Detailed Action
The communications received 12/30/2025 have been filed and considered by the Examiner. Claims 1-17 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 Objections
Claims 2-8, and 10-17 are objected to because of the following informalities: the claim language alternates between “anionic polysaccharide promoter” and its abbreviation APP after its initial recitation in the corresponding independent claims of either 1 or 9. 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 1-17 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 1-17, the phrase "optionally" 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). Dependent claims are similarly rejected. For purposes of examination the limitations following “optionally” are understood to be limitations that are not required.
Regarding claims 3 and 11, the same abbreviation DMAEA is used for different cationic monomers which renders the claim indefinite as it is no longer clear if they are the same cationic monomer or different.
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.
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.
For the rejections below, the Examiner notes:
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiopol et al (US 2006/0270801 cited by the Applicant in the IDS filed 08/13/2024) hereinafter HAG.
As for claim 1, HAG teaches a composition for strengthening paper or board [Abstract], optionally an aqueous composition, said composition comprising:
(a) at least one cationic glyoxalated polyacrylamide ("GPAM") comprising a high molecular weight base polymer [0015-16; 0047]; and
(b) at least one anionic polysaccharide promoter ("APP"), optionally carboxymethylcellulose (CMC) [by being blended with other polymeric agents including anionic polymers such as CMC 0103; 0106];
wherein said high molecular weight base polymer has a weight average molecular weight selected from at least 50 kDa, at least 80 kDa, at least 100 kDa, at least 250 kDa, or between 100-5000 kDa [0.5-1000 kDA which overlaps the claimed range; 0047], inclusive.
As for claim 2, A combination of materials, said combination comprising:
(a) at least one cationic glyoxalated polyacrylamide ("GPAM") comprising a high molecular weight base polymer, optionally an aqueous composition [0015-16; 0047]; and
(b) at least one anionic polysaccharide promoter ("APP"), optionally carboxymethylcellulose (CMC) [by being blended with other polymeric agents including anionic polymers such as CMC 0103; 0106];
wherein said high molecular weight base polymer (a) has a weight average molecular weight selected from at least 50 kDa, at least 80 kDa, at least 100 kDa, at least 250 kDa, and 100- 5000 kDa [0.5-1000 kDA which overlaps the claimed range; 0047];
and further wherein said combination of materials (a) and (b), when both added separately, simultaneously, or as a pre-mixed combination to a papermaking system comprising a furnish composition or to a furnish composition, which furnish composition comprises cellulosic fibers used for the manufacture of paper or board, wherein (a) and (b) may be added in either order, and result in a paper or board material of enhanced strength compared to when said combination of materials (a) and (b), are not added to the papermaking system or to said furnish composition [0110-112].
As for claim 3, The composition or combination of claim 1, wherein said at least one cationic GPAM comprising a high molecular weight base polymer comprises one or more of the following:
(b) is obtained by reaction of glyoxal with said high molecular weight base polymer, wherein said high molecular weight base polymer comprises an acrylamide-based copolymer comprising neutral monomers, cationic monomers, and optionally anionic monomers, further wherein (i) said neutral monomers are selected from the group of primary amide-containing monomers comprising acrylamide, methacrylamide, ethyl acrylamide, crotonamide, N-methyl acrylamide, N-butyl acrylamide, N-ethyl methacrylamide, and any combination thereof;(ii) said cationic monomers are selected from acryloyloxyethyltrimethyl ammonium chloride ("AETAC"), methacryloyloxyethyltrimethylammonium chloride ("MAETAC"), methacrylamidopropyltrimethylammonium chloride ("MAPTAC"),acrylamidopropyltrimethylammonium chloride ("APTAC"),methacryloyloxyethyldimethylammonium sulfate, diallyldimethylammonium chloride ("DADMAC"); dialkylaminoalkyl acrylates and dialkylaminoalkyl methacrylates and their quaternary or acid salts, including but not limited to,dimethylaminoethyl acrylate ("DMAEA"), dimethylaminoethyl methacrylate ("DMAEA"), dimethylaminoethyl acrylate methyl chloride quaternary salt, dimethylaminoethyl acrylate methyl sulfate quaternary salt, dimethylaminoethyl acrylate benzyl chloride quaternary salt, dimethylaminoethyl acrylate sulfuric acid salt, dimethylaminoethyl acrylate hydrochloric acid salt, diethylaminoethyl acrylate methyl chloride quaternary salt, dimethylaminoethyl methacrylate methyl chloride quaternary salt, dimethylaminoethyl methacrylate methyl sulfate quaternary salt, dimethylaminoethyl methacrylate benzyl chloride quaternary salt, dimethylaminoethyl methacrylate sulfuric acid salt, dimethylaminoethyl methacrylate hydrochloric acid salt, dimethylaminoethyl methacryloyl hydrochloric acid salt; dialkylaminoalkylacrylamides and methacrylamides and their quaternary or acid salts, including but not limited to,acryloylamidopropyltrimethylammonium chloride, dimethylaminopropyl acrylamide, dimethylaminopropyl acrylamide methyl sulfate quaternary salt,dimethylaminopropyl acrylamide sulfuric acid salt, dimethylaminopropyl acrylamide hydrochloric acid salt, methacrylamidopropyltrimethylammonium chloride, dimethylaminopropyl methacrylamide, dimethylaminopropyl methacrylamide methyl sulfate quaternary salt, dimethylaminopropyl methacrylamide sulfuric acid salt, dimethylaminopropyl methacrylamide hydrochloric acid salt, diethylaminoethylacrylate,diethylaminoethylmethacrylate; and diallyldialkylammonium halides, including but not limited to, diallyldiethylammonium chloride and diallyldimethylammonium chloride ("DADMAC"), and any combination thereof [a reaction product from acrylamide, N-butyl acrylamide, N-methyl acrylamide, N-ethyl metharylamide 0024; 0044];
(c) is obtainable by reacting glyoxal with a cationic base copolymer comprised of acrylamide and DADMAC, and optionally is in aqueous form [0029];
(e) has a cationic charge density selected from the ranges comprising 0.02-5 meq/g, 1-4 meq/g, and 1.4-2 meq/g at pH 8.0 [2-5 meq/g at pH 8 which overlaps the claimed range 0049];
As for claim 4, The composition or combination of claim 1, wherein said at least one anionic polysaccharide promoter comprises one or more of the following:
(a) has a weight average molecular weight selected from 10-5000 kDa, 20-2000 kDa, and40-1000 kDa [0.5-1000 kDA which overlaps the claimed range; 0047];
(b) comprises an anionic polysaccharide selected from the group comprising anionic starch-based polysaccharides, anionic alginate-based polysaccharides, anionic guar- based polysaccharides, anionic cellulose-based polysaccharides including, but not limited to, carboxymethylcellulose (CMC), oxidized celluloses, anionic cellulose ethers, and any combinations thereof [CMC 0103; 0106];
(c) comprises carboxymethylcellulose (CMC) [CMC 0103; 0106].
As for claim 5, HAG teaches claim 1 and further teaches that
(a) the composition/combination of (a) and (b) are in at least one aqueous solution [0046],
(b) the ratio of GPAM:APP is anywhere from 1:3 – 99:1 (as the GPAM would be 40-99% of the total weight of GPAM and APP) which overlaps the claimed range [0109].
(c) a net charge selected from the range of -5-5 meq/g [2-5 meq/g 0049].
As for claim 6, HAG teaches claim 1 and wherein
(a) said at least one cationic GPMA comprises DADMAC and acrylamide [0029-30],
(b) said at least one APP is CMC [0103; 0106].
As for claim 7, HAG teaches claim 1 and wherein said paper product [0015] results in an improved dry tensile strength [0002]. In addition:
The Examiner notes that HAG has a similar composition as claimed by applicant, (i.e. the combination of composition of claim 1 and its inclusion in the formation of a paper product) which would result in the claimed properties. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the paper product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 8, HAG teaches the combination of materials of claim 1 and that it is supplied in a furnish wherein the furnish is an aqueous slurry of cellulosic fibers obtained from recycled fiber [0015].
As for claim 9, HAG teaches the combination of claim 1 (which cover (a) and (b)) and that the two are added together as a pre-mixed composition (as a blended composition) [0015-16].
As for claim 10, HAG teaches claim 9 and are formulated as aqueous solution with a solids content of 5-30 wt.% which falls overlaps the claimed range [0111],
Are added in the corresponding ratio [see claim 5 which teaches the ratio],
Have the corresponding net charge when combined [see claim 5 for the net charge],
Are added either during wet-end, formation of the paper product, or after [0112-113],
Are added in the amounts of up to 10% by weight of the GPAM which would amount to up to 30% of the APP [0114 see claim 5 for the ratios], this in turn assuming 1 ton of dry wt. cellulose fibers is up to 0.1 ton of GPAM/ton of dry wt. cellulose fibers = up to 220 pound GPAM / ton dry wt. cellulose fibers and up to 661 pound APP / ton dry wt. cellulose fibers which overlaps the claimed range.
Are added during said process during spraying, impregnating (immersing) [0112].
As for claim 11, HAG teaches claim 9 and this is understood to be substantially claim 3 but in the context of a process [see claim 3].
As for claim 12, HAG teaches claim 9 and this is understood to be substantially claim 2 but in the context of a process [see claim 2].
As for claim 13, HAG teaches claim 9 and comprising recycled fibers at a pH of 5-8 which overlaps the claimed range [0111-113].
As for claim 14, HAG teaches claim 9 and this is understood to be substantially claim 6 but in the context of a process [see claim 6].
As for claim 15, HAG teaches claim 9 and this is understood to be substantially claim 8 but in the context of a process [see claim 8].
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiopol et al (US 2006/0270801 cited by the Applicant in the IDS filed 08/13/2024) hereinafter HAG as applied to claims 1, 10, and 15 and further in view of Lu et al (US 2014/0262091 cited by the Applicant in the IDS filed 08/13/2024) hereinafter LU.
As for claim 16, HAG teaches the combinations of claim 1 and its inclusion in a paper product [0111-113] and it is understood that this is a combination of the claims 10 (as it is understood that the dry weight dosages would continue in the paper product especially if applied after, the dry weight dosages of up to 10% for GPAM and up to 30% of the APP overlapping the claimed range) and 15, however HAG fails to teach the production of a paperboard.
LU teaches that known papers to produce include paperboard with a strengthener [Abstract; 0043].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have produced a paperboard as the resultant paper of HAG and LU teaches that a known acceptable paper to produce is a paperboard. As both LU and HAG pertain to the art of papermaking with strengtheners, they are analogous art and one of ordinary skill in the art expects success in the production of a paperboard in the process of HAG.
As for claim 17, HAG teaches the process of claim 9 and its formation of a paper product [0111-113] and it is understood that this is a combination of the claims 10 (as it is understood that the dry weight dosages would continue in the paper product especially if applied after, the dry weight dosages of up to 10% for GPAM and up to 30% of the APP overlapping the claimed range) and 15, however HAG fails to teach the production of a paperboard.
LU teaches that known papers to produce include paperboard with a strengthener [Abstract; 0043].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have produced a paperboard as the resultant paper of HAG and LU teaches that a known acceptable paper to produce is a paperboard. As both LU and HAG pertain to the art of papermaking with strengtheners, they are analogous art and one of ordinary skill in the art expects success in the production of a paperboard in the process of HAG.
Double Patenting
Claims 1-17 of this application are patentably indistinct from claims 1-16 of Application No. 18/837,911 (due to the verbiage such as “optionally”). Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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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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/E.V./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748