Detailed Action
The communications received 06/07/2024 have been filed and considered by the Examiner. Claims 1-8, 11-13, and 17-28 are pending. Claims 11-13 and 17-25 are withdrawn.
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 .
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) 1-2, 4-8, and 26-28 are drawn to a strength enhancement agent.
Group II, claim(s) 11-13 and 17-25, drawn to a method for manufacturing a strength enhancement agent.
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-II lack unity of invention because even though the inventions of these groups require the technical feature of the strength enhancement agent of claim , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Periera et al (US 2022/0380980) hereinafter PER in view of Backfolk et al (US 2019/0234020) hereinafter BAC.
As for claim 1, PER teaches a strength enhancement agent for paper and paperboard said strength enhancement agent (high strength fibre composition of MFC) comprising [Abstract; 0009; 0105-106]:
A fines-depleted highly refined cellulose pulp, FDHRC [0010; 0095; 0139-140],
Wherein said FDHRC has an amount of long (>0.2 mm) fibers of at least 8 million fibers per gram based on a dry weight of the FDHRC (the percent of greater than 0.2mm are 66.3-98.3% which means that where the number of fibres in millions/g are 25-10,000 million, then the range for >0.2 mm is 17-9830 million fibres/gram which falls within the claimed range, the Examiner notes that should the 10,000 be a typo for an intended 10, that the lower end of the range would be 6.63 million fibres/gram which in combination with 25 million fibres/gram overlaps the claimed range) [0014-21; 0044; 0118] and
Wherein said FDHRC has a Fines A value below 46%, wherein the Fines A value is determined using an FS5 optical fiber analyzer (in accordance with the instant specification, the Fines A value specifically refers to flakes of a certain ratio that are under than 0.2mm in length and width, therefore as all lengths of <0.2mm is composes at most 33.7% this falls within the claimed range of less than 46%) [0089].
Although PER teaches some exemplary Schopper-Riegler values [Fig. 20; 0060; 0168], it does not teach an explicit range for the Schopper-Riegler nor that the Schopper-Riegler is in the range of 60-100. However, PER does teach that generally SR is a measure of grinding degree/dewatering degree/refining degree and/or sheet depletion when formed in a Schopper-Riegler and as such degrees and depletion are not otherwise explicitly taught, there is nothing to suggest that PER is limited to the ranges of the examples [0168].
BAC teaches a strength additive similar to the one of PER (as it is based on microfibrillated cellulose) in which the SR value is preferably at least 85 which falls within the claimed range in in order to achieve improved oxygen properties [Abstract; 0016].
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 SR value of BAC as the SR value of PER in order to achieve improved oxygen properties. As both PER and BAC pertain to microfibrillated celluloses, they are analogous art and one of ordinary skill in the art expects success in the combination.
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 1-2, 4-8 and 26-28. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-13 and 17-25 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 § 112
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.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As for claim 2, it is unclear how the strength enhancement agent can both comprise FDHRC while also forming part of the same FDHRC. For purposes of examination this is understood to mean the strength enhancement agent comprises at least 50% FDHRC.
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.
Claim(s) 1-2, 4-6, 8, and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Periera et al (US 2022/0380980) hereinafter PER in view of Backfolk et al (US 2019/0234020) hereinafter BAC.
As for claim 1, PER teaches a strength enhancement agent for paper and paperboard said strength enhancement agent (high strength fibre composition of MFC) comprising [Abstract; 0009; 0105-106]:
A fines-depleted highly refined cellulose pulp, FDHRC [0010; 0095; 0139-140],
Wherein said FDHRC has an amount of long (>0.2 mm) fibers of at least 8 million fibers per gram based on a dry weight of the FDHRC (the percent of greater than 0.2mm are 66.3-98.3% which means that where the number of fibres in millions/g are 25-10,000 million, then the range for >0.2 mm is 17-9830 million fibres/gram which falls within the claimed range, the Examiner notes that should the 10,000 be a typo for an intended 10, that the lower end of the range would be 6.63 million fibres/gram which in combination with 25 million fibres/gram overlaps the claimed range) [0014-21; 0044; 0118] and
Wherein said FDHRC has a Fines A value below 46%, wherein the Fines A value is determined using an FS5 optical fiber analyzer (in accordance with the instant specification, the Fines A value specifically refers to flakes of a certain ratio that are under than 0.2mm in length and width, therefore as all lengths of <0.2mm is composes at most 33.7% this falls within the claimed range of less than 46%) [0089].
Although PER teaches some exemplary Schopper-Riegler values [Fig. 20; 0060; 0168], it does not teach an explicit range for the Schopper-Riegler nor that the Schopper-Riegler is in the range of 60-100. However, PER does teach that generally SR is a measure of grinding degree/dewatering degree/refining degree and/or sheet depletion when formed in a Schopper-Riegler and as such degrees and depletion are not otherwise explicitly taught, there is nothing to suggest that PER is limited to the ranges of the examples [0168].
BAC teaches a strength additive similar to the one of PER (as it is based on microfibrillated cellulose) in which the SR value is preferably at least 85 which falls within the claimed range in in order to achieve improved oxygen properties [Abstract; 0016].
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 SR value of BAC as the SR value of PER in order to achieve improved oxygen properties. As both PER and BAC pertain to microfibrillated celluloses, they are analogous art and one of ordinary skill in the art expects success in the combination.
As for claim 2, PER/BAC teach claim 1 and that the strength agent can comprise up to 50% FDHRC (via the MFC at 5,10,20, and 35% which fall within the claimed range, the Examiner understands that the examples signify that the prior art conceives of the MFC in this values) [0155].
As for claim 4, PER/BAC teach claim 1 and BAC teaches the ST of at least 85 which overlaps the claimed range [0016].
As for claim 5, PER/BAC teach claim 1 and PER further teaches the amount of long (>0.2 mm) fibers is at least 10 million fibers per gram (the percent of greater than 0.2mm are 66.3-98.3% which means that where the number of fibres in millions/g are 25-10,000 million, then the range for >0.2 mm is 17-9830 million fibres/gram which falls within the claimed range, the Examiner notes that should the 10,000 be a typo for an intended 10, that the lower end of the range would be 6.63 million fibres/gram which in combination with 25 million fibres/gram overlaps the claimed range) [0014-21; 0044; 0118].
As for claim 6, PER/BAC teach claim 1 and has a fiber length in the range of 0.25-0.7 mm (0.2-1.2 mm which overlaps the claimed range) [0090-91].
As for claim 8, PER/BAC teach claim 1 and PER teaches that the FDHRC has a Fines A value below 45% (in accordance with the instant specification, the Fines A value specifically refers to flakes of a certain ratio that are under than 0.2mm in length and width, therefore as all lengths of <0.2mm is composes at most 33.7% this falls within the claimed range of less than 45%) [PER: 0089].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Periera et al (US 2022/0380980) hereinafter PER in view of Backfolk et al (US 2019/0234020) hereinafter BAC as applied to claim 1 and further in view of Imai et al (US 2025/0075060) hereinafter IMA.
As for claim 7, PER/BAC teach claim 1 and PER further teaches that the distribution of fiber lengths and sizes affects the behavior and mechanical properties of the composition that comprises and them guarantees their elevated strength [0095]. Therefore it is understood that the Fines A and Fines B which correspond to fiber lengths are a parameter that would be optimized to grant elevated strength. 10-25 um which is 0.01-0.025mm [0119]. However, PER/BAC does not teach a ratio.
IMA teaches that when dealing with cellulose suspensions, that an ideal difference between the percentages of Fines B (fine fiber B) to Fines A (fine fiber A) ranges from the fines A value being lower than 0-35% (50-15 = 35 to 15-15 = 0, negative ranges not used for purposes of clarity) [0076-77]. This achieves an improved strength to the resultant product [0077].
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 difference range of IMA for the fiber length of PER/BAC in order to impart improved strength to the resultant product. As both IMA and PER/BAC address fiber lengths as strength additives, they are pertinent to the same problem and one of ordinary skill in the art would be motivated to utilize the difference range of IMA in the process of PER/BAC.
Claim(s) 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Periera et al (US 2022/0380980) hereinafter PER in view of Backfolk et al (US 2019/0234020) hereinafter BAC as applied to claim 1 and further in view of Winslow (US 2005/0028956) hereinafter WIN.
As for claims 26-28 PER/BAC teach claim 1 PER further teaches that the additive works as a wet strength enhancer [0009]. PER fails to teach the pulp in which PER is included in and that PER is used to form a paper/paperboard with plies.
WIN teaches a chemi-thermomechanical pulp (25% of an overall pulp) [0007] used to form a multiply paper (a tissue product with two or more layers) [Abstract; 0004; 0007] that employs a wet strength enhancer in the amounts of 0.226-2.26% of a pulp in which 25% of said pulp is chemi-thermomechanical therefore 0.226/(25+0.226) – 2.26 / (25+2.26) = 8-9% by weight (which falls within the claimed range) [0007; 0034]. WIN’s manner of employing the wet strength element to produce a pulp which is then used to produce a multiply product with improved wet strength [0007-8].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have employed the wet strength element of claim 1 to produce a pulp which is then used to produce a multiply product as taught by WIN in order to produce a multiply product with improved wet strength.
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