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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” “Disclosed,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The disclosure is objected to because of the following informalities: on page 3, lines 18 and page 21, line 10, the units of the porosity “cubic feetper minute” should be changed to --cubic feet per minute--.
Appropriate clarification/correction is required.
Claim Interpretation
The following terms in the Claim(s) have been interpreted as defined in the specification or as commonly known in the art, as follows:
Non-Wood Pulp: a pulp consisting entirely of non-wood fibers, as opposite to a wood pulp or blended pulp, which can include non-wood pulp as-well.
Fiber Length: the term has been interpreted as defined in the specification; see for example page 6, lines 4-7, defined as: the term "Fiber Length" generally refers to the length weighted average fiber length (WAFL) of fibers measured using an OpTest Fiber Quality Analyzer, model FQA-360 (OpTest Equipment, Inc., Hawkesbury, ON).
Porosity as the permeability of the paper sheet made using the claimed pulp. Defined on page 5, lines 18-22 as “As used herein, the term "Porosity" generally refers to the air permeability of a sample. Porosity is generally measured as described in the Test Methods section below and commonly has units of volume per unit area per unit time such as cubic feet per minute (cfm). For a given pulp sample, porosity is generally measured by dispersing the pulp in water to form a handsheet.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-16 of U.S. Patent No. 12,227,900 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pulp of the US Patent has almost all the properties explicitly recited, e.g., porosity, fiber length and brightness, and the non-recited properties, e.g., the moisture content and sheet bulk are inherent to the sheet of the US patent or at the very least obvious to optimize, vary to one of ordinary skill in the art. Note that the moisture content is within the equilibrium content of a pulp sheet and the bulk is also within the range of sheet pulps or at the very least can be adjusted to desired bulk, e.g.. pressing it/calendering and thus would have been obvious to one of ordinary skill in the art. Note also that the other properties are recited in the dependent claims. Note that by virtue of the use of the open-ended transitional phrase “comprising” the claim(s) are open to other properties included in the reference application and thus the reference application can be used to reject the claims of the current application, since the claims recite the same claimed properties in overlapping range(s).
Allowable Subject Matter
Claims 1-15 would be allowable if rewritten or amended to overcome the rejection(s) under Double Patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not teach nor fairly suggest a non-wood pulp, from a plant of the family Asparagaceae, having the claimed properties. Note that the closest reference, Sánchez et al. in “Chemical and thermogravimetric analysis and soda and organosolv pulping of Hesperaloe funifera”, Cellulose Chemistry and Technology, 1 September 2010, Vol. 44, No. 9, pages 327-334, cited in the IDS filed on June 30, 2023 and used to reject the claims of parent application PCT/US21/058189, does not teach the fiber length as defined in the current specification, nor the porosity of the pulp/handsheet and the current specification, see comparative example 1, properties indicated in table 9, which shows the same pulping of the non-wood pulp, Hesperaloe Funifera, have length weighted average fiber length (LWAFL also abbreviated as WAFL) above the claimed range, i.e., 2.86 mm and porosity lower than the claimed range, i.e., table 9 shows 37 cfm).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Non-Wood Pulp Having High Porosity.”
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 on 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