Detailed Action
The communications received 03/05/2026 have been filed and considered by the Examiner. Claims 1-2, 4-12, 14-18, 20-23, 25-27, and 29 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 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 all the rejections below the Examiner notes the following:
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) 1-2, 4-12, 15-18, 20-23, 26-27, and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Backfolk et al (US 2019/0234020) hereinafter BAC.
As for claim 1, BAC teaches a highly refined cellulose pulp (HRC) composition for preparation of barrier papers or films, said composition comprising:
50-99 wt% highly refined cellulose HRC having a Schopper-Riegler number (SR) > 70, as measured according to the standard ISO 5267-1 (MFC in an amount of at least 50% which has a SR of at least 85, in the context of the reinforcement fiber inclusion they would be at most 95%) [Abstract; 0016], and
1-50 wt% of compression refined cellulose pulp (reinforcement fibers which are in an amount of at least 5%, with the context of the MFC they would be at most 50%, they are mechanically refined and therefore it is understood that at least some compression would occur, therefore compression refined) [Abstract; 0020] having
- a Schopper-Riegler number (SR) < 30 (below 40 which overlaps the claimed range) [0017], as measured according to the standard ISO 5267-1,
As it pertains to the water retention value, the Examiner notes that the Schopper-Riegler number is a measure of freeness, therefore would be related to the water retention value as the inverse.
The Examiner notes that the pulp of BAC has a similar composition as claimed by applicant, (i.e. compression refined cellulose pulp with the claimed SR value) which would result in the claimed property (the water retention value). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 2, BAC teaches claim 1 and the fibers used are never dried [0021] therefore it is understood that the composition includes water and therefore would be an aqueous suspension.
As for claims 4-5, BAC teaches claim 1 and the Examiner notes that the pulp of BAC has a similar composition as claimed by applicant, (i.e. the HRC composition with the claimed Schopper-Riegler values for the pulps that form the HRC and composition amounts and types) which would result in the claimed property (the overall Schopper-Riegler value of the HRC). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 6, BAC teaches claim 1 and the highly refined cellulose is in the range of 50-95% which overlaps the claimed range [see claim 1].
As for claim 7, BAC teaches claim 1 and the compression refined cellulose pulp is in the range of 5-50% which overlaps the claimed range [see claim 1].
As for claim 8, BAC teaches claim 1 and wherein the highly refined cellulose is microfibrillated cellulose [Abstract].
As for claim 9, BAC teaches claim 1 and wherein the highly refined cellulose is chemically modified highly refined cellulose or unmodified (as the chemical modification is stated as an option) [0045].
As for claim 10, BAC teaches claim 1 and that the highly refined cellulose has an SR of at least 85 which falls within the claimed range.
As for claim 11, BAC teaches claim 1 and that the compression refined cellulose pulp has an SR of less than 40 which overlaps the claimed range [0017].
As for claim 12, BAC teaches claim 1 and as outlined in the rationale for the water retention value, it is understood that it would similarly fall into this claimed range [see claim 1].
As for claim 15, BAC teaches claim 1 and wherein the compression refined cellulose pulp has a mean fiber length in a range of 0.2-4 mm (>0.8mm which overlaps the claimed range) [0030].
As for claim 16, BAC teaches claim 1 and wherein the HRC composition further comprises a water soluble polymer selected from a group consisting of:
A starch, a cellulose derivative, a hemicellulose, a polyacrylamide, a protein, and mixtures (the formation aid) [0022-24].
As for claim 17, BAC teaches claim 16 and wherein the HRC composition can comprise the water-soluble polymer in the amount of 0.02-0.1% (as 20-100 kg/metric ton) of the total suspension which overlaps the claimed range [0024].
As for claim 18, BAC teaches claim 1 and wherein the HRC composition further comprises a pigment [0056].
As for claim 20, BAC teaches claim 1 and further a formed film [Abstract].
As for claim 21, BAC teaches claim 20 and that the film has a grammage of 35.7, 32.4, 32.3, 31.9, 31.5, 30.1 g/meter squared which fall within the claimed range [Table 2, grammage; 0065].
As for claim 22, BAC teaches claim 20 and the Examiner notes that the film of BAC has a similar composition as claimed by applicant, (i.e. the HRC composition with the claimed Schopper-Riegler values for the pulps that form the HRC and composition amounts and types) which would result in the claimed property (the relative tear value). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 23, BAC teaches claim 20 and has an OTR of less than 25 ml/meter squared (equivalent to cc/meter squared) per 24 hours understood to be at atmosphere which falls within the claimed range [0032].
As for claim 26, BAC teaches a multilayer material composed of a substrate layer and the HRC layer that uses the HRC of claim 1 [0063].
As for claim 27, BAC teaches claim 26 and wherein the substrate layer is paper or paper board [0063].
As for claim 29, BAC teaches a method of preparing an HRC film which comprises preparing the aqueous suspension of the HRC composition according to claim 1, forming a web, and then allowing the web to dry [Abstract; 0026; 0054].
Claim(s) 14 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over BAC in view of Everett et al (US 2020/0063339) hereinafter EVE.
As for claim 14, BAC teaches claim 1 but does not teach a fiber curl value.
EVE teaches that in refined pulps [Abstract] that the curl of a fiber improves the tear strength [0773] with curl values measured by a FS5 fiber analyzer greater than 13 (understood to be % as measured by the same type of apparatus) achieving the improvement [claim 6].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have curl the fibers of BAC to achieve the fiber curl values of EVE in order to improve the tear strength of the composition once employed. As both EVE and BAC pertain to refined pulps they are analogous art and one of ordinary skill in the art expects success in the combination.
As for claim 25, BAC teaches claim 20 and the film can be smoothed via calendars [0059] but does not teach a smoothness.
EVE teaches that in refined pulps [Abstract], that smoothness improves printability and visual appeal [0595; 0598] that a super calendar can be employed to further improve smoothness [0598] and that the average paper is sold by area not by weight [0601] which suggests that a thinner more calendared paper would have improved profit margins [0598].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to a high surface smoothness with low irregularities suggested by the range claimed of less than 5 um when calendaring the composition of BAC to produce the film of BAC as EVE teaches that smoothness alone is a desired quality as higher smoothness values achieve improved aesthetic appeal and printability, and the benefits of further calendaring which impart improved smoothness also have the benefit of creating a thinner paper which improves the profit margin of the roll of paper. As both EVE and BAC pertain to refined pulps and their calendaring they are analogous art and one of ordinary skill in the art expects success in the combination.
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 20-23, 26-27, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10927504 hereinafter ‘504 in view of BAC. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 20 is taught by claim 19 of ‘504, where the SR of the reinforcement fibers overlaps the claimed ranges for the compression refined fibers as well as the composition amount and the MFC being the highly refined cellulose having the requisite SR value and composition amount. However ‘504 does not claim a refining method for the reinforcement fibers.
BAC teaches the formation of the film [Abstract] in which reinforcement fibers are mechanically refined and therefore as it is understood that at least some compression would occur. Therefore they are compression refined to the SR range claimed by ‘504 [Abstract; 0017; 0020]. This is done to improve the shear strength and tear resistance of the resultant film [0020].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have compression refined the reinforcement fibers of ‘504 as BAC teaches that this improves the shear strength and tear resistance of the resultant film. As BAC and ‘504 pertain to pulp suspensions used to form substantially similar products, they are analogous art and one of ordinary skill in the art expects success in the combination.
As it pertains to the water retention value, the Examiner notes that the Schopper-Riegler number is a measure of freeness, therefore would be related to the water retention value as the inverse.
The Examiner notes that the pulp of ‘504/BAC has a similar composition as claimed by applicant, (i.e. compression refined cellulose pulp with the claimed SR value) which would result in the claimed property (the water retention value). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 21, ‘504/BAC teach claim 20 and the combination does not teach a grammage. BAC further teaches that the film has a grammage of 35.7, 32.4, 32.3, 31.9, 31.5, 30.1 g/meter squared which fall within the claimed range [Table 2, grammage; 0065], the grammage influences the formation number and the formation number used in BAC has excellent oxygen transfer rate properties [0015; 0052].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the grammage of BAC as the grammage of ‘504 in order to achieve excellent oxygen transfer rate properties. As BAC and ‘504 pertain to pulp suspensions used to form substantially similar products, they are analogous art and one of ordinary skill in the art expects success in the combination.
As for claim 22, ‘504/BAC teach claim 20 and the Examiner notes that the film of ‘502/BAC has a similar composition as claimed by applicant, (i.e. the HRC composition with the claimed Schopper-Riegler values for the pulps that form the HRC and composition amounts and types) which would result in the claimed property (the relative tear value). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
As for claim 23, ‘504/BAC teaches claim 20 and ‘504 further claims an OTR of below 100 cc / per 24h/assumed pressure of atm which overlaps the claimed range [claim 19].
As for claim 26, ‘504/BAC as applied to claim 20 also teach a multi-layered material (at least a first layer which suggests additional layers) [‘504: claim 19].
As for claim 27, ‘504/BAC teach claim 26 and BAC teaches that one place that such a composition can be applied to in order to make packaging goods is a paper or paperboard [0063].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the film of ‘504/BAC to a paperboard/paper in order to make packaging goods.
As for claim 29, ‘504 claims a substantially similar method including the pulp suspension constituents [claim 1, refer to the rejection of claim 20]. However in ‘504 the reinforcement fibers are not said to be compression refined.
BAC teaches the formation of the film [Abstract] in which reinforcement fibers are mechanically refined and therefore as it is understood that at least some compression would occur. Therefore they are compression refined to the SR range claimed by ‘504 [Abstract; 0017; 0020]. This is done to improve the shear strength and tear resistance of the resultant film [0020].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have compression refined the reinforcement fibers of ‘504 as BAC teaches that this improves the shear strength and tear resistance of the resultant film. As BAC and ‘504 pertain to pulp suspensions used to form substantially similar products, they are analogous art and one of ordinary skill in the art expects success in the combination.
As it pertains to the water retention value, the Examiner notes that the Schopper-Riegler number is a measure of freeness, therefore would be related to the water retention value as the inverse.
The Examiner notes that the pulp of ‘504/BAC has a similar composition as claimed by applicant, (i.e. compression refined cellulose pulp with the claimed SR value) which would result in the claimed property (the water retention value). 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 compression refined cellulose pulp product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
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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/E.V./ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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