Detailed Office Action
The communication dated 7/22/2024 has been entered and fully considered.
The instant case in a continuation of 17/084,016. The instant 7/22/2024 claim set is identical to the 10/29/2022 claim set examined in the 1/18/2023 non-final action.
Claims 58-98 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 § 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 74, 75, 78, 81-83, 85, 95, and 98 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.
Claim 74 recites the limitation "the structural component" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 75 depends from claim 74 and is similarly rejected
As for claim 78, the wording “is a foam manufactured” is unclear as it appears there should be a now after manufactured or the term “a” should not be before “foam”.
The term “medium to high” in claim 81 is a relative term which renders the claim indefinite. The term “medium to high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “very high” in claim 81 is a relative term which renders the claim indefinite. The term “very high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “medium to high” in claim 82 is a relative term which renders the claim indefinite. The term “medium to high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “very high” in claim 82 is a relative term which renders the claim indefinite. The term “very high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 82 and 83, 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).
As for claim 85, the applicant claims “the aqueous slurry” it is not clear which aqueous slurry the applicant is referring to (i.e. the first or second). For the purpose of examination, the examiner interprets it as the “first aqueous slurry”.
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 95 recites the broad recitation 1-25 mm, and the claim also recites multiple sub ranges which are the narrower statements 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.
As for claim 98, there is not claim 19, claim 98 should depend from claim 79.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 58-73, 79-94, 97, and 98 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0032531 HUSBAND et al., hereinafter HUSBAND, in view of Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK, as evidenced by U.S. 8,231,764 HUSBAND et al., hereinafter HUSBAND II.
As for claims 58, 62, and 65, HUSBAND discloses making a paper product comprising pulp and microfibrillated cellulose [abstract].
HUSBAND discloses the TMP pulp can be used with recycled pulp or broke when making the paper [0021].
HUSBAND does not disclose how used paper is turned into recycled pulp and the consistency it is done at.
SMOOK discloses that recycled paper is turned into recycled pulp in a low-consistency pulper [pg. 211 col. 1 and col. 2] that disintegrates the paper into fibers at a low consistency of 5-8% which falls within the claimed range.
At the time of the invention it would be obvious to the person of ordinary skill in the art to produce the recycled pulp of HUSBAND using the low-consistency pulp of SMOOK. The person of ordinary skill in the art would be motivated to do so to use the most common design [pg. 211 col. 1 last par] while removing strings, wires, and rags from the pulp [pg. 211 col. 2 par. 1]. The person of ordinary skill in the art would expect success as the 5-8% consistency pulper is the most common.
HUSBAND provides an aqueous slurry of microfibrillated cellulose with one or more inorganic particles at 99.5:0.5 to 0.5:99.5 which is the claimed range during co-grinding to form the MFC [0056-0057] in an aqueous environment [0023]. HUSBAND discloses the use of both virgin and recycled pulp [0027] for making MFC. HUSBAND discloses 50:50 inorganic to MFC [0056].
HUSBAND discloses using 0.5 to 3% microfibrillated cellulose in the paper [0058]. HUSBAND discloses using a fourdrinier machine [0120] which is a former machine. A fourdrinier machine has a press and drying section [see e.g. SMOOK pg. 228 Figure 16-1]. A fourdrinier device drains pulp to form a sheet. HUSBAND does not disclose the consistency during mixing the MCF/inorganics and recycled pulp/TMP pulp or pumping the mixture to the fourdrinier device.
SMOOK discloses that various furnishes and additives are added into the blend chest prior to the paper machine and then pumped to a machine chest and then to the paper machine [pg. 207 Figure 13-27]. SMOOK discloses that the consistency from the blend chest to the machine chest at 2.8-3.2% which falls with the claimed range [pg. 207 col. 2].
At the time of the invention it would be obvious to use the known blend chest of SMOOK prior to the machine chest and fourdrinier machine. The person of ordinary skill in the art would look to use the known blend chest of SMOOK to have the advantages of a controlled blending to prevent variability of the paper made later [SMOOK pg. 207 col. 2 par. 1]
As for claim 59, SMOOK discloses OCC is one known recycled paper [pg. 209 col. 2].
As for claim 60, HUSBAND discloses recycled pulp, broke, or paper mill wastes [0021].
As for claim 61, SMOOK discloses disintegrated the paper into fibers at a consistency of 4-8% which is outside with the claimed range [pg. 211 col. 1 and col. 2]. However, SMOOK also says low consistency which is defined as 1-8% [Handbook of Pulp and Paper Terminology by SMOOK]
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Furthermore, changes in concentration are typically prima facie obvious.
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 63, HUSBAND does not disclose refining the recycled pulp or any specific freeness of the recycled pulp. SMOOK discloses refining pulp including recycled pulp prior to papermaking [pg. 206 col. 2]. SMOOK discloses increasing refining from 800 freeness to 500 freeness increases tensile and burst at the cost of tear [pg. 206 Figure 13-26]. At the time of the invention it would have been obvious to the person of ordinary skill in the art to optimize the refining/CSF of the recycled pulp of HUSBAND/SMOOK to achieve the desired tear, tensile, and burst characteristics.
As for claim 64, SMOOK discloses that a conventional pulper system uses a deflaker [pg. 213 Figure 14-7].
As for claim 66-68, HUSBAND discloses kaolin clay [0061], GCC [0063], PCC [0064], and mixtures thereof [0061].
As for claim 69, HUSBAND discloses magnesium carbonate and dolomite [0061].
As for claim 70, HUSBAND discloses adding inorganic materials separate from the MFC [0060]. HUSBAND does not explicitly disclose that these inorganic materials are added with the recycled pulp/TMP pulp or separately when all are mixed with the MFC. However, whether they are added first with the recycled pulp/TMP pulp or added into the blend chest of SMOOK is a change in order of addition and would be prima facie obvious [see e.g. MPEP 2144.04 (IV) (C)].
As for claim 71, HUSBAND disclose softwood kraft pulps for making MFC [0115; RM90 is a kraft pulp as evidenced by HUSBAND II col. 31 lines 26-37].
As for claim 72, HUSBAND discloses recycled pulp for making MFC [0027].
As for claim 73, HUSBAND discloses using 0.5 to 3% microfibrillated cellulose in the paper [0058] and HUSBAND discloses 50:50 inorganic to organic [0056]. This would be a 1% to 6% total range which encompasses the claimed point.
As for claim 79-81, HUSBAND discloses using retentions aids to the paper [0094]. HUSBAND discloses cationic polyacrylamide 830 which the Examiner interprets as meeting the claim.
As for claim 82-84, these claims only limit the drainage aid, formation aid, or sizing aid, respectively. They do not require they actually be used. As HUSBAND teaches a retention aid for claim 80 it meets these claims.
As for claim 85, SMOOK discloses disintegrated the paper into fibers at a consistency of 5-8% which abuts with the claimed range [pg. 211 col. 1 and col. 2].
As for claim 86, HUSBAND discloses 50:50 inorganic materials to MFC [0056].
As for claims 87 and 88, HUSBAND discloses using 0.5 to 3% microfibrillated cellulose in the paper [0058]. HUSBAND discloses 50:50 inorganic materials to MFC [0056]. Therefore, the total on pulp will be 1-6% which falls within the claimed range.
As for claims 89-93, the wherein clause is not given patentable weight as it merely describes the instead result and is not an active limitation.
‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’"
Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003))
Alternatively, should the limitation be given weight as substantially the same MFC is added at substantially the same amount it would be expected that substantially the same result would occur including an increase in the modulus of elasticity and/or modulus of rupture. HUSBAND further supports this by saying that burst and strength increase when adding the MFC [0109].
As for claim 94, the MFC of HUSBAND has a fiber steepness of 20 to 50 [abstract].
As for claim 97, HUSBAND discloses the additive of starch [0089].
As for claim 98, HUSBAND does not disclose rosin. SMOOK discloses that rosin is a known additive [pg. 223 col. 2 par. 3]. At the time of the invention it would be obvious to the person of ordinary skill in the art to add rosin of SMOOK to the sheet of HUSBAND the person of ordinary skill in the art would be motivated to do so to size the paper [pg. 223 col. 2]. The person of ordinary skill in the art would expect success as HUSBAND discloses adding sizing agents [0094].
Claims 74-77 and 95-96 are rejected under 35 U.S.C. 103 as being unpatentable over HUSBAND and SMOOK as applied to claim 58 above, and further in view of U.S. 2013/0295399 SCHAEFER et al., hereinafter SCHAEFER.
As for claims 74-77 and 95-96, HUSBAND and SMOOK teach the features as per above. HUSBAND does not disclose compression molding of sheets/board to form structure components of furniture, tiles, wall board, or insulation board.
SCHAEFER discloses taking multiple sheets (plies) of paper which can comprise TMP [0048] and recycled paper pulp [0054] and then compression molding them [0029]. This can form panels for furniture boards [0276] and shelves [0277; i.e. storage units/cupboards]. The panels can be used for tiles or fiberboard [0279]. The compressed molded sheets have a thickness of 12 to 30 mm which overlaps with the claimed range [0283]
At the time of the invention it would be obvious to take the paper sheets of HUSBAND/SMOOK and compression mold them with the techniques of SCHAEFER. The person of ordinary skill in the art would be motivated to do so to make a value-added product from the intermediate product of HUSBAND/SMOOK and hence an economical reason to combine the references. The technique of SCHAEFER provides multiple advantages including improved mechanical properties, high strength, stiffness, and heat resistance [0010].
In addition to the above as for claim 76, the wherein clause is not given patentable weight as it merely describes the instead result and is not an active limitation.
‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’"
Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003))
Alternatively, as the sheets of paper have a greater strength from the addition of MFC they will also have a greater strength to accept fasteners.
Claim 78 is rejected under 35 U.S.C. 103 as being unpatentable over HUSBAND and SMOOK as applied to claim 58 above, and further in view of WO 2013/160553 A1 HEISKANEN et al., hereinafter HEISKANEN.
As for claim 78, HUSBAND and SMOOK teach the features as per above. HUSBAND discloses making a sheet with TMP, MFC, inorganics, and recycled pulp using a fourdrinier former. HUSBAND does not disclose performing a foam manufacturing technique.
HEISKANEN discloses making paper with CTMP and TMP pulp [pg. 3 lines 29-31] and MFC [pg. 3 lines 23-25]. HEISKANEN suggests performing foam forming [abstract, pg. 4 lines 5-9, claims 1 and 2] when making paper. At the time of the invention it would be obvious to the person of ordinary skill in the art to use the foam forming of HEISKANEN during the paper making of HUSBAND/SMOOK. The person of ordinary skill in the art would be motivated to do so by HEISKANEN to prevent the forming of flocs during forming [pg. 4 lines 6-9] and therefore making paper with better printability and tensile strength [g. 4 lines 9-11 and abstract].
Conclusion
This is a continuation of applicant's earlier Application No. 17/084,016. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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
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