DETAILED ACTION
This is in response to communication received on 10/24/24.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-11, drawn to a method for manufacturing a coating layer.
Group II, claim(s) 12, drawn to a coating layer.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the coating of claim 12, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of WO2014/207100A1 hereinafter SIEMER in view of US2018/0347112 hereinafter LOFGREN, as shown below.
During a telephone conversation with Mark Scott on 1/2/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claim 12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 8 is 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.
The term “approximately” in claim 8 is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, what degree of difference is considered approximately 24-wt% and not? Is 24.5-wt% considered approximately? The specification provides no guidance on how to determine the answer to that question and as such, the claim is unclear.
For purposes of compact prosecution, Examiner will interpret the claim to read as wherein the regeneration and coagulation is carried out in a bath comprising 24 wt-% Na2CO3.
Appropriate correction is required.
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) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Siemer et al. WO2014/207100 hereinafter SIEMER in view of Löfgren et al. WO2014/207100 hereinafter LÖFGREN.
As for claim 1, SIEMER teaches “The present invention relates to a process for coating paper with cellulose and to the cellulose coated paper obtained by said process. The process comprises the step of contacting paper with a solution containing cellulose which is preferably obtained by dissolving cellulose in a solvent including one or more ionic liquids” (abstract), i.e. A method for manufacturing a coating layer on top of a paper.
SIEMER teaches “The solution of the cellulose product in solvent A used in the inventive process can be prepared according to established methods usually involves mixing the cellulose product and solvent A… In case solvent A comprises or consists of one or more ionic liquids the cellulose product is dissolved in solvent A” (page 37, lines 13-17), i.e. preparing a dissolved cellulose solution.
SIEMER teaches “In step (a) of the process of the invention for coating a paper with a cellulose product the paper is contacted with a solution of the cellulose product, usually in order to form a layer of the solution on the paper” (page 37, lines 29-31), and “Other successful methods of applying the solution of the cellulose product use, e.g… spray processes” (page 38, lines 13-14), i.e. casting the dissolved cellulose solution from a nozzle to air and to a support.
SIEMER teaches “Here, at least one side of the paper is provided with a coating, i.e. single- or double-sided coating of the paper is possible” (page 38, lines 15-17), i.e. forming a… coated paper… from the casted dissolved cellulose solution.
SIEMER teaches “the paper is contacted with the coagulant in such a way that at least the areas of the paper to which the solution of the cellulose product have be applied in step (a) are wetted with the coagulant. By way of example, the paper product can be contacted with the coagulant by submerging it in the coagulant, by letting it float on the surface of the coagulant, by overlaying or rinsing it with the coagulant, or by a combination of these measures” (column 39, lines 20-25), i.e. leading… coated paper… into a regeneration coagulation bath.
SIEMER is silent on regeneration coagulation bath comprising sodium carbonate or sodium hydrogen carbonate.
LÖFGREN teaches “Disclosed is a method of treating cellulose pulp for use in
regeneration of cellulose” (abstract, line 1-2).
LÖFGREN teaches “Two different cellulose dopes (A) and (B), prepared according to below, were both spun in two different ways (carbonate based coagulation and sulphuric acid based coagulation) and the properties of the produced fibers were tested” (paragraph 70) and specifically teaches “coagulated in a carbonate based coagulation solution comprising 24% by weight Na2CO3 and 4% by weight NaOH at 30° C.” (paragraph 76, lines 2-4), i.e. regeneration coagulation bath comprising sodium carbonate or sodium hydrogen carbonate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include regeneration coagulation bath comprising sodium carbonate or sodium hydrogen carbonate in the process of SIEMER because LÖFGREN teaches the such a bath produces a coagulated cellulose.
SIEMER teaches “It may for instance be advisable to first submerge the paper product in the coagulant in order to precipitate the cellulose product on the paper and afterwards to rinse the paper product with the coagulant in order to remove the solvent used for dissolving the cellulose product” (page 39, lines 25-28) and “In step (c) of the process of the invention the paper product obtained in step (a) or step (b) is dried” (page 39, line 36-37), i.e. washing and drying of the… coated paper.
As for claim 2, SIEMER teaches “The cellulose product used in the inventive process is preferably obtained from renewable resources, such as wood or cotton and may contain byproducts such as hemicellulose” (page 3, lines 23-25) but is silent on what form the obtained cellulose product takes.
LÖFGREN teaches “Dissolution of natural cellulosic fibers takes place in two steps; first the solvent penetrates into the fiber structure and then separates the polymer chains from each other. Dissolution mechanism depends on fiber type and mostly on the solvent system” (paragraph 3), “According to another embodiment, the cellulose pulp is a dissolving pulp” (paragraph 17, lines 1-2) and “An object of the invention is to provide an improved method of treating cellulose pulp for use in regeneration of cellulose, which is more environmental friendly, and more cost effective” (paragraph 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date to get the cellulose for SIEMER with the process of LÖFGREN such that it includes the dissolved cellulose material is selected from dissolving pulp because LÖFGREN teaches that such cellulose is more environmentally friendly and cost effective.
As for claim 3, Examiner notes that SIEMER is silent on increasing the temperature during the application method and as such it is the position of the Examiner that such a process inherently takes place at ambient conditions, i.e. wherein the casting is carried out in ambient air. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
As for claim 4, Examiner notes that this claim is further limiting an optional element of the independent claim. Independent claim allows for the forming a film, coated paper or coated carton board from the casted dissolved cellulose solution, and the dependent claim does not require that the film be formed. Thereby, these limitations are optional.
As for claim 5, SIEMER teaches “Other successful methods of applying the solution of the cellulose product use, e.g… spray processes” (page 38, lines 13-14), wherein when spraying there is inherently a gap between the nozzle and the support in order to form a spray, i.e. wherein there is an air gap between the nozzle and the support. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
As for claim 6, SIEMER is silent on wherein the regeneration coagulation bath comprises 20 to 30 wt-% of Na2CO3 orNaHCO3 and 1 to 10 wt-% of NaOH.
LÖFGREN teaches “Two different cellulose dopes (A) and (B), prepared according to below, were both spun in two different ways (carbonate based coagulation and sulphuric acid based coagulation) and the properties of the produced fibers were tested” (paragraph 70) and specifically teaches “coagulated in a carbonate based coagulation solution comprising 24% by weight Na2CO3 and 4% by weight NaOH at 30° C.” (paragraph 76, lines 2-4), i.e. wherein the regeneration coagulation bath comprises 20 to 30 wt-% of Na2CO3 orNaHCO3 and 1 to 10 wt-% of NaOH.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the regeneration coagulation bath comprises 20 to 30 wt-% of Na2CO3 orNaHCO3 and 1 to 10 wt-% of NaOH in the process of SIEMER because LÖFGREN teaches the such a bath produces a coagulated cellulose.
As for claim 7, SIEMER is silent on wherein the regeneration and coagulation is carried out at a temperature of about 30 °C when using sodium carbonate and at a temperature of about 40 °C when using sodium hydrogen carbonate.
LÖFGREN teaches “Two different cellulose dopes (A) and (B), prepared according to below, were both spun in two different ways (carbonate based coagulation and sulphuric acid based coagulation) and the properties of the produced fibers were tested” (paragraph 70) and specifically teaches “coagulated in a carbonate based coagulation solution comprising 24% by weight Na2CO3 and 4% by weight NaOH at 30° C.” (paragraph 76, lines 2-4), i.e. wherein the regeneration and coagulation is carried out at a temperature of about 30 °C when using sodium carbonate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the regeneration and coagulation is carried out at a temperature of about 30 °C when using sodium carbonate in the process of SIEMER because LÖFGREN teaches the such a bath produces a coagulated cellulose.
As for claim 8, SIEMER is silent on wherein the regeneration and coagulation is carried out in a bath comprising approximately 24 wt-% Na2CO3 and 4 wt-% NaOH at temperature of 30 °C.
LÖFGREN teaches “Two different cellulose dopes (A) and (B), prepared according to below, were both spun in two different ways (carbonate based coagulation and sulphuric acid based coagulation) and the properties of the produced fibers were tested” (paragraph 70) and specifically teaches “coagulated in a carbonate based coagulation solution comprising 24% by weight Na2CO3 and 4% by weight NaOH at 30° C.” (paragraph 76, lines 2-4), i.e. wherein the regeneration and coagulation is carried out in a bath comprising approximately 24 wt-% Na2CO3 and 4 wt-% NaOH at temperature of 30 °C.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the regeneration and coagulation is carried out in a bath comprising approximately 24 wt-% Na2CO3 and 4 wt-% NaOH at temperature of 30 °C in the process of SIEMER because LÖFGREN teaches the such a bath produces a coagulated cellulose.
As for claim 9, SIEMER teaches “The present invention relates to a process for coating paper with cellulose and to the cellulose coated paper obtained by said process. The process comprises the step of contacting paper with a solution containing cellulose which is preferably obtained by dissolving cellulose in a solvent including one or more ionic liquids” (abstract) and “The term "paper" as used herein includes both paper as well as paperboard and refers to sheet-like, usually porous structures containing a web of cellulosic pulp fibers such as fibers derived from hardwood trees” (page 2, lines 24-26) i.e. wherein the coating layer of dissolved cellulose is manufactured on top of at least one surface of the paper or carton board, wherein the at least one surface is fibrous and in a form of a web.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Siemer et al. WO2014/207100 hereinafter SIEMER in view of Löfgren et al. WO2014/207100 hereinafter LÖFGREN as applied to claim 1 above, and further in view of Ohmura et al. US 6,406,796 hereinafter OHMURA.
As for claim 10, SIEMER is silent on wherein the process manufactures a continuous coating layer.
OHMURA teaches “The present invention relates to a cast-coated paper and, more particularly, to a substrate that enables easy and speed production of a cast-coated paper having excellent ink jet recording characteristics, and to a cast-coating paper produced using such a substrate” (column 1, lines 6-10).
OHMURA further teaches “In the process of producing the present substrate for cast coating, in-line production is included as a matter of course wherein the base paper making and the coating of a coated layer (a) are performed continuously in the same line. Also, it is possible to provide a coated layer (a) and a cast-coated layer (b) on a base paper for the cast coating substrate in the same production line” (column 8, lines 15-21), i.e. wherein the process manufactures a continuous coating layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have wherein the process manufactures a continuous coating layer in the process of SIEMER because OHMURA teaches that doing so allows for in-line production of coated paper.
Claim(s) 11 are rejected under 35 U.S.C. 103 as being unpatentable over Siemer et al. WO2014/207100 hereinafter SIEMER in view of Löfgren et al. WO2014/207100 hereinafter LÖFGREN as applied to claim 1 above, and further in view of Kastl et al. US Patent Number 4,623,566 hereinafter KASTL.
As for claim 11, SIEMER is silent on further comprising placing the formed film, coated paper or coated carton board into a glycerol bath.
KASTL teaches “Disclosed is a film of fiber-reinforced regenerated cellulose having on one surface thereof a gas-impermeable layer” (abstract, lines 1-3).
KASTL teaches “In further stages the fiber-reinforced web-like product comprising coagulated viscose is regenerated to cellulose hydrate gel in an acid medium, for example, in dilute (less than or equal to about 5% by weight) sulfuric acid. The cellulose hydrate gel is then washed with water to remove acid and salts, desulfurized, for example with sodium sulfite solution, optionally passed through a bleaching bath, and finally passed through a softening bath containing, for example, an aqueous 5 to 30% strength glycerol solution” (column 7, lines 12-21).
It would have been obvious to one of ordinary skill in the art before the filing date to have further comprising placing the formed film, coated paper or coated carton board into a glycerol bath in the process of SIEMER because KASTL teaches that such a step is necessary in regenerating the cellulose into a form that can be reused.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717