Prosecution Insights
Last updated: April 19, 2026
Application No. 18/836,500

TRANSPARENT PAPER

Non-Final OA §112
Filed
Aug 07, 2024
Examiner
FORTUNA, JOSE A
Art Unit
1748
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Mondi AG
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 5m
To Grant
89%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
1030 granted / 1299 resolved
+14.3% vs TC avg
Moderate +10% lift
Without
With
+9.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
51 currently pending
Career history
1350
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
44.0%
+4.0% vs TC avg
§102
14.4%
-25.6% vs TC avg
§112
27.9%
-12.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1299 resolved cases

Office Action

§112
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 The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use. Arrangement of the Specification As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading: (a) TITLE OF THE INVENTION. (b) CROSS-REFERENCE TO RELATED APPLICATIONS. (c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT. (d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. (e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM. (f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. (g) BACKGROUND OF THE INVENTION. (1) Field of the Invention. (2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98. (h) BRIEF SUMMARY OF THE INVENTION. (i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S). (j) DETAILED DESCRIPTION OF THE INVENTION. (k) CLAIM OR CLAIMS (commencing on a separate sheet). (l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet). (m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system. Claim Objections Claim 1 is objected to because of the following informalities: although acronyms/abbreviations are permitted in a claim, they should be defined, at least it the first instance to avoid any confusion with other(s) that might have the same abbreviation. PEG of claim1 should be defined. 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 1-13 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. In claims 1 and 7 the phrases “low consistency” and “high consistency” renders the claims vague and indefinite, since “high” and “low” are relative terms that have not been defined in the claim(s) and/or the specification and thus the metes and bounds of patent protection desired cannot be ascertained. Claim 1 is also vague and indefinite, because the basis for the percentages is missing, i.e., are they % by volume, % by mass, % by weight? In claims 4 and 12 the phrase “surface starch” is unclear, i.e., it is unclear if the phrase refers to a starch that is added to the surface of the web or it is a specific type of starch. Claim 7 is vague and indefinite because step i) assume that steps f) and g) are optional steps, but they are actually, as amended, not optional, and thus proviso statement does not make any sense. Claim 10 is vague and indefinite because it is unclear if the recited weight is of PEG or some other product, i.e., the claim recite “with 7 to 30 g/m2” but it does not recite any compound after it. Should it be -- with 7 to 30 g/m2 of PEG--? Allowable Subject Matter Claims 1-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, 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 suggest a transparent paper and its method of making having the claimed fibers beating to the claimed degree and added at the claimed proportions and including the additional additives, e.g., starch, sizing agent and alcohols, i.e., PEG, PVOH and Glycerol, and fillers, in eth claimed range. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Transparent Papers and Method of Making.” 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. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOSE A FORTUNA/Primary Examiner, Art Unit 1748 JAF
Read full office action

Prosecution Timeline

Aug 07, 2024
Application Filed
Feb 27, 2026
Non-Final Rejection — §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12601113
Foam-Based Manufacturing System and Process
2y 5m to grant Granted Apr 14, 2026
Patent 12590418
Sanitary Tissue Products Comprising Once-Dried Fibers
2y 5m to grant Granted Mar 31, 2026
Patent 12590413
WET LAID PAPER AND PAPERBOARD PRODUCTS WITH HIGH WET STRENGTH AND METHOD OF MAKING THE SAME
2y 5m to grant Granted Mar 31, 2026
Patent 12590417
Coreless Rolls of a Tissue Paper Product and Methods of Manufacturing Coreless Rolls
2y 5m to grant Granted Mar 31, 2026
Patent 12590416
BIOBASED BARRIER FILM FOR PACKAGING MATERIAL
2y 5m to grant Granted Mar 31, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
89%
With Interview (+9.9%)
2y 5m
Median Time to Grant
Low
PTA Risk
Based on 1299 resolved cases by this examiner. Grant probability derived from career allow rate.

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