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
Applicant's election with traverse of Group I, claims 1-6 in the reply filed on 23 March 2026 is acknowledged. The traversal is on the ground(s) that in view of the USPTO’s announcement of enhanced search capabilities the office action has not established the nature of the serious search and examination burden on the Examiner if the election were not required. This is not found persuasive because an announcement of enhanced search capabilities is not a persuasive argument. Group II is directed to a process for producing a surface sizing agent however it does not require all of the limitations recited in Group I. For example, claim 1 requires specific amounts which are not required in the process of Group II. Therefore there is a search and examination burden as prior art for Group I may not be applicable to Group II. As for Group III, this is not drawn to statutory subject matter.
The requirement is still deemed proper and is therefore made FINAL.
Currently claims 1-12 are pending with claims 7-12 withdrawn from consideration as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 112(b)
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 1-6 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 is confusing and therefore vague and indefinite. The recitation of “at least one further surface-finishing substance” is confusing as this suggests that a surface-finishing substance is already present in the claim. Line 3 recites “0.1 to 50% by weight, of lignin and at least one further surface finishing substance”. Because of the “,” after “weight” it is unclear as to whether or not this amount refers solely to the lignin component or whether this amount refers to the lignin and at least one further surface finishing substance. Clarification is requested. It is unclear as to what is meant by the term “AnKD”. Also the claim is confusing as it is written in such a way that it appears that “the remainder water” is a member of the at least one further surface-finishing substance. Clarification is requested.
Claim 4 is confusing and therefore vague and indefinite as it refers to “soluble and/or dispersible components contained in the sizing agent however it is unclear as to exactly what components in the sizing agent are considered soluble and/or dispersible as claim 1, the claim from which this claim depends, makes no mention as to the presence of any soluble and/or dispersible components. Clarification is requested.
Claim 5 is confusing and therefore vague and indefinite as it is unclear as to what is meant by the phrases “a mixture of up to 99%....suspendable starch components contained in the surface sizing agents” and “up to 15% by weight of all soluble….or oils”. What is the mixture that is being referred to? What are the soluble and suspendable components that are being referred to? Claim 1 makes no mention as to any soluble or suspendable components. What exactly is meant by these phrases? Clarification is requested.
Claim Interpretation
With respect to the limitation of “0.1 to 50% by weight, of lignin and at least one further surface-finishing substance selected from the group consisting of hydroxylated polymers natural or synthetic hydrophobic materials, AnKD, alkenyl succinic anhydride” the examiner is interpreting this to mean that the combination of lignin and the at least one further surface-finishing substance” is in the range of “0.1 to 50% by weight”.
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 (or as subject to pre-AIA 35 U.S.C. 102) 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 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paris et al (US Patent No. 11,566,134 B2).
The reference teaches, in the examples, compositions comprising lignin, lignosulfonate, wax, and water.
Table 1 which appears below provides samples with amounts of each of the components in the emulsion sample.
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Table 1 which appears below provides samples with amounts of each of the components in the emulsion sample.
The instant claims are met by the reference.
As for claim 1, the reference teaches an amount of lignosulfonate that falls within the claimed range. The amount of lignin and wax (which meets the further surface-finishing substance) falls within the claimed range. See Samples 2D5-1B, 2D5-2B, and 2D5-3B. As the composition is the same as instantly claimed it is capable of functioning as a sizing agent.
As for claim 4, based on the amount of solids in the samples, the amount of the surface-finishing substance falls within the claimed range.
Allowable Subject Matter
Claims 2-3 and 5-6 are 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 and if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
May 5, 2026
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