Detailed Action
The communications received 07/09/2024 have been filed and considered by the Examiner. Claims 1-8 are pending.
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 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asai et al (US 2015/0090413) hereinafter ASA.
As for claim 1, ASA teaches a pulp for glass interleaving paper comprising a hydrophilic modified silicone oil (the modified silicone oil that is water-soluble) [Abstract; 0028; 0061-63] in which the content ratio of said oil to pulp is from 0.5 -2 mg/kg (as 0.1 ppm or less which overlaps the claimed range) [0019-20; 0028]. Should the Applicant disagree that the silicone value apply to the modified hydrophilic component, ASA teaches that the silicone contained in glass interleaving paper is controlled in order to reduce the contamination of the glass by the silicone transfer while still achieving the benefits of employing a silicone based defoamer [0027-28; 0047-48].
In accordance with the MPEP, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)]. Therefore in the prior art, the amount of silicone including the contribution from the modified silicone component is a routinely adjusted in order to find the optimum workable ranges to achieve the effect of the benefits of the silicone based defoamer without the known drawbacks during manufacturing.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the silicone range contribution as claimed as this amounts to a workable range found by routine experimentation to achieve the effect of the benefits of the silicone based defoamer without the known drawbacks during manufacturing.
In accordance with the MPEP, ‘ 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)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
As for claim 2, ASA teaches claim 1 and that the hydrophilic modified silicone oil is contained in a silicone-based anti-foaming agent, and wherein the silicone based anti=foaming agent is an oil in water type foaming agent [0028].
As for claims 3-4, this method is understood to be the steps of combining the components to arrive to the products of claims 1-2. As the products require some step of combination in order to exist, they are understood to meet these limitations.
As for claims 5-6, this is understood to be the resultant paper of claims 1-2 taught by SAS with an additional basis weight feature which ASA teaches as 50 g/meter squared which falls within the claimed range [0081-83].
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over ASA as applied to claims 5 and 6 and further in view of Pruszynski et al (US 5,798,023) hereinafter PRU.
As for claims 7-8, ASA teaches claims 5-6 but fails to teach a pitch control.
PRU teaches that pitch control is important as it limits the deposition of contaminants on the paper machine and associated parts [Abstract]. PRU teahces that in a pulp one manner in which this is used is by supplying a talc based pitch control agent in the amounts of 0.05 kg/ton of talc per pulp which is 0.00005 which is 0.005 % which falls within the claimed range [col. 9 l. 30-35].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added talc as a pitch control taught in the amounts of PRU to the pulp of ASA in order to limit the deposition of contaminants on the paper machine and its associated parts. As both ASA and PRU pertain to pulping they are analogous art and one of ordinary skill in the art expects success in their combination.
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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/ELISA H VERA/ Examiner, Art Unit 1748