Detailed Office Action
The communication dated 6/25/2026 has been entered and fully considered.
Claims 1-24 are currently pending.
Terminal Disclaimer
The terminal disclaimer filed on 6/25/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/705,099 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
In light of filing a Terminal Disclaimer the ODP rejections have been withdrawn.
Applicant argues that MENKE does not teach fine screening and that the combination with RAMIRES to teach fine screening is misplaced. The applicant argues that one of ordinary skill in the art would not screen the material of MENKE in the process of RAMIRES. The applicant argues that RAMIRES does not solve UBC specific problems.
In response MENKE separates out the aluminum and polymer plastics contaminants with coarse screening in drum (10) and then does a further washing in washer (48). MENKE states that the pulp can now be used for papermaking (56) [0092]. This suggests that the person of ordinary skill in the art would not question the pulp of MENKE as a recycled pulp after it had been treated. MENKE states that its process has “exceptional separation” [0015]. That is MENKE produces a pulp that can be used for paper and its process has already performed exceptional separation thereby increasing its purity.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0222585 MENKE et al., hereinafter MENKE, in view of U.S. 2019/0301094 RAMIRES et al., hereinafter RAMIRES, and Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 17-20, MENKE discloses taking used beverage cartons (UBC) and treating them to separate out aluminum and polymer plastics with a pulper (10) with coarse screening [0002, 0015, Figure 4]. The rich fiber fraction (52) can be dewatered (48) and sent to papermaking (56) [0092, Figure 4]. The aluminum and plastics are removed via line (52’) [0094, Figure 4]. MENKE sends the pulp (56) to papermaking but fails to disclose fine screening to remove fines from the pulp [Figure 4].
RAMIRES discloses taking any type of recycled pulp [0058-0059] and subjecting it to a fine separating fractionation using screening [0060]. The screening includes pressurized screening baskets and cyclones [0060]. RAMIRES discloses the fine separation occurs at 0.02 to 1% [0053] which means dilution after (48) of MENKE [Figure 4]. Pressurized screens use dilution water and optimization of consistency as evidenced by SMOOK [pg. 110 Figure 9-24 and pg.112 Table 9-3]. Furthermore, cleaners operate at a feed consistency of 1% which requires dilution as evidenced by SMOOK [pg. 117 Figure 9-37].
At the time of the invention it would be obvious to perform the fine screening fractionation on the pulp of MENKE as suggested by RAMIRES. The person of ordinary skill in the art would be motivated to do so to remove fines to increase drainage [0037] and thereby decrease energy during drying in papermaking [0036]. The fines removed can be converted into nanocellulose [0046] giving a second saleable product. The person of ordinary skill in the art would expect success as RAMIRES states that any recycled pulp can be used.
MENKE discloses papermaking (56) but does not disclose how papermaking is done. MENKE does not disclose deactivation. SMOOK discloses papermaking uses dewatering to 40% consistency [pg. 250 col. 2] followed by heated drying [pg. 228 Figure 16-1 and pg. 264]. The heated drying will act as a thermal deactivation step. Furthermore, SMOOK discloses the use of biocides in papermaking which also act as chemical deactivation [pg. 220 Table 15-1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to combine the known and conventional papermaking steps of SMOOK including dewatering and drying to the papermaking of MENKE/RAMIRES. Each step of MENKE/RAMIRES and SMOOK merely perform the same function as prior to their combination. The person of ordinary skill in the art would expect success as dewatering followed by heated drying is a conventional and known papermaking technique since the introduction of the fourdrinier machine.
As for claim 2, MENKE discloses beverage cartons with 75% pulp fibers, 25% polymer, and 5% aluminum which falls within the claimed range [0002].
As for claims 3 and 10, MENKE does not disclose the presence of any optical brightener in the UBC. Furthermore, since MENKE can treat the genus of UBC it would be expected to treat UBC with or without optical brighteners. A UBC without optical brighteners or a very low amount of optical brighteners will produce a final purified pulp with low OBA.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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)
As for claims 4, 7, 8, and 9 MENKE separates out the fibers (52) from the plastics and aluminum (52’) [Figure 4]. MENKE suggests that the process is efficient and complete which the Examiner interprets as producing fibers of over 90% purity (from the original 75% fibers) [0010]. A complete separation will have less than 0.5% plastic and less than 0.1% aluminum. In the alternative it would be obvious to optimize purity to further decrease the amounts of aluminum and plastic in which MENKE states that complete separation occurs [MPEP 2144.04 (VII)].
As for claim 5, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering SR. It is the Examiner’s position that substantially the same pulp will be produced. Further, RAMIRES discloses that the fine removed pulp can have a SR of 14 to 17(this was with eucalyptus chemical pulp not recycled pulp but gives blaze marks guiding the artisan of ordinary skill) [0064].
As for claim 6, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering water retention value. It is the Examiner’s position that substantially the same pulp will be produced. Further, RAMIRES discloses that the fine removed pulp can have a water retention of 110-130 which falls within the claimed range (this was with eucalyptus chemical pulp not recycled pulp but gives blaze marks guiding the artisan of ordinary skill) [0064].
As for claim 11, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering the ash which will travel with the fines. Furthermore, ash is an impurity and it is prima facie obvious to increase the purity of a known product [MPEP 2144.04 (VII)].
As for claims 12-14, RAMIRES discloses screening and cleaning in one or more steps [0060]. Both screening and cleaning use dilution water as per SMOOK.
As for claims 15 and 16, RAMIRES discloses removing 10 to 90% of the fines [0053] which overlaps the instant claimed range making a prima facie case of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. 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 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.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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