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 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 8 and 19 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.
Regarding claim 19, there appears to be a typo for the term AKDf which will be considered to read as AKD for purposes of continued examination.
Claims 8 and 19 recites the limitation "AKD" while claim 1 only requires a wax and not AKD as the claimed component. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-12, 14, and 16-20 are is/are rejected under 35 U.S.C. 102a1 as being anticipated by Akiyama, US Patent Publication 2009/0297842.
Regarding claim 1, Akiyama teaches a fluorochemical-free [0033] grease barrier paper (see abstract) comprising a base paper (see example 1 [0065]) wherein:
a first side of the base paper (at least one side [0034])is impregnated (coating process that impregnates [0062]) with a first composition comprising oxidized starch [0041], dextrin [0041], crosslinker [0052] and a wax (AKD [0043]); and a second side of the base paper ([0051] says that both sides can be impregnated with the coating) with a second composition comprising oxidized starch [0041], dextrin [0041], and a crosslinker [0052] (it is noted that coating the same composition on both sides would read on the claims as currently written).
Regarding claims 2-3, Akiyama remains as applied above and further teaches that the base paper is made up of 50/50 mix of hardwood and softwood [0065].
Regarding claims 5-9 and 18-19, Akiyama remains as applied above and further teaches that the crosslinker is as PAE resin (see examples 6-9 and [0053]) in the amount of 1-30 % [0053] with examples of 10% in Examples 6-9). It is the Examiner’s stance that the range of 1-30 with examples at 10 is sufficient for a showing of anticipation of the claimed range of 1-9.
Regarding claim 8, Akiyama remains as applied above and further teaches that AKD is added as the wax in an amount of 3-15% [0046].
Regarding claims 9-10 and 17, Akiyama remains as applied above and further teaches that the coating composition of Example 1 is starch and AKD with the ASK making up 5% based on the weight of the starch and Example 6 is the same make up with an additional 10% by weight of starch of PAE resin. Example 6 would then have a composition that is 5% AKD and 10% crosslinker by based on amount of starch, which will read on the limitations of starch making up at least 80 of dry weight of the composition that is coated on both sides .
Regarding claims 11-12 and 20, Akiyama remains as applied above and further teaches that the dry amount of the composition is as little at 1.5 g/m squared [0051]. While Akiyama teaches a wider range of concentrations the taught range and the claimed range share an endpoint which is sufficient for a showing of anticipation.
Regarding claim 14, Akiyama remains as applied above and further teaches that the basis weight of the product is 45 g/m squared (see examples).
Regarding claim 16, Akiyama remains as applied above and further teaches that maltodextrin is included [0041].
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.
Claim(s) 4 and 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama, US Patent Publication 2009/0297842.
Regarding claim 4, Akiyama remains as applied above and further teaches that the wood fibers can be a blend [0058] and given one example of a 50/50 mixture of hardwood and softwood (see example 1). Thile there is not an example of a ratio of 1:1.2 to 1:2.0, this would be a routine optimization of the teaching of utilizing a blend of hardwood and softwood with examples of 50/50 mixtures. The ability to find a routine optimization of the bade paper fiber content is well within the ability of the average artisan in view of the discloser and basic engineering practice.
Regarding claims 13 and 15, Akiyama remains as applied above but is silent as to the ash content of the final product (or any ash content at all) or a Gurley value of the paper. As all of the same materials are being utilized in the claimed amounts, the silent physical property would have been expected to be within the claimed range by the average artisan. With respect to the values of ash content and Gurley content of the paper, it is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 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 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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