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 .
Election/Restrictions
Claims 16-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/9/2026.
Applicant's election with traverse of claims 16-18 in the reply filed on 2/9/2026 is acknowledged. The traversal is on the ground(s) that search and examination of one invention would necessarily encompass the search and examination of the other invention, and the search can be made without serious burden on the Examiner. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classification, the inventions require a different field of search, and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1-15, 19-20 are objected to because of the following informalities: the Formulas I, II next to the compound formula in claims 1, 5; Formulas IIa, IIb, IIc next to the compound formulas in claim 7, Formulas IIa, IIb, IIc next to the compound formula in claim 19 should all be enclosed within parentheses.
Appropriate correction is required.
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 1-9, 11 are rejected under 35 U.S.C. 102 as being unpatentable over Champ (US20100000693, herein Champ).
Regarding Claims 1-9, 11, Champ teaches aqueous paper stock [0018] for papermaking [0014], reads on the dispersion for use in a process for making a treated article, comprising: water [0015], reads on the solvent; ethylene copolymer waxes [0127], reads on sizing agent, wherein, the Ethylene copolymer wax acid numbers generally range from 40 mg KOH/g to over 185 mg KOH/g, which reads on sizing agent and lies in the claimed range; Champ further teaches retention aid; polymers comprising vinylamine units [0022], upon polymerization and forms polyvinylamine, with charge density of 15 meq/g [P413; Right Column, Para. 1], as evidenced by [Lee, New Retention and Drainage Polymer For Carton Board and Newsprint, 2006 Pan Pacific Conference], structure see below, meet formulas I, II and IIa, wherein, the a=c=d=e=0 mol%; b=100 mol%, R0 is H, therefore, b+e=100 mol%, b1=100 mol%, hence, b1+b2+e=100 mol%
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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.
Claim 14 rejected under 35 U.S.C. 103 as being unpatentable over Champ (US20100000693, herein Champ).
Regarding Claim 14, Champ teaches the dispersion as set forth in claim 1 above, Champ teaches retention aids, 0.01 to 0.25% by weight, based on dry paper stock [0041], overlaps the claimed range. Champ further teaches amphiphilic copolymers are used, with acid numbers of the amphiphilic copolymers 150 to 300 mg KOH/g [0080-81] which reads on sizing agent, in the range of 0.05 to 20 % by weight [0081], overlaps the claimed range. At the time of filing or before the effective filing date of the claimed invention, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize and utilize the retention aids, 0.01 to 0.25% by weight, based on dry paper stock [0041] and the amphiphilic copolymers are used, with acid numbers of the amphiphilic copolymers 150 to 300 mg KOH/g [0080-81], in the range of 0.05 to 20 % by weight [0081], and apply into the dispersion formation. Doing so would further improve the barrier properties of paper [0090], and the retention aid can lead to the paper stock is particularly advantageously affected with turbulent flow of the aqueous formulations of the process chemicals. As a result, the distribution of these products in the paper stock which is as uniform as possible is achieved [0014], as taught by Champ.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claims 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Champ (US20100000693, herein Champ).
Regarding Claim 19, Champ teaches aqueous paper stock [0018] for papermaking [0014], reads on the dispersion for use in a process for making a treated article, comprising: water [0015], reads on the solvent; ethylene copolymer waxes [0127], wherein, the Ethylene copolymer wax acid numbers generally range from 40 mg KOH/g to over 185 mg KOH/g, which is reads on sizing agent and lies in the claimed range; Champ further teaches retention aid; polymers comprising vinylamine units [0022], upon polymerization and forms polyvinylamine, with charge density of 15 meq/g [P413; Right Column, Para. 1], as evidenced by [Lee, New Retention and Drainage Polymer For Carton Board and Newsprint, 2006 Pan Pacific Conference], structure see below, meet formula IIa, wherein, b1=100 mol%, b2=e=0 mol%, hence, b1+b2+e=100 mol%.
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Champ teaches retention aids, 0.01 to 0.25% by weight, based on dry paper stock [0041], overlaps the claimed range. Champ further teaches amphiphilic copolymers are used, with acid numbers of the amphiphilic copolymers 150 to 300 mg KOH/g [0080-81] which reads on sizing agent, in the range of 0.05 to 20 % by weight [0081], overlaps the claimed range. At the time of filing or before the effective filing date of the claimed invention, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize and utilize the retention aids, 0.01 to 0.25% by weight, based on dry paper stock [0041] and the amphiphilic copolymers are used, with acid numbers of the amphiphilic copolymers 150 to 300 mg KOH/g [0080-81], in the range of 0.05 to 20 % by weight [0081], and apply into the dispersion formation. Doing so would further improve the barrier properties of paper [0090], additionally with the use of amphiphilic copolymers alone as dispersants, aqueous size dispersions which are formaldehyde-free and have a long shelf life are obtained [0081]; moreover, the retention aid can lead to the paper stock is particularly advantageously affected with turbulent flow of the aqueous formulations of the process chemicals. As a result, the distribution of these products in the paper stock which is as uniform as possible is achieved [0014], as taught by Champ.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding Claim 20, Champ teaches an aqueous solution of a retention aid and an aqueous dispersion of at least one filler are metered separately from one another or as a mixture into the paper stock [0018] with binder in combination with retention aid [0089], wherein, the binder is ethylene copolymer waxes [0123], which collectively reads on the dispersion combining the solvent, the sizing agent, and the retention aid.
Allowable Subject Matter
Claims 10, 12, 13 ,15 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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