Detailed Action
The communications received 08/05/2025 have been filed and considered by the Examiner. Claims 1-15 and 17-24 are pending.
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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-15, drawn to a method of making a multiply paperboard.
Group II, claim(s) 17-24, drawn to a multiply paperboard.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the resultant multiply paperboard produced by claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Thomas et al (US 2,881,672) hereinafter THO in view of Okamoto et al (US 2019/0308786) hereinafter OKA and Buchan et al (US 2017/0183821) hereinafter BUC.
As for claim 1, THO teaches a method for manufacturing a multiply paperboard, comprising the steps of [col. 1 l. 15-37]:
a) forming a first web (the web deposited second in sequence) on a first wire and partially dewatering said first web on said first wire, wherein said first web comprises at least one first web layer formed from a first pulp suspension, wherein said first web has a wire side and a non-wire side [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12];
b) forming a second web (the base layer, deposited first in sequence) on a second wire and partially dewatering said second web on said second wire, wherein said second web comprises at least one second web layer formed from a second pulp suspension [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12],
wherein said second web has a wire side and a non-wire side;
c) forming a third web on a third wire and partially dewatering said third web on said third wire,
wherein said third web comprises at least one third web layer (the web deposited third in sequence) formed from a third pulp suspension, wherein said third web has a wire side and a non-wire side [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12],
g) further dewatering, and optionally drying, said multilayer web so as to provide said multiply paperboard, wherein said first web forms a first ply, said second web forms a second ply, said third web forms a third ply, said first coating layer forms a first bonding layer and said second coating layer forms a second bonding layer of said multiply paperboard after said dewatering, and optional drying, of said multilayer web (by passing through the usual wet presses, drying rollers etc. to complete manufacture of the board) [col. 3 l. 65-73].
THO further teaches that the second layer is a delamination layer (as it is delaminated from the web, capable of delamination as it is applied as a separate layer onto another) [col. 5 l. 36-41],
THO does not teach coating, nor using a refined pulp with a Schopper Riegler value as the second layer.
OKA teaches that in papers, that one manner of imparting barrier properties to packaging materials, in particular a gas barrier [Abstract; 0088; 0091] is to apply a coating via a curtain to the paper of an amount that ranges from 0.2-20 g/meter squared based on a dry weight [0087; 0091]. This coating can be composed of starch in the amounts of 10-99% [0073; 0077] which results in a range of 0.02-19.8 g/meter squared which overlaps the claimed range. The gas barrier layer can be two or more layers [0092].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have applied a gas barrier to each of the non-wire sides of the first, second, and third webs in order to impart a gas barrier property to each of the papers. As the gas barrier layer can be incorporated as multiple layers, it is understood that it would function as a gas barrier layer in a multiply stack. As both OKA and THO pertain to the art of paper production they are analogous art and one of ordinary skill in the art expects success in the combination. It is similarly understood that the application of the coating layers before the joining of the layers would incorporate the gas barrier properties for each layer which suggesting that the gas barrier can be incorporated as a multi-layer one of ordinary skill in the art would understand to further improve the gas barrier properties.
THO/OKA fail to teach that the second pulp suspension comprises 5-80 weight % of refined pulp based on a total dry weight of the total fiber content of the second pulp suspension and
wherein the refined pulp is refined chemi-thermomechanical pulp (CTMP), or refined chemi-mechanical pulp (CMP), or a combination thereof,
wherein said refined CTMP and said refined CMP, respectively, has a Schopper Riegler value (SR°) in the range of 20-40,
BUC teaches a method of forming a paperboard (corrugated cardboard) [Abstract] which can employ CTMP [0025] has an SR of less than 40 when beaten (i.e. refined) [0027]. The filler content can be 1-20% [0024] along with 0.35-13 wt.% of additional polymer units [Abstract]. This would suggest that the pulp comprises 67-98.65 wt.% which overlaps the claimed range. BUC’s composition allows for improved higher load resistance capability [0021].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the pulp of BUC as a pulp in THO/OKA in order to improve the higher load resistance capability. It would have been obvious to have incorporated this into the second ply as this ply layer would be the core layer which would improve overall load resistance as a middle layer.
Therefore unity of invention is lacking a posteriori as the limitations are met.
During a telephone conversation with Patrick Smith on 01/13/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-24 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
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.
For the rejections below, the Examiner notes that In accordance with the MPEP, ‘ 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)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
Claim(s) 1, 3-4, 6, 8-13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al (US 2,881,672) hereinafter THO in view of Okamoto et al (US 2019/0308786) hereinafter OKA and Buchan et al (US 2017/0183821) hereinafter BUC.
As for claim 1, THO teaches a method for manufacturing a multiply paperboard, comprising the steps of [col. 1 l. 15-37]:
a) forming a first web (the web deposited second in sequence) on a first wire and partially dewatering said first web on said first wire, wherein said first web comprises at least one first web layer formed from a first pulp suspension, wherein said first web has a wire side and a non-wire side [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12];
b) forming a second web (the base layer, deposited first in sequence) on a second wire and partially dewatering said second web on said second wire, wherein said second web comprises at least one second web layer formed from a second pulp suspension [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12],
wherein said second web has a wire side and a non-wire side;
c) forming a third web on a third wire and partially dewatering said third web on said third wire,
wherein said third web comprises at least one third web layer (the web deposited third in sequence) formed from a third pulp suspension, wherein said third web has a wire side and a non-wire side [col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12],
g) further dewatering, and optionally drying, said multilayer web so as to provide said multiply paperboard, wherein said first web forms a first ply, said second web forms a second ply, said third web forms a third ply, said first coating layer forms a first bonding layer and said second coating layer forms a second bonding layer of said multiply paperboard after said dewatering, and optional drying, of said multilayer web (by passing through the usual wet presses, drying rollers etc. to complete manufacture of the board) [col. 3 l. 65-73].
THO further teaches that the second layer is a delamination layer (as it is delaminated from the web, capable of delamination as it is applied as a separate layer onto another) [col. 5 l. 36-41],
THO does not teach coating, nor using a refined pulp with a Schopper Riegler value as the second layer.
OKA teaches that in papers, that one manner of imparting barrier properties to packaging materials, in particular a gas barrier [Abstract; 0088; 0091] is to apply a coating via a curtain to the paper of an amount that ranges from 0.2-20 g/meter squared based on a dry weight [0087; 0091]. This coating can be composed of starch in the amounts of 10-99% [0073; 0077] which results in a range of 0.02-19.8 g/meter squared which overlaps the claimed range. The gas barrier layer can be two or more layers [0092].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have applied a gas barrier to each of the non-wire sides of the first, second, and third webs in order to impart a gas barrier property to each of the papers. As the gas barrier layer can be incorporated as multiple layers, it is understood that it would function as a gas barrier layer in a multiply stack. As both OKA and THO pertain to the art of paper production they are analogous art and one of ordinary skill in the art expects success in the combination. It is similarly understood that the application of the coating layers before the joining of the layers would incorporate the gas barrier properties for each layer which suggesting that the gas barrier can be incorporated as a multi-layer one of ordinary skill in the art would understand to further improve the gas barrier properties.
THO/OKA fail to teach that the second pulp suspension comprises 5-80 weight % of refined pulp based on a total dry weight of the total fiber content of the second pulp suspension and
wherein the refined pulp is refined chemi-thermomechanical pulp (CTMP), or refined chemi-mechanical pulp (CMP), or a combination thereof,
wherein said refined CTMP and said refined CMP, respectively, has a Schopper Riegler value (SR°) in the range of 20-40,
BUC teaches a method of forming a paperboard (corrugated cardboard) [Abstract] which can employ CTMP [0025] has an SR of less than 40 when beaten (i.e. refined) [0027]. The filler content can be 1-20% [0024] along with 0.35-13 wt.% of additional polymer units [Abstract]. This would suggest that the pulp comprises 67-98.65 wt.% which overlaps the claimed range. BUC’s composition allows for improved higher load resistance capability [0021].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the pulp of BUC as a pulp in THO/OKA in order to improve the higher load resistance capability. It would have been obvious to have incorporated this into the second ply as this ply layer would be the core layer which would improve overall load resistance as a middle layer.
As for claim 3, THO/OKA/BUC teach claim 1 and OKA further teaches that a combination of starch and cooked starch can be used (enzyme-modified starch is a cooked starch, esterified starch and oxidized starch are understood to be other starch particles) [0048; 0073].
As for claim 4, THO/OKA/BUC teach claim 3 and it is understood that the coatings applied can include other starch [OKA: 0073], and BUC further teaches that one usable form of starch used in paper treatments are virgin starches in combination with other starches [0138].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the native starch of BUC as an other starch in the combination as this is understood to achieve the desired surface treatment of the combination.
As for claim 6, THO/OKA/BUC teach claim 1 and OKA further teaches the inclusion of pigments in the coatings [0074; 0077].
As for claim 8, THO/OKA/BUC teach claim 1 and as OKA teaches that multiple layers of coating can be employed [0092] which the Examiner understands to include two or more layers applied over each other. As the only manner of applying an additional coating in a sequential process such as the one incorporated by THO [Fig. 5] would be to add additional applicators, it is understood that at least two single layer curtain applications would be required to apply an additional layer. One of ordinary skill in the art would understand an additional gas barrier layer to be an improvement in the reduction of gas permeability and would have been motivated to have included the extra layers in both coating steps.
As for claim 9, THO/OKA/BUC teach claim 1 and OKA further teaches that both coating layers are understood to be in the amounts of 10% to 99% starch [0073; 0077] which overlaps the claimed range [see claim 1].
As for claim 10, THO/OKA/BUC teach claim 1, and as currently claimed, there is nothing that requires that the first web layer be the first web layer that is sequentially formed. Therefore the first layer can be what is currently denoted as the third layer and the third layer can be what is currently denoted as the first layer and therefore the third and the second will be bonded to each other before they would be bonded to the first layer [THO: Fig. 5; col. 1 l. 39-69; col. 4 l. 16-21; col. 4 l. 70-col. 5 l. 12].
As for claim 11, THO/OKA/BUC teach claim 1 and wherein said first web consist of one first web layer, wherein said second web consists of one second web layer being said delamination layer and said third web consists of one third web layer (as there are no other webs/constituents understood to be a part of these layers) [see claim 1].
As for claim 12, THO/OKA/BUC teach claim 1 and wherein said first web forms a top web and said first ply forms a top ply, and wherein said third web forms a back web and said third ply forms a back ply (as this amounts to how the multiply is oriented in space, therefore the stack can merely be flipped over to produce the orientation), in addition as there is nothing that requires the first, second, and third to denote sequence, the currently denoted first can be third and vice versa to obtain a top first layer and a bottom third layer [see rationale applied in claim 10].
As for claim 13, THO/OKA/BUC teach claim 1 and see claim 12 for an explanation as to the feasible orientations of the top versus bottom configurations of the first and third plies.
As for claim 15, THO/OKA/BUC teach claim 1 and it is understood to include a barrier layer on at least one side [see claim 1]. In addition OKA teaches the use of water barrier layers to impart a water barrier property to the paper.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the water barrier of OKA in order to imbue the final product of THO/OKA/BUC with water barrier properties.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over THO/OKA/BUC as applied to claim 1 and as evidenced by Kauppinen (US 2022/0347551) hereinafter KAU.
As for claim 2, although THO/OKA/BUC fail to teach a CSF, they do teach the SR degree which KAU evidences is also measure of freeness that but simply measured in a different manner [0036]. As THO/OKA/BUC have the requisite SR, they are understood to have the requisite CSF as both are measuring freeness.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over THO/OKA/BUC as applied to claim 1 and as evidenced by Heiskanen et al (US 2012/0219816) hereinafter HEI.
As for claim 5, THO/OKA/BUC teach claim 1 but fail to teach that any of the coating layers include microfibrillated cellulose.
HEI teaches that when producing a multiply paperboard, that one advantageous inclusion is of microfibrillated cellulose between the layers at the amounts of 0.1-5 gsm (which falls within the claimed range) [Abstract; 0016]. This is done to prevent defects such as cracking [0015].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the microfibrillated cellulose and respective amounts of HEI to the coating used between the layers of THO/OKA/BUC in order to reduce the incidence of defects such as cracking. As both THO/OKA/BUC and HEI pertain to the art of multiply paperboard they are analogous art and one of ordinary skill in the art expects success in the combination.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over THO/OKA/BUC as applied to claim 1 in view of Triantafillopoulos et al (Operational issues in high-speed curtain coating of paper, Part 1: The principles of curtain coating, 2004) hereinafter TRI.
As for claim 7, THO/OKA/BUC teach claim 1 but does not teach the dry coating amounts of the coating curtain.
TRI teaches that the curtain formation (i.e. the amount of solvent utilized versus dry content which affects viscosity and would particularly be represented in the fluid density and surface tension) is optimized against the stability of the curtain [Abstract; pg. 7 col. 2-3; pg. 8 col. 1].
In accordance with the MPEP "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed range of dry content of the curtain as this dry content would amount to an optimization of the formulation of the coating curtain against the stability of the curtain.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over THO/OKA/BUC as applied to claim 1 in view of Pietikäinen, et al (US 2020/0115854) hereinafter PIE.
As for claim 14, THO/OKA/BUC teach claim 1 but fail to teach that either coating suspension includes a foam supplied with the curtain application.
PIE teaches that when forming a multi-ply board that it is known to supply a coating via a curtain type application device [Abstract]. PIE’s manner of applying the coating (including via the curtain type application device) is useful as it contributes to an improved application of the sizing agents in a stabilized manner [0022].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have supplied the coating of THO/OKA/BUC to include a foam during the curtain coating as taught by PIE in order to improve the application of the sizing agent of THO/OKA/BUC. As both PIE and THO/OKA/BUC pertain to the formation of multi-layered paperboard they are analogous art and one of ordinary skill in the art expects success in the combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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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.
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/E.V./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748