latex are present in a ratio of talc to acrylic latex of from 1:5 to 1:1 on a weight basis (see Glittenberg at [0035] teaching examples of binders suitable for use in the composition… include… synthetic binders, especially latex binders… such as… acrylic polymer latexes… the binder will be selected such that it is different from any of the one or more thickeners being used and will be added to the coating composition in an amount of 0.5-50%... by dry weight, see Glittenberg at [0033]-[0034] teaching the coating compositions… further comprise… one or more pigments can be selected amongst those available in the art… examples of pigments, both natural and synthetic include… talc… comprise pigment in an amount of approximately 30 to 99%... by weight of the dry solids). If there is 50wt% talc and 50wt% latex binder, then the ratio of talc to acrylic latex is 1:1.
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected amounts from within the range taught by Glittenberg because there is a reasonable expectation of success that the disclosed amounts would be suitable.
Regarding claims 5 and 30, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches wherein the composition has a total dry solids content of from about 40 to about 70 wt% of the total composition (claim 5), and wherein the composition has a total dry solids content of from about 50 to about 70 wt% of the total composition (claim 30) (see Glittenberg at [0009] teaching the composition… can be provided in… wet form… in its wet form, it should comprise 30-75% by weight dry substance) (see MPEP 2144.05(I)).
Regarding claims 6-7 and 31-32, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches wherein the aqueous coating composition has a Brookfield Viscosity of from about 200 to about 500mPas @23oC at 100 rpm (claim 6), wherein the aqueous coating composition has a Brookfield Viscosity of from about 300 to about 1800mPas @23oC at 100 rpm (claim 7), wherein the aqueous coating composition has a Brookfield Viscosity of from about 300 to about 500mPas @23oC at 100 rpm (claim 31), and wherein the aqueous coating composition has a Brookfield Viscosity of from about 350 to about 600mPas @23oC at 100 rpm (claim 32) (see Glittenberg at [0030] teaching Brookfield viscosities (e.g., 400-2000mPas) (see MPEP 2144.05(I)).
Regarding claims 8-10 and 33, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches wherein the composition has a water retention value of from about 50 to about 400 g/m2 (claim 8), wherein the composition exhibits a shelf stability greater than 150 hours at 23°C (claim 9), wherein the composition when coated on a 50 g/m2 natural Kraft paper in a coating weight of 6 g/m2 has a Coating Flexibility such that the Fold Grease Resistance Kit Rating does not drop below 6 (claim 10), and wherein the composition exhibits a shelf stability greater than 500 hours at 23°C (claim 33) (since the paper coating composition as taught by Glittenberg in view of Senti-Wenk and the claimed aqueous coating composition employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., wherein the composition has a water retention value of from about 50 to about 400 g/m2 (claim 8), wherein the composition exhibits a shelf stability greater than 150 hours at 23°C (claim 9), wherein the composition when coated on a 50 g/m2 natural Kraft paper in a coating weight of 6 g/m2 has a Coating Flexibility such that the Fold Grease Resistance Kit Rating does not drop below 6 (claim 10), and wherein the composition exhibits a shelf stability greater than 500 hours at 23°C (claim 33)) would have naturally flowed following the teaching of Glittenberg in view of Senti-Wenk (see MPEP 2112.01).
Regarding claim 11, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg in view of Senti-Wenk further teaches wherein the chemically functionalized, cold water soluble, anionic starch is a starch prepared from a starch by functionalizing a starch selected from the group consisting of maize starch, potato starch, sweet potato starch, wheat starch, rice starch, tapioca starch, sorghum starch (this recitation is being treated as product-by-process limitations because it is not seen to differ structurally from the applied prior art Glittenberg in view of Senti-Wenk (see MPEP 2113.I). In this instance, the structure imparted by the recitations is chemically functionalized, cold water soluble, anionic starch, see claim 1 rejection based on Glittenberg in view of Senti-Wenk).
Alternatively, Senti-Wenk teaches the at least one… anionic starch… can advantageously be chosen from among the… chemically modified starches… originated from starches selected from the group comprising… potato starch (see Senti-Wenk at [0072]).
Regarding claim 12, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg in view of Senti-Wenk teach wherein the chemically functionalized, cold water soluble, anionic starch is selected from… carboxymethyl groups (see Senti-Wenk at [0075] teaching the starch is chemically modified with anionic groups selected from… carboxymethyl groups).
Regarding claim 13, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, but Glittenberg does not explicitly teach wherein the talc has an average particle size of from about 1 to 25 µm.
However, Senti-Wenk teaches pigment material selected from the group comprising… talc (see Senti-Wenk at [0029])… the pigment material particles in the suspension have a weight median particle diameter d50 value of from 0.05 µm to 100 µm (see Senti-Wenk at [0057]), which is taken to meet the claimed “wherein the talc has an average particle size of from about 1 to 25 µm” (see MPEP 2144.05(I)).
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected weight median particle diameter d50 value of from 0.05 µm to 100 µm of talc as taught by Senti-Wenk because there is a reasonable expectation of success that the disclosed diameter range in the paper coating composition as taught by Glittenberg would be suitable.
Regarding claim 14, Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg teaches wherein the acrylic latex is selected from… an anionic 100% acrylic copolymer latex (see Glittenberg at [0033] teaching the coating compositions… further comprise… one or more binders… binders… can be selected amongst those available in the art and in accordance with the type of coating composition to be obtained, see Glittenberg at [0035] teaching examples of binders suitable… include… synthetic binders, especially latex binders… such as… acrylic polymer latexes. The recitation in claim 14 is being treated as being taught by Glittenberg because there is no evidence indicating that the claimed “acrylic latex is selected from… an anionic 100% acrylic copolymer latex” is critical, absent new and unexpected results. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Glittenberg to choose an appropriate acrylic latex binder because binders can be selected amongst those available in the art and in accordance with the type of coating composition to be obtained).
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: there are no prior art references of record that teach or fairly suggest to one or ordinary skill in the art all the cumulative limitations of the respective independent claim 1 and dependent claim 3.
Specifically, it is noted that Glittenberg in view of Senti-Wenk teach the limitations as applied to claim 1 above, and Glittenberg further teaches that talc in an amount of from about 20wt% to about 40wt% based on dry solids content of the composition (see Glittenberg at [0033]-[0034] teaching the coating compositions… further comprise… one or more pigments can be selected amongst those available in the art… examples of pigments, both natural and synthetic include… talc… comprise pigment in an amount of approximately 30 to 99%... by weight of the dry solids) (see MPEP 2144.05(I)).
Furthermore, Glittenberg teaches examples of binders suitable for use in the composition… include… synthetic binders, especially latex binders… such as… acrylic polymer latexes… the binder will be selected such that it is different from any of the one or more thickeners being used and will be added to the coating composition in an amount of 0.5-50%... by dry weight (see Glittenberg at [0035]). But Glittenberg in view of Senti-Wenk do not explicitly teach that the acrylic latex in an amount of from about 60wt% to about 75wt% based on dry solids content of the composition. And, there are no prior art references of record that provide adequate teachings or apparent reason that would lead the person of ordinary skill to modify Glittenberg in view of Senti-Wenk as claimed.
As such, the prior art references of record fail to teach or render obvious all the cumulative limitations of the respective independent claim 1 and dependent claim 3.
Therefore, all the cumulative limitations of the respective independent claim 1 and dependent claim 3 are considered allowable.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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