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 .
Response to Amendment
The Examiner acknowledges the remarks and amendments filed on 6/5/26. Claims 1, 3, 12, 14, and 17 have been amended. Claim 18 has been canceled. Claims 1-17, 19, and 20 are pending.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4, 5, and 13 is/are rejected under 35 U.S.C. 102(a1)(a2) as being anticipated by Baumlin USPA_20200385929_A1.
1. Regarding Claims 1, 4, 5, and 13, Baumlin discloses recyclable paper for packaging (corresponds to instant Claim 13’s limitations) using renewable materials (Title and abstract) that uses a cellulose fibrous substrate having an opacity of less than 25% (paragraphs 0003, 0030) with a Schopper freeness of above 80 (paragraph 0034); thereby meeting the limitations of instant Claims 1, 4, and 5.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Lebsanft WO_2022243445_A1.
2. Regarding Claim 14, Lebsanft discloses a paper (Title) having a cellulose layer (corresponds to claimed fibrous web) (Abstract) comprising cellulose fibers (Example 1) with a sugarcane wax (corresponds to claimed 100% bio-based wax transparency agent of instant Claims 3, 14, and 18) coating on one side thereof (Example 1, Page 34, line 14).
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lebsanft WO_2022243445_A1 in view of Baumlin USPA_20200385929_A1.
1. Regarding Claims 1, 2, 3, 4, 5, 6, and 13, Lebsanft discloses a packaging paper (Title; corresponds to limitation of Claim 13) having a cellulose layer (corresponds to claimed fibrous web) (Abstract) comprising cellulose fibers (Example 1, Page 34, Line 14) with a sugarcane wax (corresponds to claimed 100% bio-based wax transparency agent of instant Claims 3, 14, and 18) coating (corresponds to claimed coating) on one side thereof (Example 1). Lebsanft discloses that said cellulose layer (corresponds to claimed fibrous web) has a basis weight of 20 g/m2 (Page 22, Lines 32-34), as is being claimed in instant Claims 2, 6, 16, and 17. Lebsanft discloses its cellulose layer (corresponds to claimed fibrous web) can have a thickness as low as 35 microns (Page 23, Lines 9-18); thereby teaching the limitation of instant, independent Claim 17. Lebsanft discloses that said coating can comprise a wax, such as a plant wax (corresponds to claimed bio-based wax that constitutes 100 wt% of the transparency agent of instant Claim 3) (Page 7, Lines 13-14), such as candelilla, carnuba, rice bran, soy, sugarcane, and sunflower waxes (Page 15, Lines 8-10). Lebsanft discloses that said coating can also comprise polymers selected from the group consisting of polyester, polysaccharide, polysaccharide ester, polysaccharide ether and polysaccharide ether ester that are produced from renewable sources (Page 7, Lines 9-13); thereby corresponding to polymers that are NOT petroleum-based and thereby meeting the limitation of instant Claim 1.
2. However, Lebsanft does not disclose the claimed opacity and the Schopper-Riegler freeness value.
3. Baumlin discloses recyclable paper for packaging using renewable materials (Title and abstract) that uses a cellulose fibrous substrate (corresponds to cellulose layer) having an opacity of less than 25% (paragraphs 0003, 0030; thereby teaching the limitations of instant Claims 1, 4, 15, 17, and 19) with a Schopper freeness of above 80 (paragraph 0034; thereby meeting the limitations of instant Claims 1, 5, and 20. Baumlin discloses that that the thinner the tracing paper was, the less opaque was the resulting paper and the thicker the coating layer was, the greater was the decrease in opacity (paragraph 0143); thereby giving the relationship between thickness and opacity. Baumlin further discloses how the refinement of the fibers (which is measured by the Schopper-Riegler freeness value) has a direct effect on transparency, opacity (paragraph 0104) as well as an impact on dimensional stability when a coating is applied to it (paragraph 0023). Baumlin discloses that its packaging paper acts as a protection of the element (whether liquid or solid) that it contacts, surrounds or contains, or as a cover which allows said element to be seen through the paper due to its transparency. In particular, the paper of the invention may serve the purpose of protecting the item it contacts, surrounds, contains or covers against scratches, fingerprints, oil/water stains, oxygen and other contaminants (paragraph 0009).
4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the paper, of Lebsanft, by trying the opacity and freeness, disclosed by Baumlin. One of ordinary skill in the art would have been motivated in doing so in order to have a paper that can protect the item it contacts, surrounds, contains or covers against scratches, fingerprints, oil/water stains, oxygen and other contaminants. It can further use the thickness-opacity relationship disclosed by Baumlin as a guide to achieving the desired opacity. Finally, it can refine its fibers to the degree necessary to achieve the transparency and dimensional stability required, as also disclosed by Baumlin.
5. Regarding Claim 7, Lebsanft in view of Baumlin suggests the use of sugarcane wax (Lebsanft: Page 15, Lines 8-10) and has a melting temperature of about 76°C (corresponds to claimed limitation of instant Claim 7’s “about 75°C), as evidenced by WO_2021104105_A1 (paragraph 0057).
6. Regarding Claim 8, Lebsanft in view of Baumlin suggests using rice-based materials too (Lebsanft: Page 16, Lines 25-27).
7. Regarding Claims 9-11, although Lebsanft in view of Baumlin does not explicitly disclose these properties, given that the applied art teaches the claimed limitations it would be expected for it to inherently possess these properties.
8. Regarding Claim 12, Lebsanft in view of Baumlin suggests a concentration range from 10 to 90 wt% (Lebsanft: Page 17).
Claim(s) 14-17, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lebsanft WO_2022243445_A1 in view of Baumlin USPA_20200385929_A1, as applied to Claims 1-13, and further in view of Schlegel DE_102019114198_A1 (see machine English translation).
9. Regarding Claims 14 and 17, Lebsanft in view of Baumlin does not disclose the claimed amount of wax concentration being at least about 95 wt% of the coating.
10. Schlegel discloses a paper that can be made of cellulose fibers (paragraph 0024) that can have a barrier layer on it (paragraph 0029) wherein said barrier layer can be made of up to 98 wt% of wax based on vegetable oil and that what occurs when it’s set at this concentration is excellent barrier properties (paragraph 0045).
11. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the concentration of the wax, of Lebsanft, by trying it up to a concentration of 98 wt% of its coating, as disclosed by Schlegel. One of ordinary skill in the art would have been motivated in trying this to see what degree of excellent barrier properties can be obtained.
12. Regarding Claims 15, 16, 19, and 20, their limitations have already been disclosed and indicated in paragraphs 1 and 3 above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 14-17, 19, and 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants state that Lebsanft does not disclose non-petroluem-based polymers.
The Examiner respectfully submits that Lebsanft discloses the use of polymers selected from the group of polysaccharide, polysaccharide ester, polysaccharide ether and polysaccharide ether ester that are produced from renewable sources (Page 7, Lines 9-13); thereby corresponding to polymers that are NOT petroleum-based and thereby meeting the limitation of instant Claim 1.
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 TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 June 17, 2026
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