Detailed Office Action
The communication dated 4/16/2026 has been entered and fully considered.
Claims 1-34 are pending with claims 21-34 withdrawn from consideration.
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 in the reply filed on 4/16/2026 is acknowledged. The traversal is on the ground(s) that claims 31-34 depend upon claim 1. This is not found persuasive because claims 31-34 switch statutory categories and therefore can be made by a different process than claim 1 from which they depend.
The requirement is still deemed proper and is therefore made FINAL.
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 1-20 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 and 16 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: In claim 1, the applicant takes feedstock with a moisture content of greater than 80% (20% or less solids) and mechanically pretreats it. The optional step requires high consistency refining (14%-40% solids). Claim 16 the high consistency refining no longer optional. In both claim 1 and 16 the dewatering occurs after the high consistency refining. It is unclear to the Examiner how a material with less than 20% solids (and even less than 5% solids for instant claim 2) is able to be high consistency refined without a dewatering step therebetween.
Claims 2-20 depend from claim 1 and are similarly rejected.
The term “high consistency” in claims 1 , 16, 18 and 19 is a relative term which renders the claim indefinite. The term “high consistency” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the specification the applicant gives the range of 15 to 40% but prefaces it with the undefined term “in the order of” [0054]. The term “in the order of” makes it unclear how much broader the range can be. The language “in the order of” suggest “orders of magnitude”. For the purpose of examination the examiner interprets high consistency as “15%-40%”.
Claims 2-20 depend from claim 1 and are similarly rejected.
The term “low consistency” in claims 17-19 is a relative term which renders the claim indefinite. The term “low consistency” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In the specification the applicant gives the range of 1 to 5% but prefaces it with the undefined term “in the order of” [0054]. The term “in the order of” makes it unclear how much broader the range can be. For the purpose of examination the examiner interprets high consistency as “1%-5%”.
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 1- 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2010071945 AZER, hereinafter AZER, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1, 2, 10, and 11, AZER discloses taking banana plan pseudo-stem which comprises petiole tissue and performing a mechanical pretreatment (mechanical pre-treatment of the feedstock to form a fibre furnish [pg.10 lines 19-30]). AZER discloses a fiber fraction of at least 98% within 3 to 4 mm which falls within the instant5 claimed ranges (the fibre furnish having fibres with a fibre length distribution such that at least 95% of the fibres have a length less than about 15 mm [pg. 8 lines 1-5 and 13-15]). AZER discloses the fiber furnish has AZER discloses pressing a fiber matt of the fibers to 10 to 15% moisture content which falls within the claimed range (dewatering the fibre furnish without chemical addition to produce a cellulose fibre cake and a filtrate, the cellulose fibre cake having a moisture content less than about 40% (w/w) [pg. 11 lines 30-33]). AZER discloses that the pulp can refined prior to papermaking [pg. 14 lines 6-10]. AZER does not disclose the use of disc refiners.
SMOOK discloses that there are two major types of refiners conical and disk refiner [pg.201 col. 2]. At the time of the invention it would be obvious to the person of ordinary skill in the art to use the disc refiner of SMOOK to refine the pulp of AZER. The person of ordinary skill would be motivated to use a disc refiner as it has significant advantages over other refiners including lower no-load energy [pg. 201 col. 1], more compact design, and lower capital requirements [pg. 202 col. 1].
As AZER discloses the same starting material petiole from banana plants it would be expected to have substantially the same starting moisture. Further supporting the Examiners contention of meeting the moisture content is that AZER states that pressing can decrease the moisture to 20-90% which suggest that the moisture of the starting material can be over 90% [pg. 11 lines 24-26].
As for claim 3, AZER discloses that the fiber consists essentially of petioles [pg. 6 lines 10-12].
As for claim 4-6, AZER discloses Musacaeae and Musa [pg. 7 lines 18-20] and the species Musa acuminata [pg. 6 lines 25-29]. AZER discloses that the petiole tissue is substantially longitudinally aligned [pg. 13 lines 4-5].
As for claims 7 and 8, AZER discloses sheets of fibers are removed via separation of bundles as the pseudostem is rotated [claim 10]. AZER discloses the process for producing sheets includes feeding the pseudostem into a workstation about a longitudinal axis along substantially its entire length such that a continuous sheet of fiber is removed [claim 12]
As for claim 9, the fibers are generally cut laterally [claim 16].
As for claims 12 and 13, SMOOK discloses multiple types of dewatering arrangements including multiple stage thickening system [pg. 199 Figure 9-42]. SMOOK discloses the filtrate can be used as shower water [pg. 121 col. 1]. SMOOK shows how this filtrate can be used in a countercurrent manner [pg. 106 Figure 9-16 and 9-17]. SMOOK discloses that to achieve high consistency a screw or press is additionally required [pg. 121 col. 1].
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over AZER and SMOOK as applied to claim 1 above, and further in view of U.S. 3,943,033 WALLEN, hereinafter WALLEN.
As for claims 14 and 15, AZER and SMOOK teach the features as per above including using a screw for dewatering. SMOOK does not give the pressure of the screw. Further, it is not clear if the pitch is decreasing along the length of the screw. SMOOK discloses a cylindrical screen with perforations in the screw [pg. 123 Figure 9-48]
WALLEN disclose a screw for dewatering pulp. The screw has a progressively decreasing pitch [col. 1 lines 9-15]. The screw operates at a pressure of greater than 15kPa [0.15 kg/cm2] which overlaps the claimed range. At the time of the invention it would be obvious to use the higher pressure as motivated by WALLEN as the overpressure and pitch allow the screw thickeners to be made shorter [col. 1 lines 40-57]
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over AZER and SMOOK as applied to claim 1 above, and further in view of Papermaking Part 1, Stock Preparation and Wet End edited by PAULAPURO, hereinafter PAULAPURO.
As for claims 19 and 20, AZER discloses refining the banana pulp and SMOOK discloses a single disc refiner prior to papermaking. SMOOK discloses that disc refiners can have counter-rotating discs [pg. 202 Figure 13-17]. SMOOK does not disclose a high consistency refiner followed by a low consistency refiner.
PAULAPURO discloses after dewatering a high consistency refining stage followed by low consistency refining [pg. 105 Figure 19]. At the time of the invention it would be obvious to perform high consistency refining followed by low consistency refining. The person of ordinary skill in the art would be motivated to do so by PAULAPURO who states that high consistency refining uses low energy but the low consistency refining can straighten the fibers and decrease bulk [pg. 105 par 1 and 2]. The person of ordinary skill in the art would expect success as this refining system can be used for sack grades according to PAULAPURO and AZER discloses packaging grades [pg. 8 lines 3-4].
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK, in view of U.S. 5,176,793 KURTZ, hereinafter KURTZ.
As for claim 1, SMOOK discloses supplying a woodchip that has been presteamed and washed which the Examiner interprets as having a moisture content over 100%. The Examiner notes these claims rejected do not require banana petiole tissue that has been longitudinally cut.
SMOOK discloses mechanical pretreatment using a plug-screw screw [Figure 5-32 before preheat digester] and then the optional refining [Figure 5-32 primary refiner]. SMOOK discloses dewatering the furnish prior to bleaching Figure 5-32 []. A press can do a greater than 20% consistency (less than 80% moisture) of which overlaps claimed range [pg. 117 Table 9-5]] SMOOK discloses a fluffer [Figure 5-32] which will do some refining . Further SMOOK discloses refining prior to papermaking [pg. 195 col. 2] with counter-rotating disks [pg. 202 Figure 13-17]. KURTZ discloses a plug-screw feeder can do a consistency of 30% or more [col. 4 lines 25-30]. At the time of the invention it would be obvious to the person of ordinary skill in the art to run the plug screw feeder of SMOOK at the known consistency at which a plug screw feeder exit rums.
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.
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, Abbas Rashid can be reached at (571)270-7457. 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. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
Prosecution Insights