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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 are rejected under 35 USC §103. This rejection is set forth in the prior Office action mailed on December 30, 2025.
Response to Arguments
Applicant's arguments filed on March 27, 2026 have been fully considered but they are not persuasive.
Applicants argue: 1) that the addition of the of the degraded starch is not within the claimed range and that the absence of an ethylenically unsaturated acid is not optional, but an explicitly affirmative exclusion: 2) that the secondary reference is not directed to the same composition, but to a coating composition, and 3) that the use of composition provides unexpected results. The arguments have been carefully considered and deemed not convincing for the following reasons:
As to 1) the examiner respectfully disagrees with the interpretation of the amount of starch, since the examples clearly show; see tables 2A through 2C, the use of Maltodextrin in amounts greater than 45% with respect to the whole composition. Table 2C shows the use of starch from 25% through 75%. Note that D represents the other components of the mixture/blend and MD represents maltodextrin. This clearly shows that the degraded starch proportion refers to the total amount of the composition and not a relative to the 100 parts of the monomer as suggested by applicants. As to the absence of the ethylenically unsaturated acids a reference is not evaluated by its specific examples, but for what it teaches, as a whole, to one of ordinary skill in the art and one of skill in the art would recognize that using acrylic acid is an optional component and thus not using it is within the teaching of the reference and thus reading on the exclusion limitation. Note that it has been held that “A disclosure in a reference is not limited to its specific illustrative examples, but must be considered as a whole to ascertain what would be realistically suggested thereby to one of ordinary skill in the art.” In re Uhlig, 54 CCPA 1300, 376 F2d 320; 153 USPQ 460.
As to 2) the secondary reference was only used for the specific teaching of the Molecular weight of degraded starch and not as the incorporation of it as a whole. It has been held that “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).
As for 3) while this might be true, yet the scope of the claim(s) is not commensurable in scope with the argued unexpected results, since the results were obtained by very specific coating amounts to specific basic weight of the substrate. It has been held that “Applicants must also explain why the showing is commensurate in scope with the claimed subject matter.” See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Applicants have not directed us to evidence that establishes why the relatively few examples presented in the specification would have been representative of the scope of the claimed invention. Applicants have not explained why the results achieved in the specification would have been unexpected by one of ordinary skill in the art, see In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). This is especially significant in this case where the cited reference discloses the preparation of similar paper compositions that have related properties.
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 JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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