Detailed Office Action
The communication dated 6/28/2024 has been entered and fully considered.
Claims 50 and 51 have been canceled. Claims 58 and 59 are new. Claims 35, 36, 38, 39, 45-47, 49, and 55-57 have been amended. Claims 35, 36, 38-49, 52, and 55-59 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 .
Response to Arguments
Applicant argues the claims have been amended to claim “kraft fibers”. The applicant argues that MECHI teaches soda-aq pulping while kraft is NaOH-Na2S pulping.
In response the use of kraft vs soda-aq is a product by process limitation. The applicant’s attorney opines that the different process will produce differing pulps. However, the claim is not specific to the conditions of the kraft pulping. Depending on the conditions of the pulping (time, temperature, chemical concentrations) different properties will result. Soda-aq and kraft already produce similar pulps for hardwoods (which almond pulps are) [as evidenced by BOSE, see below].
A product-by-process claim is limited to the structure implied by the process steps. The term “kraft pulping” is so broad (because it does not include any pulping conditions) that it does not limit the structure in a meaningful way.
Applicant argues the claims have been amended to claim “kraft fibers”. The applicant argues that VERVERIS does not disclose kraft pulp. Applicant points to pg. 246 col.2 for the pulping being done with HNO3.
The applicant argues pulping is done with HNO3. However, this is only for measuring fiber size [section 2.2.1 fiber dimensions]. VERVERIS states longer pulping time and chemical charges are needed for almond wood [abstract] suggesting chemical pulping. VERVERIS discloses kraft pulping for olive tree branches and expects that almond pruning would produce a similar strength [pg. 249 co. 2 par. 2].
Applicant argues that VERVERIS discloses nothing about kraft pulp or how the process would be expected to interact with almond pulps.
This is incorrect VERVERIS states that kraft pulping produces pulp with high tensile/burst strength but low tear in olive branches and that almond branches would be expected to be similar.
Applicant argues that VERERIS does not disclose relatively high amounts of wood fibers of claims 36, 38 and 39.
VERVERIS is not used to reject claim 39. The Examiner agrees VERVERIS does not suggest 95% by weight almond pulp.
The Examiner disagrees with the applicant for claims 36 (10%) and 38 (about 50%). VERVERIS states low to moderate portions in tissue products with almond tree pulp. The Examiner interprets moderate as 50%. Further moderate certainly meets 10%.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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.
Claims 35, 36, 38, 39, 47-49, 52, 58, and 59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Preparation of Paper sheet from Cellulosic Fibers obtained from Prunus Amygdalus and Tamarisk SP, by MECHI et al., hereinafter MECHI as evidenced by Mechanistic Differences Between Kraft and Soda/AQ Pulping. Part:1 Results from Wood Chips and Pulps by BOSE et al., hereinafter BOSE.
As for claims 35, 36, 38, 39 and 47, MECHI discloses a paper sheet with 100% fibers from prunus amygdalus (almond tree) [abstract, pg. 863 col. 2 last par. – pg. 864 col. 1, Table 3].
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983
In the instant case the soda-aq pulp would be structurally substantially similar [“similar to kraft pulps in all respect but for bleachability” as evidenced by BOSE abstract] or an obvious variant thereof to the kraft pulp. The applicant does not claim and specifics to the kraft pulping (time, temperature, chemical concentration) therefore it could be made at a higher kappa number and therefore have decreased bleachability.
As for claims 48, 49, and 52, MECHI makes a paper sheet [Table 3]. The use of the paper sheet as a sanitary paper, tissue or napkin is an intended use.
As for claims 58 and 59, these are product by process limitations. It is the Examiners position that the pulp produced from almond wood is substantially the same as that produced without debarking and delimbing.
Claims 35, 36, 38, 40-49, 52, and 55-59 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2009/0311478 EHLERDING et al., hereinafter EHLERDING, in view of Fiber dimensions, lignin and cellulose content of various plant materials and their suitability for paper production, Industrial Crops and Products, VERVERIS et al., hereinafter VERVERIS.
As for claim 35, 36, 38, 40 and 41, EHLERDING discloses a multi-ply sanitary tissue product [0025]. EHLERDING discloses a first ply comprises 70 to 95% virgin fibers [0047 and 0 to 35% recycled fibers [0043]. EHLERDING discloses the first ply can have 100% virgin hardwood fibers [0043]. The virgin fibers can be hardwood fibers [0045]. The first ply reads on “paper product” prior to joining with the second ply.
EHLERDING does not discloses almond tree fibers.
VERVERIS discloses that hardwood can be replaced in low to moderate portions in tissue products with almond tree pulp [pg. 252 col. 2 4.]
VERVERIS discloses pulping almond trees [abstract; pg. 246 col. 2 2.1]. VERVERIS discloses chemical pulping [abstract]. VERVERIS discloses kraft pulping for olive tree branches and expects that almond pruning would produce a similar strength as olive tree branches for kraft pulping [pg. 249 co. 2 par. 2].
At the time of the invention it would be obvious to the person of ordinary skill in the art to substitute a moderate amount of hardwood fibers with almond tree kraft pulped fibers. The person of ordinary skill in the art would be motivated to do so by VERVERIS to use residue from crops where there are insufficient wood resources [pg. 245 col. 1] and kraft pulping produces high tensile strength. The almond tree waste is typically burned and therefore the use of almond tree pulp is a higher value add [pg. 246 col. 2 2.1]. The person of ordinary skill in the art would expect success as VERVERIS states that that hardwood can be replaced in low to moderate portions in tissue products with almond tree pulp.
The Examiner interprets a moderate replacement as about 50%. Therefore the first ply with 100% virgin fiber would have about 50% hardwood and 50% almond tree pulp. A first ply with 95% virgin fiber and 5% recycled fiber would have about 47.5%. Alternatively, it is prima facie obvious to optimize concentration through routine experimentation. At the time of the invention it would be obvious to optimize concentration of almond fiber used to replace hardwood fiber through routine experimentation (which is a result effective variable) [MPEP 2144.04 (II)(A). The person of ordinary skill in the art would look to balance the worse properties of almond fibers versus the cost compared to hardwood fibers.
Differences in concentration are typically prima facie obvious absent evidence of criticality.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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)
Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.
As for claim 42, the recycled paper of EHLERDING can be from newsprint (ONP) and deinked fibers [0020].
As for claim 43, EHLERDING discloses chemically pulped wood fibers [0016]. The use of sawdust versus chips to produce the fibers is a product by process limitation.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process."
In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
As for claim 44, EHLERDING discloses chemically pulped virgin wood fibers [0016]. The use of sawdust versus chips to produce the fibers is a product by process limitation. A first ply with 95% virgin fiber and 5% recycled fiber would have about 47.5% almond fiber as per supra (a moderate substitution of almond wood fiber).
As for claims 45 and 46, EHLERDING discloses a first ply comprises 70 to 95% virgin hardwood fibers which falls within the claimed range and 0 to 35% recycled fibers which overlaps the claimed range [0043].
As for claims 47, EHLERDING discloses the first ply can have 100% virgin hardwood fibers [0043] and a moderate amount of those fibers can be substituted with almond fibers as per the combination with VERVERIS above.
As for claims 48-52, EHLERDING discloses a multi-ply sanitary tissue product [0025]. This includes absorbent towels (wiper), facial tissue and bath tissue[0025].
As for claim 55, the first ply of EHLERDING can comprise 100% virgin hardwood fibers of which a portion are substituted with almond wood fibers as per supra. [0047]. The second ply can comprise 100% recycled fibers (therefore no almond fibers) [0044].
As for claims 56-57, the first ply of EHLERDING can comprise 100% virgin hardwood fibers of which a portion are substituted with almond wood fibers as per supra. [0043]. The second ply can comprise 0-35% hardwood virgin fibers [0044] of which a portion are substituted with almond wood fibers as per supra.
As for claims 58 and 59, , these are product by process limitations. It is the Examiners position that the pulp produced from almond wood branches would be substantially similar. The almond wood branches are not stated to be debarked.
Claims 35, 36, 38, 39, 47-49, 52, 58, and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Preparation of Paper sheet from Cellulosic Fibers obtained from Prunus Amygdalus and Tamarisk SP, by MECHI et al., hereinafter MECHI, in view of, Mechanistic Differences Between Kraft and Soda/AQ Pulping. Part:1 Results from Wood Chips and Pulps by BOSE et al., hereinafter BOSE.
As for claims 35, 36, 38, 39 and 47, MECHI discloses a paper sheet with 100% fibers from prunus amygdalus (almond tree) [abstract, pg. 863 col. 2 last par. – pg. 864 col. 1, Table 3].
The Examiner has argued that soda-aq and kraft pulp would be substantially similar or obvious variants thereof., Alternatively, BOSE discloses both soda-aq pulping and kraft pulping and suggests that they produce similar pulps but that kraft pulps may be more bleachable. At the time if the invention it would be obvious to the person of ordinary skill in the art to apply kraft pulping instead of soda-aq pulping on the almond wood of MECHI. The person of ordinary skill in the art would be motivated to do so to increase the bleachability of the pulp [abstract].
As for claims 48, 49, and 52, MECHI makes a paper sheet [Table 3]. The use of the paper sheet as a sanitary paper, tissue or napkin is an intended use.
As for claims 58 and 59, these are product by process limitations. It is the Examiners position that the pulp produced from almond wood is substantially the same as that produced without debarking and delimbing.
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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 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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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748