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 .
Claim Objections
Claims 8 and 9 are objected to because of the following informalities: the phrases “being a coniferous tree” (claim 8) and ‘being a broadleaved tree” are redundant by definition of such trees. Appropriate correction is required.
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 3-5, 7-9, 11-14 and 16 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 claims 3-5, 7, 11 and 13, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 3-5, 7-9, 12-14 and 16 are vague and indefinite because, a broad range or limitation followed by linking terms (e.g., preferably, maybe, for instance, especially) and a narrow range or limitation within the broad range or limitation is considered indefinite since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.
Claims 3 and 4 are vague and indefinite since they are unclear, i.e., it is unclear how the Schopper-Riegler (hereinafter SRº) can be obtained/determined for the BCTMP and Beached Softwood after the mixing with the other pulps? Would that be the SRº of the mixture or the SRº of the BCTMP and bleached Softwood before the mixing? For the purpose of this office action any of those options would read on the claims.
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Antila et al., (hereinafter Antila), EP 3059344 B1.
With regard to claims 1-2, 6-7, 13-14 and 16-18, Antila teaches a paper and method of manufacturing a substrate/paper for use on a release liner including a blend of bleached chemi-thermo-mechanical Pulp (hereinafter BCTMP) and a chemical pulp which is a blend kraft softwood and hardwood; see ¶-[0015], [0033] and [0058]. Antila teaches also basis weight (¶-[0016], [0042] and [0054]), density (¶-[0014], [0041], etc.) and transparency (¶-[0017], [0029], [0055], etc.) all the properties falling within the claimed range of claims 1, 13-14 and 16-17. Antila also teaches the amount of BCTMP falling within the claimed range, i.e., from 1-50% with preferred range between 10 to 35% of the weight of the paper (¶-[0018]) and on ¶-[0083] table 2 shows an example including 10% by weight of BCTMP. The examples teach the use of the chemical pulps, i.e., the blend of Kraft hardwood and softwood pulp/fibers of 75% and 90% (table 2 ¶-[0083]), but does not explicitly teach the amount of each softwood and hardwood in the mixture, but as stated in the reference each type of pulp increase or decrease a property, e.g., the hardwood pulp increase the brightness and transparency, while the softwood increases strength; see ¶-[0029] and thus the amount of each can be optimized to desired properties, since the reference teaches that they are result effective variables (for claims 1 and 17). Antila teaches the making of release and glassine papers with the blend of Kraft pulps taught above that are supercalender; see for example ¶-[0051] for the making of glassing and greaseproof papers and [0054]-[0064] for the making of release paper. Note that the reference teaches the same method of measuring the properties; see table on ¶-[0038]-[0041].
Regarding to claims 3-4, Antila teaches the SRº of the pulps, the BCTMP and bleached Softwood falling within the claimed range; see ¶-[0058]. Note that for the bleached Softwood the reference teaches Canadian Standard Freeness between 180 ml (about 55 SRº) to 500 ml (25.3 SRº) that falls within the claimed range.
With regard to claim 5, Antila teaches that the weight average fiber length is around 1.04 mm, which falls within the claimed range; see ¶-[0069] and figures 2a and 2b.
Regarding to claims 8-11, Antila teaches that the BCTMP includes softwood and hardwood fibers/pulp and teaches species of the softwood, e.g., spruce which correspond to genus Picea; see ¶-[0076] and on ¶-[0106] discloses the use of the same type/genus of claims 8 and 10 and hardwood, e.g. eucalyptus, which correspond to Eucalyptus globulus and Aspen, which correspond to the genus Populus; see ¶-[0067] (reading on claims 9 and 11). Note that using any of the species of hardwood and/or softwood in the blend of BCTMP would have been obvious to one of ordinary skill in the art since he/she would have reasonable expectation of success if any specie of the wood were used. Note that it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
With regard to claim 12, while Antila teaches the use of a blend of Kraft softwood and Kraft hardwood pulp/fibers; see for example ¶-[0076], [0083], [0086], etc., but Antila is silent with regard to the proportion of each pulp/fiber in the BCTMP. However, as indicated above the amount of each of the fibers affect different properties, i.e., the amount/proportion of each type of fiber/pulp is a result effective variable and thus changing the proportion to desired level is within the level of ordinary skill in the art and considered obvious, absent a showing of unexpected results.
Regarding to claim 15, while Antila shows the use of the same standard ISO 11475 to measure CIE Whiteness and tint, Antila does not disclose the color space values as claimed, but obtaining desired color of the paper is considered to be within the level of ordinary skill in the art and obvious absent a showing of unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “BCTMP-Tailored Low Basis Weight SCK Paper for Release Liner.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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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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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF