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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-18 and 37 in the reply filed on July 24, 2026 is acknowledged.
Claims 19 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 24, 2026.
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 6, 8, 12-13, 18 and 37 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 6, 8 and 18, 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). 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.
Claims 12 and 13 is vague and indefinite since it is improper, since it recites an open Markush group. Markush groups are closed by nature and cannot contain the open transitional phrase “comprises.” It is improper to use the term "comprising" instead of "consisting of." Ex parte Dotter, 12 USPQ 382 (Bd. App. 1931).
Regarding claim 37, the word “e.g.,” which is an equivalent to the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-18 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Brümmer et al, (hereinafter Brümmer), EP 2148003 A1.
With regard to claims 1-7, 9, 12-14, 17 , 18 and 37, Brümmer teaches a process of making paper including the addition of an extruded starch to a stock of papermaking fibers, then pressing and drying the web to form the paper (abstract, ¶-[0043]-[0057] and example 6 on ¶-[0072]-[0077]). Example 6 discloses the making of a 110 gsm paper (which is within the range of claim 3) and having 13% of ash (falling within the range of claim 17 and also on claim 7 since the ash mostly correspond to the amount of fillers in a paper1), which correspond to a D(x)= 46+ (13-10)*0.3= 3*.3= 46.9, which is within the solids content, consistency of a web after the press section2, which is also in the same range with the range obtained by the current application; see examples, and therefore, the solids content must be also within the claimed range or at the very least pressing the web to consistency within the claimed range would have been obvious to one of ordinary skill in the art, since it is in common operating range and he/she would have reasonable expectation of success if such web were dewatered to said claimed solids content/consistency. Brümmer also teaches that the starch is added to a suspension of fibers, i.e., the stock, and the consistency of the stock falling within the claimed range (reading on claim 4); see ¶-[0072]-[0073]. Note that it is well-known to work with consistency of 0.1% i.e., ≈ 1 g/L and therefore, the consistency of claims 5 and 6 is at the very least obvious to one of ordinary skill in the art. The furnish of example 6 comprises mixed waste (reading on claim 13) and teaches that the paper is formed using cellulosic fibers and teaches on ¶-[0079] the use of CTMP, which one of ordinary skill in the art would recognize that is formed using wood and/or non-wood pulps and thus reading on claim 12. The starch is modified with a cationic agent, PAE, PAAE thus making it cationic3 and is not crosslinked (using the teaching of US Patent Application Publication No. 2005/0109476 A1, which is used on example 1) and having molecular weight falling within the claimed range (¶-[0028]); see ¶-[0025]-[0038] and examples 1-5 and thus having at least one property of claims 9 and 18 and thus reading on those claims.
Regarding to claim 8, Brümmer teaches that the starch is added in amounts falling within the claimed range, since Brümmer teaches addition amounts from 0.5% to 4% by dry weight; see ¶-[0065].
With regard to claim 10, Brümmer teaches that the starch can be made using the teaching of United State Patent No. 6,616,807 B1, which teaches crosslinking starch with polyaminoamide; see ¶-[0007] and example 2 on ¶-[0070].
Regarding to claim 11, as the starch is modified with a cationic compound, e.g. PAAE, the starch becomes cationic. Brümmer teaches that the starch is or can be prepared using the same procedures as United State Patent No. 6,616,807 B1, which teaches the making of a cationic starch; see ¶-[0007] and [0070].
With regard to claim 15, Brümmer teaches the use of recycled fibrous materials as Brümmer teaches the used of mixed waste papers; see ¶-[0073] and [0079] for example.
Regarding to claim 16, Brümmer teaches the use of other auxiliary compounds, such as cationic polyacrylamide and anionic silica used as retention and dewatering aid; see ¶-[0073] and teaches that the starch can contain other papermaking additives; see ¶-[0061].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Extruded Starch and Process of Producing Paper.”
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.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 Relationship Between Ash Content and Fillers in Paper
In papermaking, ash content is the percentage of inorganic material (mineral fillers) remaining after a paper sample is completely burned at high temperature, typically around 525–925 °C PrintWiki+1. The residue left behind is primarily composed of fillers such as calcium carbonate, clay (kaolin), titanium dioxide, and other inorganic additives PrintWiki+1.
Yes — ash content directly corresponds to the amount of fillers in paper. The higher the ash percentage, the greater the proportion of non-fiber inorganic material in the sheet. This is because during the combustion process, all organic components (cellulose, hemicellulose, lignin) are destroyed, leaving only the inorganic fillers as the measurable residue PrintWiki+1.
How it’s measured
The TAPPI T-509 method is the standard for determining ash content
2 See for example page 639 of WET PRESSING – PRESENT UNDERSTANDING AND FUTURE CHALLENGES by Paulapuro; column 1, lines 30-41, column 3, lines 48-54 of United State Patent No. 8,246,782 B2, or ¶-[0035] of US Patent Application Publication No. 2002/0139500 A1, just to cite a few.
3 Brümmer teaches that the starch is or can be prepared using the same procedures as United State Patent No. 6,616,807 B1, which teaches the making of a cationic starch; see ¶-[0007] and [0070].
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