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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 3-7, 9-19 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hietaniemi et al., (hereinafter Hietaniemi), WO 2019/180302 A1.
With regard to claims 1, 3-4, 8 and 26, Hietaniemi discloses a method comprising adding to a fiber stock a mixture of at least an anionic polymer (anionically derivatized polysaccharide) and a cationic polymer (cationic starch) as a dry strength, but also teaches that the composition can include cationic strength agents as coagulants and added at 0.5 to 3 kg/ton (0.05% to 0.3%) if a synthetic polymer is added or from 3-20 kg/ton (.3 to 2.0 wt.%) if cationic starch is added; see page 17; lines 17-32 and page19, lines 1-7. Hietaniemi teaches that the dry strength composition can be added from 0.4 to 4.0 kg/ton (0.05 to 0.4 wt.%). Therefore the actual composition is the dry strength and the cationic strength agent; which is added within eth claimed range when a cationic starch is used, reading on claims 1 and 26. Table 12, on page 36, samples 7-5, 7-6 and 7-16, which are the samples according to the invention, i.e., that comply with claimed charge density. Such samples shows the use of 12 kg/ton of a cationic starch (the coagulant) and 1.4, 2.1 and 6 kg/ton of the dry strength, which 13.4, 14.1 and 18 kg/ton are added to the stock and falls within the 10 to 50 kg/ton claimed (which reads on claim 1). Hietaniemi teaches that the anionic polymer comprises cellulose, and starches and derivatives, that are known to have molecular weight greater than 100 kDa and explicitly teaches the use of MFC; see page 8,lines 5-11 and paragraph bridging pages 8 and 9 and explicitly teaches the use an anionically derivatized MFC (see page 33, lines 5-7), which is known to have a molecular weight of at least 100 kDa (intrinsic property of the cellulose). Furthermore, the mixture of polymers added to the stock may also contain other anionic polymers such as anionic polyacrylamide which have a molecular weight of at least 3,000,000 g/mol (see page 19, lines 13-16). Hietaniemi discloses (see abstract, page 4, lines 10-23 and claim 10) that the composition of the anionic and cationic polymer has a charge density in the range of 0.1 to 1.5 meq/g, when measured at pH 2.8, and -0.1 to -3 meq/g, preferably -0.3 to -2.5 meq/g, more preferably -0.5 to -2.0 meq/g, when measured as an aqueous solution, at pH 7.0. Hietaniemi discloses id a method of manufacturing a board material from a fibrous suspension, which de facto implies a moulding step. Note that paper is a molded product, evidenced by claim 4 of the current application, and therefore, reading on claim 26 as-well. Hietaniemi teaches also the addition of polyamidoamine-epichlorohydrin, glyoxylated polymers and starch to the composition; see page 17, lines 18-32 and page 18, lines 22-31 (reading on claim 2). Although Hietaniemi does not explicitly teach that the composition improves grease and oil resistance, this is inherent to the composition and method of the reference since Hietaniemi discloses the same process which uses the same claimed composition.
Regarding to claims 5-7 and 27, Hietaniemi teaches on page 19, lines 28-33, the formation of 3D products, e.g., liquid packaging boards, from the composition. Note also that adding the composition, the strength agent to a slurry/stock to be molded to form a 3D product would have been obvious to one of ordinary skill in the art since it is common in the art.1
With regard to claims 9-19 and 24, these claims recite different ways to add the different components to the fiber slurry and Hietaniemi teaches the addition of the different components before, after or simultaneously; see page 16, lines 4-8 and 18, lines 13-20. Note that any variation would be within the level of ordinary skill in the art and considered obvious, absent a showing of unexpected results.
Regarding to claims 21-22, Hietaniemi in the examples and table 12 on page 36 and page 19, lines 1-11, teach addition amounts falling within the claimed range.
With regard to claim 23, Hietaniemi teaches the adjusting of the conductivity on page 21, lines 1-5 and in the examples discloses adjusting of the conductivity to 1.5 mScm, which falls within the claimed range; see examples starting on page 24; e.g., example 1, lines 10-13; example 4 on page 29, lines 6-12, etc.
Regarding to claim 25, Hietaniemi teaches that coagulants such as polyaluminum chlorites (PAC), which is an amphoteric polymer can be added to the composition; see page 17, lines 18-32.
Response to Arguments
Applicant's arguments filed on June 11, 2026 have been fully considered but they are not persuasive. Applicants argue that the reference does not teach the amount of the composition in the claimed range as amended in the independent claims, claims 1 and 26. The arguments are deemed not convincing for the reasons indicated above, i.e., the added composition not only includes the dry strength agent but also a cationic coagulant that as shown above the actual composition is added in amounts falling within the claimed range id.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “A Method for Improving Grease and Oil Resistance of a Fiber Based Article.”
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
1 EP 3331694 A1 (claim 1), US Patent Application Publication No. 2005/0150624 (¶-[0026]) and US Patent Application Publication No. 2018/0148894 A1 (¶-[0025], [0034]), evidence this fact
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