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 .
DETAILED ACTION
Response to Election
1. Applicant’s election of claims 1-13, without traverse, in the reply filed on March 5, 2026, is acknowledged.
Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
2. The references disclosed within the information disclosure statement (IDS) submitted on April 26, 2024, and September 23, 2025, have been considered and initialed by the Examiner.
Claim Rejections – 35 USC 112
3. 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.
4. Claim 2 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
In claim 2, the phrase, “the fibers of said first and second outer ply” is indefinite. It is unclear if Applicant is referring to fibers obtained from UBC in the first and second outer plies or other fibers contained in the first and second outer plies. For examination purposes, it will be interpreted that the fibers being referred to are not UBC fibers.
Claim Rejections – 35 USC § 103
5. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
6. Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al. (JP 2017082386).
Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21). Regarding the weight percentage of the middle layer recycled fibers, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), as in claim 1.
Concerning claim 2, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons.
Concerning claim 3, Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21) which is interpreted as the middle layer comprising between 10-40 wt% non UBC fibers. Regarding the weight percentage of the middle layer non UBC fibers, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Concerning claim 4, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). In claim 4, the phrase, “fibers of said intermediate ply have been co-refined” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having outer plies and an intermediate ply comprising used beverage carton fibers. The reference suggests such a product because Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21).
Concerning claims 5-7, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura does not appear to explicitly teach the total grammage of the paperboard, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the multiply paperboard is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the multiply paperboard discussed above would be expected to meet the claimed total grammage.
Concerning claim 8, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract).
Concerning claim 9, Tamura discloses a paste solution was applied to both sides of the base paper (paragraph 49) which could be used to bond the layers together.
Concerning claim 10, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). In claim 10, the phrase, “fibers obtained from UBC have been subjected to purification using a fine screening method” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having outer plies and an intermediate ply comprising used beverage carton fibers. The reference suggests such a product because Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21).
Concerning claim 11, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). In claim 11, the phrase, “fibers obtained from UBC have been subjected to purification using an electro-osmosis method” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having outer plies and an intermediate ply comprising used beverage carton fibers. The reference suggests such a product because Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21).
Concerning claim 12, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). In claim 12, the phrase, “fibers obtained from UBC have been subjected to drying at elevated temperature to a consistency of at least 70 wt%” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having outer plies and an intermediate ply comprising used beverage carton fibers. The reference suggests such a product because Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21).
Concerning claim 13, Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). In claim 13, the phrase, “fibers obtained from UBC are hornified” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having outer plies and an intermediate ply comprising used beverage carton fibers. The reference suggests such a product because Tamura discloses a white paperboard having at least three layers which are a front layer, a middle layer and a rear layer using pulps which are adjusted for each layer, by a paper machine, where the middle layer is a layer mainly formed of an old paper pulp (abstract). Tamura discloses the surface layer was made of 90% bleached hardwood kraft pulp and 10% bleached softwood kraft pulp (paragraph 47), which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly made of recycled paper pulp, the back layer contains fresh pulp (paragraph 19) which is interpreted as including 0 wt% fibers obtained from used beverage cartons. Tamura discloses the middle layer is a layer mainly composed of recycled paper pulp, which can include milk cartons, where the content of recycled paper pulp relative to the total pulp in the middle layer is preferably 60% by mass or more (paragraph 21).
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
Prosecution Insights