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 .
Election/Restrictions
Applicant’s arguments regarding the restriction requirement are persuasive and as such, said requirement has been withdrawn.
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.
Claims 4, 17, and 18 are 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.
Regarding claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation 20 g/t – 40 g/t, and the claim also recites 30 g/t – 35 g/t which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 17 recites the limitation "the second wire section" and “the dryer section” in line 4. There is insufficient antecedent basis for this limitation in the claim. It is noted that claim 17 depends from claim 14, while a second wire section and a dryer section are only introduced into claim 16.
Claim 18 recites the limitation "the dryer section" in line 7. There is insufficient antecedent basis for this limitation in the claim. It is noted that claim 1 depends from claim 14, while a second wire section and a dryer section are only introduced into claim 16.
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.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fetner (WO 2008/157132) and optionally in view of Shannon (US 2008/0142177).
Fetner is directed to a product include at least one paper layer, wherein said at least one paper layer can be formed with a combination or mixture of recycled fibers and virgin fibers (Page 3, Lines 7+ and Page 19, Lines 15+). Fetner further states that respective layers or plies can have different fiber compositions (Page 23, Lines 25+). Thus, when forming a product with 2 plies having different fiber compositions, it appears that respective layers would necessarily demonstrate different absorbency rates. One of ordinary skill in the art would have found it obvious to use first and second papers formed with different fiber compositions in view of the general disclosure of Fetner and such is seen to satisfy the claimed arrangement (any of the paper layers can be viewed as the first paper layer or the second paper layer). Shannon is optionally applied to specifically evidence the manufacture of a multi-layer paper product in which a first layer comprises virgin fiber and a second layer comprises at least 30% of recycled fiber (Paragraph 7).
Additionally, regarding claim 1, Fetner states that an additive composition can be applied to one or both surfaces of a base web, which itself can be formed with multiple layers (Page 4, Lines 10+). More particularly, said additive composition can include chemicals such as absorbency aids (claimed agent for increasing the resin absorbency) in the form of cationic, anionic, or non-ionic surfactants (Page 22, Lines 3+). One of ordinary skill in the art would have found it obvious to include such an aid to a single surface or to both surfaces of said base web and a multitude of resulting products would satisfy the claimed invention. It is emphasized that there are only 3 possible configurations when including multiple paper layers and providing an absorbency aid in an additive composition: absorbency aid is provided solely on a surface of a paper layer formed entirely of virgin fibers (claimed first paper layer), absorbency aid is provided solely on a surface of a paper layer formed with recycled fibers (claimed second paper layer) (satisfies claim 1), or absorbency aid is provided on both paper layer surfaces (claimed first and second paper layer) (satisfies claim 1). One of ordinary skill in the art would have found it obvious to include an absorbency aid on a surface of the second paper layer given the general disclosure detailed above.
Lastly, regarding claim 1, the language “for and/or configured to form a layer, in particular the core layer of a laminated board, by impregnating the paper web” is directed to the intended use of a paper web and such fails to further define the structure of the claimed paper web.
Regarding claims 2 and 15, the disclosed surfactants appear to be directly analogous to that required by the claimed invention and as such, it appears that the agent or absorbency aid of Fetner would similarly result in the claimed properties or characteristics.
With respect to claim 3, the claims are directed to a method of manufacture and such fails to further define the structure of the claimed article or paper web.
Regarding claim 4, Fetner states that the additive composition as a whole can be added in an amount between 0.01 percent to 30 percent by weight (Page 24, Lines 27+). Given that a lubricant or agent for increasing resin absorbency can be included in such a composition, it reasons that Fetner encompasses configurations including the claimed amount of agent. Also, Applicant has not provided a conclusive showing of unexpected results for the claimed range. It is emphasized that a fair reading of Fetner does not limit the amount of agent and given the general disclosure that the additive composition can have a broad range of loadings, it reasons that the individual agent loading can have a wide range of loadings, including that required by the claimed invention.
As to claim 5, Shannon suggests that a first paper layer can be formed entirely of virgin fibers and a second paper layer can be formed with at least about 30% by weight of recycled fibers, at least about 50% by weight of recycled fibers, at least 80% by weight of recycled fibers, and even up to 100% by weight of recycled fibers (Paragraphs 7 and 8). Given that recycled fibers are recognized as having smaller absorbency, as compared with virgin fibers, it reasons that Fetner encompasses a wide variety of configurations in which a difference of absorbency falls within the broad range required by the claimed invention. It is emphasized that a greater percentage of recycled fibers would have been expected to result in a greater difference in absorbency and the arrangement taught by Fetner is seen to be substantially the same as that required by the claimed invention (would have been expected to result in the same difference in absorbency).
Regarding claim 6, the claimed absorbencies are consistent with those that are conventionally associated with paper layers in general and as detailed above, the general disclosure of Fetner in view of Shannon is seen to encompass configurations in which a difference in absorbency is at least 30% (larger differences result when larger recycled fiber loadings are present in the second paper layer, as taught by Shannon).
With respect to claim 7, as noted above, a first paper layer can be entirely formed with virgin fibers and a second paper layer can be entirely formed with recycled fibers. Additionally, the claimed ash rate is consistent with well-known and conventional paper layers and Applicant has not provided a conclusive showing of unexpected results for the claimed range.
Regarding claim 8, Fetner states that “in general”, a basis weight ranges between 10 gsm and 110 gsm (Page 25, Lines 3+). This language suggests that basis weight values greater than 110 gsm are within the scope of Fetner and such overlaps with the claimed range between 140 gsm and 110 gsm. One of ordinary skill in the art would have found it obvious to use basis weight values in accordance to the claimed invention given the general disclosure detailed above, it being noted that Fetner is broadly directed to a wide variety of products (as evidenced by the language “other similar products”-Page 1, Lines 15+).
As to claim 9, the paper web of Fetner has a bulk that can be less than 3 cm3/gram (corresponds with a density of approximately 333 kg/m3) (Page 25, Lines 11+). When the bulk decreases, the corresponding density increases. Thus, the disclosed bulk less than 3 cm3/gram corresponds with a density of at least approximately 333 kg/m3 and such fully encompasses the broad range of the claimed invention. Also, Applicant has not provided a conclusive showing of unexpected results for the claimed density range.
Regarding claims 10-12, given the similarities in materials, basis weight, and density between the paper web of Fetner and that of the claimed invention, it reasons that the paper web of Fetner would demonstrate an air permeability, wet tensile strength, pH value, and average length-weight fibre length in accordance to the claimed invention. It is emphasized that the original disclosure fails to identify additional factors that contribute to the claimed properties.
As to claim 13, respective paper layers of Fenten can be formed with kraft fibers (Page 18, Lines 19+) and as such, the paper web of Fenten, which can include multiple paper layers, can be broadly viewed as being configured as a double layer impregnable kraft paper.
With respect to claim 16, Figure 2 depicts an assembly for the manufacture of a single paper layer and in such an instance, said assembly includes a first wire section to form a first fibre web (aqueous suspension of fibers is injected from headbox 34 onto forming fabric 38) and a dryer section (dryer 48). When forming a paper web with multiple paper layers, a second wire section would be expected to be present (would be required to form a second paper layer having a different combination or mixture of fiber materials as taught by Fetner and Shannon). Also, a step of combining respective paper layers prior to drying can be viewed as a pressing step that forms a bonded assembly.
As to claim 17, Fetner describes an exemplary method in which an additive composition (which contains a surfactant or claimed agent) is added to a web after formation and drying (Page 30, Lines 19+). This method is seen to correspond with a providing step after the second wire section.
Regarding claim 18, said additive composition (which contains a surfactant or claimed agent) can be applied to the base web when wet or dry and additionally, said additive composition can be sprayed onto the web or onto a heated drum (Page 17, Lines 14+). Fetner also states that the additive composition can be added to the base web prior to dryer 48 or after dryer 48 (Page 28, Lines 20+). In the former, the paper layers and the additive composition would all be dried together. Additionally, the claimed method is directed to a method for producing a paper web and limitations pertaining to a subsequent introduction of liquid resin fail to further define the claimed method (presence of surfactant would be expected to reduce surface tension and/or improve capillarity and thereby increase the absorbency of the second paper layer- claims fail to require the actual introduction of liquid resin).
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 September 15, 2026
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