Detailed Action
The communications received 04/08/2026 have been filed and considered by the Examiner. Claims 1-8 are pending. Claims 1-4 are allowed.
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 .
Allowable Subject Matter
Claims 1-4 are allowed.
The following is an examiner’s statement of reasons for allowance:
Claim 1 and 3 currently requires that pulp be capable of being utilized for the very specific purpose of producing glass interleaving paper employ both a hydrophilic silicone and that the silicone content is 0.6-1.5 mg/kg which is essentially 0.6-1.5 ppm. In the prior art the employ of hydrophilic silicone like components in typical pulps is higher especially when used in release agents or adhesives. In glass interleaving paper and the pulp for its production, the silicone content is explicitly desired to be below 0.5 ppm due to the potential for contamination of the glass surface when the interleaving paper is used. Therefore the Applicant’s argument wherein the claimed invention is capable of employing more silicone content is a novel feature of claims 1 and 3 and is a range that falls outside of the uses of the prior art. There is no obvious teaching of this range nor is there prior art that anticipates this range. Therefore claims 1 and 3 and their dependents are allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asai et al (US 2015/0090413) hereinafter ASA and Haghihara et al (US 2017/0152633) hereinafter HAG.
As for claim 5-6, 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].
The pulp for glass interleaving paper of ASA is understood to result in the paper of with an additional basis weight feature which ASA teaches can 50 g/meter squared in examples [0081-83].
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.
However ASA fails to teach a basis weight that falls within 10-40 g/meters squared.
HAG teaches that a known basis weight for glass interleaving paper is 30-60 g/meters squared [0006].
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 basis weights of HAG as the basis weights of ASA as these are known basis weights that are usable in glass interleaving papers. As the basis weight of HAG overlaps the basis weight example of ASA and as both pertain to glass interleaving paper they are analogous art and one of ordinary skill in the art expects success int the combination.
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)].
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over ASA/HAG 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/HAG 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 teaches 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.
Response to Arguments
Applicant's arguments filed 04/08/2026 as applied to claims 5-8 have been fully considered but they are not persuasive as claims 5-8 are now rejected under newly found prior art HAG which teaches that the basis weight supplied in claim 5 is obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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